Is a wine bin number inherently able to distinguish it as a trade mark?

An application for registration of a trade mark can be refused by Intellectual Property Australia (IP Australia) for various reasons – including the trade mark not being capable of distinguishing the applicant’s designated goods and/or services from the goods and/or services of other persons (section 41 of the Trade Marks Act 1995 (Cth)).

To overcome this refusal, the applicant can provide evidence of use or other circumstances, and otherwise seek to demonstrate that the trade mark IS, or may be taken to be, capable of distinguishing the applicant’s goods or services.

It is worthwhile to note that the starting point for the IP Australia examiner is that there is a presumption of registrability, which means that if there is doubt in the examiner’s mind as to whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.  The focus should be on what is wrong with the trade mark to warrant the examiner from being entitled to reject it.

Also, section 41 can be a ground of opposition by another party, which carries the burden (or the “onus”) or establishing one or more of the grounds of opposition on the balance of probabilities.

What does “inherent adaption to distinguish” mean?

A trade mark can fall within any of the following categories:

1. Sufficiently inherently adapted to distinguish and therefore prima facie capable of distinguishing;
2. Some limited inherent adaptation to distinguish, but not prima facie capable of distinguishing; and
3. No inherent adaptation to distinguish.

Also, trade marks that consist wholly of a sign that is ordinarily used to indicate:

• the kind, quality, quantity, intended purpose, value, geographical origin or some other characteristic of goods or services, or
• the time of production of goods or the rendering of services,

are not inherently adapted to distinguish goods or services.

The test for “inherent distinctiveness” involves a 2 step process:

1. ascertain what is the ordinary signification of the trade mark in Australia to persons who will purchase, consume or trade in the goods; and
2. once the ordinary signification is established, ask whether other traders might legitimately desire to use the trade mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of the same or similar goods.

Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ)

Endeavour Group Ltd v Southcorp Brands Pty Ltd [2023] ATMO 127 (29 August 2023)

Endeavour Group (which operates a portfolio of complementary brands and businesses including BWS and Dan Murphy’s) lodged an opposition in relation to Southcorp Brands’ application to trade mark “BIN 2” and “BIN 8” in the class for wine.  Southcorp Brands sells wine across the world under brands which include Penfolds.

Interestingly, the Delegate of the Registrar of Trade Marks made the following observation:

“Just as the distinction between descriptive and fancy names is not a distinction of law so too it is wrong to see the distinction in black and white terms. The reality is that there is a continuum with at the extremes purely descriptive names at the one end, completely invented names at the other and in between names that contain ordinary English words that are in some way or other at least partly descriptive. The further along the continuum towards the fancy name one goes, the easier it will be for a plaintiff to establish that the words used are descriptive of the plaintiff’s business. The closer along the continuum one moves towards a merely descriptive name the more a plaintiff will need to show that the name has obtained a secondary meaning, equating it with the products of the plaintiff (if the name admits of this — a purely descriptive name probably will not) and the easier it will be to see a small difference in names as adequate to avoid confusion."

The Delegate’s issue in this instance was whether BIN 2 and BIN 8 possessed any ordinary signification and if they did, whether or not other traders might think of BIN 2 and BIN 8 and want to legitimately use them for that ordinary signification and not necessarily to denote trade origin. The Delegate considered the Macquarie Dictionary’s definitions of BIN with respect to wine, and observed that the application, however, did not relate to the word BIN alone, therefore it had to consider the trade marks as a total composition. Noting the logical numerical sequencing, the Delegate put both BIN 2 and BIN 8 at the highly descriptive end of the continuum of distinctiveness, and concluded that they were not inherently adapted to distinguish.

The Delegate then considered whether the applicant had used each of the trade marks respectively to such an extent that they distinguish the applicant’s goods as being those of the applicant.  It is not enough to just refer to use – it must be capable of distinguishing.  In this instance, the applicant produced evidence of the trade marks’ use, but “[fell] short as to how the particular market has been educated concerning that use and how the market perceives the trade marks in denoting the wine in respect of which they are used”.

The Delegate refused the registration and awarded costs against the applicant.