Foster's inflicts sobering loss on vigneron

In Berenger Blass Wine Estates v Harris ([2009] ATMO 52, July 9 2009), a hearing officer at the Australian Trademark Office has denied vigneron Andrew Harris the exclusive use of the word 'regions' in respect of “alcoholic beverages, including wine”.
Harris filed an application for the registration of the trademark REGIONS on December 1 2005 (Application 1088609). No objection was raised against the application at examination and it proceeded to advertisement for acceptance. On June 30 2006 Berenger Blass Wine Estates Limited (now Foster’s Wine Estate Limited) opposed the application. Prior to the hearing, Foster’s advised the registrar that it would pursue only a single ground of opposition - namely, distinctiveness.
At the hearing, Foster’s argued that the word 'regions' was “primarily descriptive and, therefore, not adapted to distinguish any single trader's wine”. Foster’s further submitted that the words 'region/s' are commonly used in the wine trade, both as a general description and as a “term of art”. The definition of 'region' in the Australian Wine and Brandy Regulations 1981 (Cth) assisted in determining the scope and boundaries of 'geographical indications'. Foster’s also produced extensive evidence to support its contention that the term 'regions' is used by “a whole industry of wine producers”.
In his defence, Harris argued that since he commenced using the trademark REGIONS on April 10 2006, there had been no complaints from customers, competitors, retailers or trademark owners. He stated that he always used the word 'regions' in conjunction with registered geographical indications on all wine labels. Harris 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 (however, those claims were not substantiated by evidence). Harris also claimed that the names of geographical indications are descriptions, whereas the term 'regions' is not a recognized description, but is a misused term.
The hearing officer considered the evidence and submissions of both parties and found that the REGIONS mark had only “the faintest hint of an inherent capacity to distinguish [Harris]'s goods”. Accordingly, the hearing officer was obliged to consider the application in terms of Subsection 41(5) of the Trademarks Act 1995. The hearing officer pointed out 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 Harris's not insignificant use of the mark, the hearing officer noted the manner of use of REGIONS as a “limping mark” to be a telling factor against a finding that REGIONS did or would distinguish the designated goods. The fact that the word 'regions' was 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 trademark, sealed Harris's fate. The hearing officer concluded that Harris's use of the mark was insufficient to grant registration rights of a descriptive mark to a single trader and that Foster’s had met its onus in its ground of opposition.
Kathy Mytton and Sean McManis, Shelston IP, Sydney

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