On 9 July 2009, Hearing Officer Claudia Murray denied vigneron, Andrew Harris, exclusive use of the word "Regions" in respect of "alcoholic beverages including wine".
Mr Harris ("the applicant") filed Trade Mark Application 1088609 Regions on 1 December 2005. No objection was raised against the application at examination and it proceeded to advertisement for acceptance. On 30 June 2006, Berenger Blass Wine Estates Limited (now Foster's Wine Estate Limited – "the opponent") opposed Application 1088609.
Just prior to the hearing, the opponent advised the Registrar that it would pursue only a single ground of opposition, namely, distinctiveness.
At the hearing, the opponent's counsel argued that the word "Regions" is "primarily descriptive and therefore not adapted to distinguish any single traders wine". The words "Region/s" are commonly used in the wine trade both as a general description and as a "term of art". Its definition in the Australian Wine and Brandy Regulations 1981 (Cth), assists in determining the scope and boundaries of "geographical indications".
The opponent produced extensive evidence to support its contention that the term "Regions" is used by "a whole industry of wine producers".
The applicant argued that since he commenced using the trade mark "Regions" on 10 April 2006, there have been no complaints from customers, competitors, retailers or trade mark owners. He said that he always used the word "Regions" in conjunction with Registered Geographical Indications on all wine labels. The applicant 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 but those claims were not substantiated by evidence. He claimed that the names of the geographical indications are descriptions whereas the term Regions is not a recognised description but is a misused term.
The hearing officer considered the evidence and submissions of both parties and found that the trade mark Regions had only "the faintest hint of an inherent capacity to distinguish the applicant's goods". Accordingly, the hearing officer was obliged to consider the application in terms of subsection 41(5) of the Act. The hearing officer said 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 the applicant's not insignificant use of Regions, the hearing officer noted the manner of use of the trade mark as a "limping mark" to be a telling factor against a finding that Regions does or will distinguish the designated goods. The fact that the word "Regions" is 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 trade mark, sealed the applicant's fate. The hearing officer found that the applicant's use of the trade mark was insufficient to grant registration rights of a descriptive mark to a single trader, and that the opponent had met its onus in its ground of opposition.
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