Undistinguished Regions

Berenger Blass Wine Estates, now known as Foster’s Wine Estates Limited (Fosters) has successfully opposed a trade mark application for REGIONS in respect of alcoholic beverages including wine in Class 33 filed in the name of Andrew Harris (Harris) in Blass Wine Estates v Andrew Harris [2009] ATMO 52 (9 July 2009).

The only ground of opposition relied at the hearing was that REGIONS was not adapted to distinguish any single trader’s wine as it was primarily descriptive. Fosters relied on a significant amount of evidence suggesting that the word “regions” is widely used in the wine trade, both as a general description, and also as a term of art. Although no such objection was raised during the prosecution of the application, on the basis of the evidence put forward by Fosters, the Hearing Officer found that the mark was only to some extent inherently adapted to distinguish the applicant’s goods from others and that the provisions of section 41(5) applied.

Harris submitted that the important elements in the AWBC Register of Protected Names are the names of the geographical indications themselves rather than the fact that those names are used to describe “regions” and that Fosters was trying to compensate for a marketing opportunity missed. Although the Hearing Officer noted that caution should be used not to conclude that because of the perception of the effectiveness of a mark other traders have a need to use the words in the normal course of trade, she concluded that sufficient evidence was put forward by Fosters to establish a considerable shortfall in inherent adaptation to distinguish.

This shortfall could not be overcome by the applicant’s evidence of use of the trade mark. Although Harris relied on not insignificant evidence of post filing use of REGIONS in relation to wine, such use was found by the Hearing Officer to be use in a “limping” role in conjunction with the name of a specific wine region and was not enough to overcome the ground of objection under section 41 of the Act.