Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd  FCA 1515 (14 December 2016)
Samuel Smith was unsuccessful in establishing infringement of its trademark registration for THE SIGNATURE by Pernod Ricard.
THE SIGNATURE trademark registration dated from 2 September 1999 and covered “wines, especially still table wines” in class 33. Samuel Smith’s YALUMBA business dates back to 1849 and the words THE SIGNATURE had been used on labels of Yalumba wines for about 20 years before being registered as a trade mark. These wines currently retail for about $60 per bottle.
Pernod Ricard acquired the JACOB’S CREEK wine business which itself dates back to 1847. Since 2000 it has produced a range of wines under the RESERVE brand which attract a higher price than other JACOB’S CREEK wines and retailed between $15 and $25 per bottle. Due to the increased cost of supplying Barossa Shiraz style grapes, Pernod Ricard decided to introduce a sub range of wines within its RESERVE wine range to retail at $2 per bottle more than other products in the RESERVE range. The words BAROSSA SIGNATURE were selected for this sub range of premium wines. Pernod Ricard’s searches had disclosed Samuel Smith’s THE SIGNATURE trademark registration, but the risk was considered by its trademark lawyers to be low provided BAROSSA SIGNATURE was used as a single phrase. These wines were released for sale in September 2015 with labels as shown below:
This BAROSSA SIGNATURE sub range of wines was also promoted on the Jacob’s Creek website and on printed in store displays, one version of which is shown below:
Charlesworth J firstly considered whether the phrase BAROSSA SIGNATURE was being used by Pernod Ricard as a trade mark and found in the affirmative. While the words BAROSSA and SIGNATURE are common in ordinary English usage, the peculiar order of these words is a significant feature. The meaning conveyed by this phrase is “conveyed indirectly by an unconventional use of conventional words”. While this phrase has a descriptive element, the meaning is conveyed impressionistically rather than literally.
Pernod Ricard argued that the only signs it used as brands are JACOB’S CREEK, RESERVE or JACOB’S CREEK RESERVE and that the phrase BAROSSA SIGNATURE was not functioning as a trade mark i.e. as a badge of origin. This phrase merely distinguished products within the JACOB’S CREEK range, but would not be understood by consumers as a sign which distinguished the relevant goods from those of other traders. However, her Honour rejected this and concluded that BAROSSA SIGNATURE functions as a trade mark, being a sub-brand which is part of the brand personality of Pernod Ricard.
Charlesworth J then went on to consider whether Pernod Ricard’s BAROSSA SIGNATURE trade mark was deceptively similar to Samuel Smith’s registered THE SIGNATURE trade mark and found in the negative.
Her Honour reviewed the authorities and particularly the Henschke case and noted that reputation of a registered trade mark is only relevant to the deceptive similarity issue (in assessing the nature of the consumer’s imperfect recollection of it) where the registered mark, or an important element of it, is notoriously so ubiquitous and of such long standing that consumers must be taken to be familiar with it. However, her Honour was not satisfied THE SIGNATURE trade mark fell into this category.
Charlesworth J considered the word THE in the registered THE SIGNATURE trade mark serves the purpose of attaching definitive significance to the word that follows which affects the idea conveyed by this registered mark. It causes the word SIGNATURE to convey its ordinary meaning as a noun and assists in creating a subtle impression that the signature referred to is one of some importance. Her Honour considered the element of grammatical nonsense in the BAROSSA SIGNATURE trade mark (attributable to the literal meaning being contorted by the noun preceding the adjective) creates a further and important difference between the respective trade marks. There is a lesser likelihood of confusion where ordinary words are used in an invented combination as they are here. Her Honour concluded that, although a distinctive part of the registered trade mark was used in the BAROSSA SIGNATURE mark, it is not used in such a way and in such a context that its use would be likely to cause confusion.
For completeness and by way of obiter dicta, Charlesworth J went on to express the opinion that, if deceptive similarity had been found, Pernod Ricard could not avoid infringement by relying on s 122 (1)(b)(i). Pernod Ricard argued that it intended to use BAROSSA SIGNATURE in good faith for the sole purpose of indicating the characteristic of its wines being quintessential or typical of wines produced from grapes grown in the geographical indication of the Barossa Valley. While her Honour considered this was a relevant characteristic under s122(1)(b)(i), she was not satisfied Pernod Ricard had this narrow intention. Rather, Pernod Ricard intended to use BAROSSA SIGNATURE both to indicate this relevant characteristic and to distinguish its goods from those of other traders. Her Honour noted Pernod Ricard’s evidence relating to legal risk assessments after it became aware of the registered THE SIGNATURE trade mark and considered Pernod Ricard had the dual imperative to develop a sign which conveyed a descriptive meaning and that would also serve the purpose of an effective and attractive sub brand.