Wine Trade Mark Dispute

Category: , Intellectual Property, Technology & Data
Date: 09 May 2013
Author: Tyrone Walker - Genuine People

Federal Court Ruling: Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd

We are pleased to provide an update on a recent decision by the Federal Court of Australia involving a trade mark dispute in the wine industry. This case highlights important aspects of trade mark law, passing off, and misleading or deceptive conduct under the Australian Consumer Law (ACL). Case Overview:' The applicant, Societe Civile et Agricole du Vieux Chateau Certan (VCC), filed a case against Kreglinger (Australia) Pty Ltd and associated respondents, alleging that the respondents' promotion and sale of wine under the name "New Certan" misled consumers into believing there was an affiliation or approval from VCC. The court addressed claims of passing off and trade mark revocation.

Key Findings:

  1. Misleading and Deceptive Conduct:
  • The court found that the respondents engaged in misleading or deceptive conduct by promoting the "New Certan" wine with labels suggesting an affiliation with VCC. This conduct contravened sections 18 and 29(1)(g) and (h) of the ACL.
  1. Passing Off:
  • The court determined that the use of "New Certan" and related labels created confusion among consumers, leading them to believe there was a connection with VCC's well-known Bordeaux wine.
  1. Trade Mark Revocation:
  • VCC sought the cancellation of the respondents' trade mark registration for "New Certan." However, the court did not grant this relief due to insufficient evidence of reputation in the name "Certan" alone at the relevant time.
Court Orders:' The court issued several orders to address the contraventions, including:
  • Restraining the respondents from bottling, supplying, or distributing the "Prior Branded New Certan Wine."
  • Prohibiting the use of specific promotional text that misled consumers.
  • Requiring the removal of images and listings of the "Prior Branded New Certan Wine" from specified websites.
Implications for Trade Mark Holders:' This decision underscores the importance of protecting trade marks and the potential consequences of misleading conduct. Businesses must ensure their branding and promotional activities do not imply false affiliations or approvals. The case also highlights the evolving nature of trade mark law and the need for vigilance in maintaining and defending brand reputation. '