High Court says Wine and Beer are the Same Thing (well, almost . . .)

Intellectual Property: 23 March 2019

Trade marks are registered so as to apply to specified goods and services. In Australia, as in most countries, the goods and services are arranged into 45 classes (the Nice Classification). In general, the classes group together similar goods and similar services. Therefore, if you are seeking to register a trade mark that contains elements that are similar to someone else's trade mark, you are more likely to find that the two marks conflict if the goods or services covered by both marks are in the same class. This is not exclusively the case, however, as was demonstrated in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15.

This case concerned trade marks that each contained the word 'Barefoot', one of which was registered for wine (which, along with all other alcoholic beverages except beer, is in class 33) and one of which had been applied for in respect of beer (in class 32).

Under the provisions of the Trade Marks Act 1995, a registered trade mark is said to be fringed if an identical or deceptively similar trade mark is used in respect of the same goods for which the trade mark is registered, or in respect of 'goods of the same description' as those goods. In this case, the High Court refused leave to appeal from the earlier Full Federal Court finding that beer and wine are not 'goods of the same description'.

Given the particular nature of the Australian alcoholic beverages industry, where alcoholic beverages of all descriptions tend to be sold through the same distribution channels, it would appear that all alcoholic beverages are potentially 'goods of the same description' as each other, and that therefore the use of trade marks containing identical or similar distinguishing words or features on different alcoholic beverages by different makers or marketers is most likely to bring about an infringement.