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Without Oyster Bay, it’s just a bottle
A recent trade mark dispute concerning an application to register a wine bottle shape and label as a trade mark has highlighted some of the difficulties in protecting non-traditional trade marks.
In February 2010, Delegat’s Wine Estate Ltd, the makers of Oyster Bay wines, applied to register a trade mark comprising the shape of a wine bottle, an elongated blue cap and a particular patterned label.
No writing, logo or other branding was claimed in the application.
Oyster Bay’s trade mark application was opposed by a number of Australian winemakers – Accolade Wines Australia Ltd, Pernod Ricard Winemakers Pty Ltd, Treasury Wine Estates Ltd and Australian Vintage Limited.
The opponents argued that the bottle shape and label were not distinctive enough to differentiate Oyster Bay’s wine from others in the industry.
What was decided
The Delegate agreed with the opponents and refused the application.
The Delegate held that the bottle shape and label was not distinctive and there was no evidence that Oyster Bay had used or promoted the shape and label as a trade mark.
The bottle shape and label was also found to only have been used with other, more prominent, trade indicia, notably the primary OYSTER BAY mark and logo. Accordingly, the bottle shape and label were considered ‘limping trade marks’ which did not function as trade marks on their own and which had no degree of distinctiveness except when combined with the primary OYSTER BAY mark.
- Non-traditional marks, such as shape, sound, colour and scent marks, must still pass the distinctiveness test in order to be registrable.
- Further, it is very important to establish that a shape, sound, colour or scent mark has been used and promoted as a ‘badge of origin’ and is not simply a functional aspect of the product or product packaging.
- A trade mark that is secondary to a primary mark and rarely used on its own, can be difficult to protect as it is often considered a limping mark.
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