Case summary of Lacheteau SAS v New Zealand Winegrowers (2009) 84 IPR 134
Is it confusing to describe a French wine as a Kiwi? Leaving aside the befuddlement one may encounter when pondering why a French wine maker would masquerade their wine as a drop from New Zealand, this was the question that faced IP Australia’s Trade Mark Office in a recent hearing of an organisation of New Zealand winegrowers’ opposition to the registration of the trade mark ‘Kiwi Cuvee’ (Mark).
The decision provides a helpful summary of the contemporary forms of evidence that may be used by a party to persuade a Hearing Officer that a word may develop certain connotations in contemporary society. In this case, the Hearing Officer was required to assess the probative value of evidence from Google searches, web logs (Blogs) and evidence relating to the cultural distinctions between the manner in which New Zealand (screw top) and French (cork) wines are normally packaged.
Lacheteau SAS (Applicant) is a French wine producer who used the mark ‘Kiwi Cuvee’ in Europe, and sought the registration of the Mark in Australia for their Sauvignon Blanc wine.
New Zealand Winegrowers (Opponent) is an organisation that promotes its namesake, and filed a notice of opposition to the registration of the Mark.
The primary ground of opposition relied upon by the Opponent was that the Applicant’s use of the word ‘Kiwi’ breached section 43 of the Trade Marks Act 1995 (Cth) (Act) in that it was likely to deceive or cause confusion to the consumer because of a confusing connotation derived from the word ‘Kiwi’.
The Hearing Officer found that the word ‘Cuvee’ is a descriptive term for wine, which often refers to a premium vat or tank of wine, and is therefore not so distinctive as to render any confusion caused by the word ‘Kiwi’ immaterial despite the alliteration of the words ‘Kiwi Cuvee’.
To satisfy the Hearing Officer that the word Kiwi was confusing in its current context, the Opponent needed to show that the word ‘Kiwi’ connotes a product emanating from New Zealand.
The Opponent tendered advertisements from Australian wine merchants showing New Zealand wines being described as ‘Kiwis’ however, this evidence was found to be relatively sparse and uncompelling, as often the wines were primarily described as being from New Zealand prior to them being described as ‘Kiwis’. The Opponent also tendered evidence of confusion, from comments he had sourced from Blogs. The Hearing Officer determined that these sources were ‘typified as journalistic usage or exaggerations, often found in some third party internet Blog site, of questionable authority,’ and failed to give the Blog entries any weight.
The Opponent also suggested that a Sauvignon Blanc was an archetypal New Zealand wine, and that by using a screw top rather than a cork, the Kiwi Cuvee betrayed its French origins and purported to be a ‘Kiwi’ wine, as screw tops were an ‘anathema’ to French wines.
The Applicant sought to negate the Opponent’s evidence by tendering search results from Google, which demonstrated that when you searched the term ‘Kiwi wine’, the majority of the search results showed pages displaying wines derived from kiwi fruits, rather than wines from New Zealand.
In consideration of the above arguments, the Hearing Officer drew on Finn J’s curious distinction in Henschke & Co v Rosemount Estates Pty Ltd (1999) 47 IPR 63 between an involved and an uninvolved wine consumer, and found that the:
‘uninvolved consumer is perhaps less likely to assume that (colloquial or otherwise) use of Kiwi as a description of the origin of the wine is what is intended,’
whereas an involved consumer, who may order wine by the region, may be incorrectly provided with a Kiwi Cuvee when requesting a New Zealand white.
The Hearing Officer accepted that the term Kiwi, as used in Australia, primarily connoted a person from New Zealand, however a product or service with a trade origin of New Zealand could be classified as a secondary connotation of the word ‘Kiwi’. Section 43 of the Act refers to: ‘some connotation that the trade mark’ has, upon which basis the Hearing Officer found that even though ‘Kiwi’ did not primarily connote a product, it could in fact be used by an Australian in that way. The Hearing Officer found:
'Colloquial and colourful language are more readily used in Australia now than they were 20 years ago and I think that, whatever may be the case in the European wine market, ‘Kiwi’ is readily susceptible to informal and descriptive use, here, in relation to New Zealand wine.'
This shift away from the traditional focus on formal language is reflected in the Hearing Officer’s willingness to accept new forms of internet media into evidence. However, the Hearing Officer’s sceptical remark that the Blogs tendered into evidence by the Opponent were of ‘questionable authority’, serves as a reminder that a source’s credibility is paramount in evidence regardless of the form in which that evidence is ultimately sought to be tendered.