Explanatory Memorandum
(Circulated by authority of the Hon Mark Vaile MP, Minister for Trade)Schedule 3 - Australian Geographic Indications for Wine
Subdivision D - Objections to determination of geographical indications based on pre-existing trade mark rights
12. Subdivision D provides procedures for a trade mark owner to object to the determination of a GI. It establishes a mechanism in the GI determination process for the Registrar of Trade Marks to consider the rights of trade mark owners and advise the Geographical Indications Committee (GIC) of the outcome. This mechanism:
- •
- maintains the "first in time, first in right" principle (protects the rights of pre-existing trade mark owners);
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- ensures the onus is on the owner of the trade mark to protect their rights; and
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- provides the opportunity for all parties to present their case.
Section 40RB Grounds of objection to the determination of a geographical indication
13. The amendments will provide for the Registrar of Trade Marks (the Registrar) to hear objections from:
- a)
- 40RB(1) registered owners of registered trade marks;
- b)
- 40RB(3) applicants for the registration of a trade mark; and
- c)
- 40RB(4) common law trade mark owners
to the determination of an Australian GI on the basis of pre-existing trade mark rights.
1. The amendments will provide for the Registrar of Trade Marks (the Registrar) to hear objections to the determination of a GI on the basis of pre-existing trade mark rights on one of three different grounds:
- a)
- the proposed GI is identical to a registered trade mark;
- b)
- the proposed GI would cause confusion with a trade mark that consists of a word or expression;
- c)
- the proposed GI would cause confusion with a trade mark that contains a word or expression.
The proposed GI is identical to a registered trade mark
1. Where a proposed GI is identical to a word or expression of which a registered trade mark consists and the trade mark consists only of that word or expression (and the registered trade mark does not have a device or logo) the validity of the registration will be presumed and the objection will be taken to be made out.
2. For example, if the registered trade mark is "Bourke Valley" and the proposed GI is "Bourke Valley" the Registrar will determine that an objection has been made out.
The proposed GI would cause confusion with a trade mark that consists of a word or expression
3. Where a trade mark includes a word or expression the same as or similar to the proposed GI (and the trade mark does not have a device or logo), the Registrar will consider whether the proposed GI would cause confusion with the trade mark.
4. In this instance the proposed GI may be very similar to the trade mark or the name of the proposed GI may be an element of the words that make up the trade mark.
5. For example, the Registrar will consider whether a GI "Bourke Valley" would cause confusion with the whole trade mark "Bourke Valleys" or the whole trade mark "Bourke Valley Estate".
The proposed GI would cause confusion with a trade mark that contains a word or expression
6. Where a trade mark contains a word or expression that is the same as or similar to the proposed GI the Registrar will consider whether the proposed GI will cause confusion with the part of the trade mark.
7. In this instance a trade mark may also include a device or logo as well as a word or expression.
8. The Registrar will also consider whether the trade mark owner has rights in the words that are the same as or similar to the GI.
9. For example if the proposed GI is "Bourke Valley" and a trade mark is "Bourke Valley Estate" the Registrar will consider whether confusion is likely between the proposed GI "Bourke Valley" and the words "Bourke Valley" in the trade mark. However the trade mark owner will also need to show that they have rights in the words "Bourke Valley".
10. In all the above examples a person who claims to have trade mark rights in a trade mark that is not registered (a common law trade mark owner) will have to demonstrate that they do have those rights.
Section 40RC Consideration of objections
11. The Registrar may find that despite a ground of objection being made out it is reasonable for the proposed GI to be determined. Such a finding could be made when the Registrar finds that the proposed GI was in use before the trade marks rights arose.
12. Appeals against findings of the Registrar may be made to the Federal Court as is the case with appeals against the Registrar's findings under the Trade Marks Act 1995.
Section 40RG Decisions made under this Act not to affect rights under Trade Marks Act
13. The Registrar will make decisions about trade marks rights on the basis of a different process to the process set out in the Trade Marks Act. Consequently decisions made under the Australian Wine and Brandy Corporation Act do not create rights or pre-empt or influence decisions of the Registrar under the Trade Marks Act.
Consequential changes to the Australian Wine and Brandy Corporation Regulations
14. A new sub-regulation to the Australian Wine and Brandy Corporation Regulations 1981 will provide that a person who owned a registered trade mark before a GI was applied for or has made out a ground of objection may continue to use the trade mark for the description and presentation of a wine regardless of the origin of the wine. Where the wine is sourced from grapes grown outside of the GI the trade mark may continue to be used in the description and presentation of the wine provided that an appropriate statement is included on the label that alleviates any confusion as to the origin of the wine.
Division 4A - Omission of registered geographical indications
15. A new Division 4A has been included in the Australian Wine and Brandy Corporation Act to provide that the GIC may remove Australian GIs from the Register of Protected Names on the grounds that the GI is not in use or is no longer required.