When it comes to protecting a brand of wine in Australia, filing a trade mark is only half the job. The real test comes during examination, i.e. where legal rules, geographic conditions, and even the subtle meanings of everyday words can make or break your application. If your product falls under Class 33 (which includes alcoholic beverages like wine), you’re in a space with some of the strictest scrutiny under the Trade Marks Act 1995 and Wine Australia Act 2013.
Why Wine Trade Marks are Treated Differently?
Wine isn’t just another consumer good. It’s deeply tied to place, tradition, and provenance. That’s why Australia has a Register of Protected Geographical Indications and Other Terms (Wine Register). Think of it as a list of names that are tightly controlled, like “Barossa Valley” or “Côtes du Rhône”. If your trade mark uses or even resembles a name on this register, you’re stepping into regulated territory.
Under Section 42(b) of the Trade Marks Act, your application can be rejected if:
- Your mark includes a protected geographical indication (GI);
- It uses a quality wine term, traditional expression, or other protected wording;
- Or it just sounds too much like one of those terms, even if not identical.
What Counts as a Problem?
Let’s say you apply for a trade mark like “Greater Perth Vintage” for your wine. That’s a red flag right there. “Greater Perth” is a GI, and “Vintage” is a quality wine term. When you combine those in a mark, it gives the impression that the wine comes from that specific region and meets the quality implied by “vintage.” If it doesn’t, your application is in breach of the Wine Australia Act and will likely be refused. But here’s the tricky part, not all words that appear on the Wine Register are problematic in every context.
When Ordinary Words Cause Confusion?
Some words, like “Palette”, are listed as GIs (in this case, a GI in France). But if you’re using them in a way that clearly references their ordinary English meaning, such as “Artist’s Palette”, you might be in the clear. The test is whether the average Aussie wine buyer would connect the word to a place or just see it as part of an ordinary expression. So yes, context matters. But you better be able to show that your use is descriptive or artistic, not geographic.
Names, People, and Protected Terms
Now, what if your surname happens to be a protected GI? You’re actually allowed to use your own name, even if it includes a GI like “Franken.” Under the Wine Australia Act, individuals (but not companies) get an exemption to use their name in good faith. So, Ricard Franken can register a trade mark with his full name. But if he later sells that mark to Franken Wines Pty Ltd, the exemption vanishes, and the application (or existing registration) may face rejection under Section 42(b).
Watch for “Lookalike” Terms too
Don’t try to get clever with spelling or language swaps either. If your mark sounds or looks close to a GI, even if it’s not a direct match, it can still get the axe. Examples like “BAROSA VALLEY” (instead of “BAROSSA VALLEY”) or “RHONE ROAD” (echoing “Côtes du Rhône”) are classic traps. Even English translations of non-English GIs can land you in trouble.
Deception and Confusion under Section 43
Sometimes, it’s not about using a GI at all. If your trade mark suggests a geographic origin that could mislead people, like “Okey Dokey Wines Tanunda” for wine not produced in Tanunda, you’ll face scrutiny under Section 43.
To fix this, you can-
- Refine your product description (e.g. “Wine produced in Tanunda”)
- Or add a condition of registration, agreeing that your wine will actually be produced in that place.
Either way, clarity about your wine’s origin matters.
Can Your Trade Mark Actually Distinguish Your Wine?
Even if your trade mark avoids protected terms, it still needs to stand out. That’s what Section 41 is all about. A trade mark must be capable of distinguishing your goods from others. Generic terms, geographic names, and common wine-industry words don’t cut it.
For example-
- “Leeton Wine” isn’t a GI, but since Leeton is in a well-known wine region, it still lacks distinctiveness.
- Words like “Estate,” “Cellars,” “Vineyard,” or “Range” are so common in the wine business that they barely register as distinctive.
- Even cocktail names like “Martini” or “Cosmopolitan” are often rejected, especially if they’ve become generic in Australia.
In contrast, composite marks that add unique or creative elements alongside GIs may be okay, if those extra parts genuinely distinguish your brand.
What Should Wine Makers and Brand Owners Do?
If you’re building a wine brand and planning to register a trade mark in Class 33, here’s how to stay out of trouble-
- Search the Wine Register before filing anything. Know what’s protected and what’s off-limits.
- Avoid lookalike or soundalike names. Small tweaks won’t save you.
- Context is everything, i.e. explain your use clearly, especially if your mark includes a common English term.
- Be transparent about origin. If your wine comes from a place, say it. If not, don’t hint at it.
- Add conditions or clarifications if needed. They might be the easiest way to overcome objections.
Final Thoughts
Trade marks for wine carry more baggage than most other products, and for good reasons. Geography, tradition, and reputation all pour into the bottle, and the law is built to protect that. But with the right approach and clear branding strategy, it’s absolutely possible to create a legally strong and market-savvy wine mark. Just don’t try to sneak in “Barosa” and hope nobody notices.
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.
