France has a renowned reputation for being a leader in the worlds of gastronomy and fine wine, and is not afraid to admit it. It is also fiercely protective of its home-grown produce. For example, over 150 French foods are now protected in the European Union by virtue of the fact that they come from specific regions of France. It is considered that there are links between the qualities, characteristics and/or reputations of particular French foods and their geographical origins, as with Roquefort cheese and Crème d'Isigny. Not surprisingly, French winemakers have also sought to protect their products, with some three hundred wines now protected in France under the country's Appellation d'origine controlee scheme.

Given all these successes, it is little surprise then that when one French winemaker's trade mark application was refused recently, the rest of the wine community couldn't help but smile!

The case concerned a French company, Lacheteau SAS ("Lacheteau"), which sells bottles of wine under the name "Kiwi Cuvee". Lacheteau sought to register the name as a trade mark in Australia. The application was opposed, however, by the New Zealand Winegrowers ("the Winegrowers"), an organisation which promotes the interests of grape growers and winemakers in New Zealand.

The Winegrowers sought to rely on section 43 of Australia's Trade Mark Act 1995 which states that,

"An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion."

The Winegrowers argued that as the word "Kiwi" was widely used in Australia to refer to New Zealand, and wines from New Zealand were widely known in Australia, it was likely that the Australian public would be confused into thinking that "Kiwi Cuvee" was actually a New Zealand wine. This was despite the fact that Lacheteau's label states that the wine is made in France, albeit in a much smaller font than the name "Kiwi Cuvee".

To support this argument, the Winegrowers drew the Hearing Officer's attention to the "on premises" market: cafes, bars and restaurants. Here, bottles of wine would not usually be on display. Instead, a consumer would be given a brief description of the wine on a wine list, or ask for a wine by variety such as a "Kiwi sauvignon blanc", without inspecting the label. In such circumstances, the Winegrowers argued, there was a likelihood of confusion.

The Hearing Officer agreed with both of the Winegrowers' arguments. He considered that "colloquial and colourful language are more readily used in Australia now than they were twenty years ago and I think that, whatever may be the case in the European wine market, "Kiwi" is readily susceptible to informal descriptive use, here, in relation to New Zealand wine." He was also persuaded by the Winegrowers' market argument, stating that, "More knowledgeable consumers, in particular, may ask for a wine by reference to its district or country of origin. These are the consumers who would be most easily led astray by usages on wine lists or in other circumstances where brief descriptions may be used."

As New Zealand wines have increased in popularity in recent years, the decision, which prevents Lacheteau from capitalising on this success, has been welcomed…and no doubt a glass or two was raised in celebration!

(Source: New Zealand Winegrowers v Lacheteau SAS [2009] ATMO 82)

For further information please email jenna.bruce@howespercival.com