Barossa winemaker Yalumba loses 'Signature' trademark case against Pernod Ricard

All clear. Picture: OzWineReview.com

In one corner is a $60 bottle of red made by Australia’s oldest family-owned winery; in the other, a $20 Barossa shiraz from one of country’s best-known brands, Jacobs Creek, owned by global giant Pernod Ricard.

What they have in common is the use of the term “Signature” and for the last six months, the use of that single word has been a major fight in the Federal Court.

Yesterday the court dismissed an application by Yalumba against the Jacobs Creek Reserve Barossa Signature range, which claimed the Pernod Ricard term infringed on the Yalumba trade mark, “THE SIGNATURE”.

The fight was provoked by Yalumba owner Robert Hill-Smith when Pernod Ricard released three Jacobs Creek red wines in September 2015 with “Barossa Signature” on the label.

Yalumba has been producing its “The Signature” cabernet-shiraz blend since 1966, which features the signature of the family-owned winery’s founder, Samuel Smith, but it only registered the term as a trade mark in November 2000.

In her judgment today, Natalie Charlesworth said the case came down to three questions: whether Pernod Ricard used the words “Barossa Signature” appropriately under the Trade Marks Act, whether it was deceptively similar to the Yalumba Trademark, and whether Pernod Ricard used the term “in good faith to indicate the kind, quality, intended purpose, geographical origin or some other characteristic”.

Yalumba chairman Robert Hill-Smith.

She concluded: “The first of those questions should be answered yes. The second should be answered no. It follows that Yalumba’s application must be dismissed. Had it been necessary to answer the third question, I would have determined that issue against Pernod Ricard.”

Her judgment appears to suggest that while Pernod Ricard potentially did not act “in good faith”, the Jacobs Creek logo was sufficiently different to the Yalumba version to escape censure.

Lawyers for Samuel Smith and Son claim Pernod Ricard engaged in “deceptive similarity” in using the “Signature” brand. Pernod Ricard rejected the notion, arguing the label reflected both the wine’s geographical location and characteristics, and “Signature” was used adjectively.

“There is nothing about [Yalumba’s] The Signature that conveys any regionality at all,” Pernod Ricard’s lawyers argued during the case.

Hill-Smith, chairman of the 166 year-old winery, told Business Insider he was “naturally disappointed” the trade mark infringement case was dismissed.

He added that Yalumba will be “reading the judgement and considering our position… over a glass or two”.

“We have worked long and hard to build the reputation of our fine wine,” he said.

“Whilst the law is one aspect of this saga we value many other aspects of our Australian wine growing culture and its fraternity.

“We shall be careful to embrace those values forever and as a family who has been here at Yalumba since 1849, we are like the magnificent elephant and have long memories.

“In the meantime, we hope devotees of our Yalumba The Signature celebrate Christmas and the New Year with friends.”

The Yalumba winery

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