On 9 July 2009, Hearing Officer Claudia Murray denied vigneron,
Andrew Harris, exclusive use of the word "Regions" in
respect of "alcoholic beverages including wine".
Mr Harris ("the applicant") filed Trade Mark
Application 1088609 Regions on 1 December 2005. No
objection was raised against the application at examination and it
proceeded to advertisement for acceptance. On 30 June 2006,
Berenger Blass Wine Estates Limited (now Foster's Wine Estate
Limited – "the opponent") opposed Application
Just prior to the hearing, the opponent advised the Registrar
that it would pursue only a single ground of opposition, namely,
At the hearing, the opponent's counsel argued that the word
"Regions" is "primarily descriptive and therefore
not adapted to distinguish any single traders wine". The words
"Region/s" are commonly used in the wine trade both as a
general description and as a "term of art". Its
definition in the Australian Wine and Brandy Regulations 1981
(Cth), assists in determining the scope and boundaries of
The opponent produced extensive evidence to support its
contention that the term "Regions" is used by "a
whole industry of wine producers".
The applicant argued that since he commenced using the trade
mark "Regions" on 10 April 2006, there have been no
complaints from customers, competitors, retailers or trade mark
owners. He said that he always used the word "Regions" in
conjunction with Registered Geographical Indications on all wine
labels. The applicant provided evidence supporting total sales of
20,000 bottles of wine identified by the word "Regions"
in the months of April 2006 and May 2007, and submitted that there
were many multiples of such sales but those claims were not
substantiated by evidence. He claimed that the names of the
geographical indications are descriptions whereas the term
Regions is not a recognised description but is a
The hearing officer considered the evidence and submissions of
both parties and found that the trade mark Regions
had only "the faintest hint of an inherent capacity to
distinguish the applicant's goods". Accordingly, the
hearing officer was obliged to consider the application in terms of
subsection 41(5) of the Act. The hearing officer said that this
involves weighing the shortfall of the inherent distinctiveness of
the mark against the extent of use, the manner of use or any other
circumstances. Despite the applicant's not insignificant use of
Regions, the hearing officer noted the manner of
use of the trade mark as a "limping mark" to be a telling
factor against a finding that Regions does or will
distinguish the designated goods. The fact that the word
"Regions" is always shown in close proximity to the name
of a specific wine region, and that the name "Andrew
Harris" featured at the top of every wine label as the
dominant trade mark, sealed the applicant's fate. The hearing
officer found that the applicant's use of the trade mark was
insufficient to grant registration rights of a descriptive mark to
a single trader, and that the opponent had met its onus in its
ground of opposition.
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