A recent Federal Court case handed down a decision of “grape” proportions which discussed when the use of a phrase or sign similar to a registered trade mark is so deceptively similar as to be considered to be infringing on the trade mark.

Samuel Smith and Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd [2016] FCA 1515 dealt with a trade mark dispute brought on by Samuel Smith and Son Pty Ltd and its subsidiary, who are known for their Yalumba range of wines, against Pernon Ricard Winemakers Pty Ltd, who produce Jacob’s Creek wines. Samuel Smith and co alleged that Jacob’s Creek had infringed on their registered trade mark used on their Yalumba wine range, “The Signature”, when Jacob’s Creek used the words “Barossa Signature” on a new range of red wines.

In the case, his Honour Justice Charlesworth, held that although Jacob’s Creek use of the “Barossa Signature” phrase had been used in such a way that it could be considered a trade mark of its own and that the phrase used a significant proportion of Yalumba’s registered trade mark, it could not be considered to be infringing on the registered trade mark because it was not deceptively similar to the registered trade mark. His Honour went on to say that Jacob’s Creek’s use of the phrase was to describe the wines as quintessential or typical of the wines produced from grapes grown in the Barossa Valley region. In the context of where the phrase was displayed on the bottle’s label and in other marketing material by Jacob’s Creek, the phrase was not used in an attempt to deliberately cause confusion to customers as to whether they were buying Jacob’s Creek wine or Yalumba wine.

On this basis, his Honour concluded that Jacob’s Creek had not infringed Yalumba’s trade mark after all.

Trade mark infringement can be a serious matter for businesses of any size. At Ramsden Lawyers, we provide expert advice in both Litigation and Corporate and Commercial matters. If you are facing a potential trade mark infringement matter, whether you own the registered trade mark being infringed, if you may be infringing a registered trade mark or if you would like to register a trade mark, contact us for a confidential discussion on 1300 749 709.