Declaration of 'Rothbury' as GI for wine rejected

Australia
In Rothbury Wines Pty Ltd v Tyrell (June 13 2008, not yet reported), the deputy registrar of trademarks has upheld an objection filed by a trademark owner against the declaration of an Australian geographical indication (GI) for wine. It was the first decision of the registrar under the provisions of the Australian Wine and Brandy Corporation Act.
 
The act provides for the registrations of GIs and a procedure for the 'declaration' of Australian GIs for inclusion in the Register of Protected Names. Applications for a declaration must be made to the Geographical Indications Committee and must meet certain criteria relating to:
  • the name of the proposed GI;
  • the homogeneity of the grape-growing characteristics of the GI; and
  • other matters.
If the application meets these criteria, the committee publishes a notice inviting objections from trademark owners that may be affected. Objections may be made to the registrar of trademarks on the grounds that the proposed GI:
  • consists of or includes a trademark in which the objector has rights; and
  • is likely to cause confusion.
If the registrar upholds the objection, the committee may not declare the GI.
 
In 2002 a group of wine growers applied for the declaration of ‘Rothbury’ as a GI. The effect of such declaration would be that:
  • the word 'Rothbury' cannot be used in respect of wine produced from grapes grown outside the GI; and
  • all persons who produce wine grown within the GI can use the name Rothbury in relation to those wines.
Rothbury Wines Pty Ltd - a substantial and long-established winemaker and the owner of several registered and common law trademarks consisting of or including the word 'Rothbury' – objected to the declaration.
 
The deputy registrar upheld the objection. He found that although the parish of Rothbury exists as an administrative area, it is little known and seldom used otherwise than as an identifier in land title certificates. According to the deputy registrar, most winemakers in the region (including Rothbury Wines) identify their address on their wine labels as 'Pokolbin'. The deputy registrar found that the name Rothbury:
  • had no significance as a geographical indicator in relation to viticulture or other produces; and 
  • had "very little force as a geographical word". 
However, the deputy registrar found that the word 'Rothbury' had "developed a secondary meaning as denoting the wines of the objector, distinct from whatever geographical origins it might have had". Accordingly, the use of the name Rothbury as a GI was likely to cause confusion among consumers.
 
The declaration of the GI was thus prohibited, subject to appeal to the Federal Court.
 
Des Ryan, Davies Collison Cave, Melbourne

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