Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd [2016] FCA 1515

Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd [2016] FCA 1515

While BAROSSA SIGNATURE was used by Pernod Ricard as a trade mark, it is not deceptively similar to THE SIGNATURE. The unusual combination of descriptive words, trade context, and distinctive features prevent a likelihood of consumer confusion. Yalumba's application is dismissed because the impugned sign is not deceptively similar to the registered mark.

Jurisdiction
Australia
Judgment Date
14 December 2016
Procedural Posture
Trade Mark Infringement Proceedings / Judgment Following Trial
Outcome
Application dismissed
Legal Topics
['trade Marks' 'trade Mark Infringement' 'use as a Trade Mark' 'deceptive Similarity' 'defence—descriptive Use' 'good Faith' 'sub Brands in Wine Industry']
['intellectual Property'] ['trade Marks' 'trade Mark Infringement' 'use as a Trade Mark' 'deceptive Similarity' 'defence—descriptive Use' 'good Faith' 'sub Brands in Wine Industry']

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Procedural Posture

Trade Mark Infringement Proceedings / Judgment Following Trial

Legal Issues

  1. 1 ['Whether the respondent used the words BAROSSA SIGNATURE as a trade mark' 'Whether BAROSSA SIGNATURE is deceptively similar to THE SIGNATURE (the Yalumba Mark)' "Whether the respondent's use was in good faith under s 122(1)(b) of the Trade Marks Act 1995 (Cth)"]

Ratio Decidendi

While BAROSSA SIGNATURE was used by Pernod Ricard as a trade mark, it is not deceptively similar to THE SIGNATURE. The unusual combination of descriptive words, trade context, and distinctive features prevent a likelihood of consumer confusion. Yalumba's application is dismissed because the impugned sign is not deceptively similar to the registered mark.

Court Disposition

Application dismissed

Orders

  • ['1. The application is dismissed.']