Limping Trade Marks and Distinctiveness in Australia

Oyster Bay’s Wine Bottle Trade Mark Application Rejected

In 2012, New Zealand winery Oyster Bay filed a trade mark application as follows:

In its words the distinguishing features were:

1. elongated blue cap with gold band
2. bottle shape as shown
3. label comprising
   1. top (gold) band with wave shaped lines
   2. grey elliptical medallion substantially within the aforementioned band
   3. further contrasting darkened gold band below the elliptical medallion
   4. predominantly white label area
   5. grey band running along the bottom of the white label area.

A number of Australian wineries opposed the application. They argued that the trade mark was only used with much more prominent indicia including:

1. the trade mark OYSTER BAY
2. a varietal name, such as SAUVIGNON BLANC or CHARDONNAY
3. a black and white illustration of a bay
4. the region name Marlborough
5. the country name New Zealand
6. the phrase “Oyster Bay wines capture the special character of New Zealand … elegant, assertive wines with glorious fruit flavour”.

The Hearings Officer stated that there was no evidence of the applicant having promoted the trade mark as a trade mark, that is, as a means of distinguishing its goods. While some premium wine consumers in Australia associate the opposed trade mark with the applicant’s OYSTER BAY branded wines, however, this association does not lead to the conclusion that the trade mark by itself has been used as a trade mark.

This decision provides another valuable reminder to applicants considering registering non traditional marks that if the elements they are seeking to protect are second in importance to the main trade mark, it is unlikely that they will function as a trade mark on their own. Further, if they are never seen other than to support the main trade mark, they are unlikely to be able to have the sufficient levels of use and recognition such that they are separately capable of registration in Australia.