Australian Vintage Limited v Barossa Valley Estate Pty Ltd [2018] NZIPOTM 29
This matter concerned an opposition by Barossa Valley Estate to the registration of the below trade mark by Australian Vintage Limited in connection with a range of wine and alcoholic beverages.
The basis of the opposition was that its use was likely to deceive or cause confusion (section 17(1)(a)) and that the trade mark was not capable of distinguishing the applicant's goods from those of others (section 18(1)(a)).
The grounds are essentially the New Zealand equivalent of the same grounds that were run before the Australian Trade Marks Office in this same matter several years ago. Our summary of that decision is available here.
On the first ground, the Assistant Commissioner found that the use of the applicant's trade mark was not likely to deceive or cause confusion. On this ground, the opponent relied upon its BAROSSA VALLEY ESTATE trade mark. The Assistant Commissioner agreed with the opponent that there were conceptual similarities between the respective trade marks, but ultimately took the view that the dominant element of the applicant's mark was the highly stylised B device.
Also taken into consideration was that the opponent's trade mark BAROSSA VALLEY ESTATE was 'highly descriptive' and carried 'only a limited reputation in the New Zealand market'.
In addition, if there was to be any confusion between the trade marks, it was the Assistant Commissioner's view that such confusion would only result from the 'BAROSSA VALLEY' elements, which neither party is entitled to monopolise.
On the second ground, the opponent attempted to argue that the applicant's trade mark was not capable of registration as it could not distinguish the applicant's goods from any other traders' goods originating from the Barossa Valley.
The Assistant Commissioner again found in the applicant's favour on the basis that the stylised B device within the applicant's trade mark rendered that trade mark sufficiently distinctive to qualify for registration.
As a result, the applicant's trade mark is to proceed to registration in New Zealand, as it has done in Australia. However, the Assistant Commissioner has required that a disclaimer be recorded against the applicant's trade mark to the effect that the applicant's trade mark does not provide exclusive right to use or to authorise the use of the words "Barossa Valley" or "Barossa Valley Wine Company".
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