YALUMBA HAS DECIDED NOT TO PURSUE an appeal to the Full Bench of the Federal Court after losing a Trade Mark decision late in 2016. Today (January 27) was the final day for an appeal to be lodged. Yalumba lost a Federal Court trademark case it hoped would prevent Jacob’s Creek from using the word ‘signature’ to describe a range of Barossa wines.
The case was dismissed on December 14, 2016, but in making the determination Judge Natalie Charlesworth acknowledged Yalumba’s rights in its Trade Mark for “The Signature” and found Trade Mark usage by Pernod Ricard.
Since 1966 Yalumba has produced a premium Cabernet Sauvignon/Shiraz blend and labels it with the signature of one of the members of the winery team (for example, the 2013 vintage carries the signature of Andrew Murphy – Yalumba’s executive director of wine).
The action from Yalumba followed the release of three red wines from Jacob’s Creek, owned by Pernod Ricard Winemakers, under the Barossa Signature range in September 2015.
Lawyers representing Yalumba claimed Pernod Ricard had used “deceptive similarity” when it used the ‘signature’ branding. However, Pernod Ricard rejected the notion, arguing the label reflected both the wine’s geographical location and characteristics, and ‘signature’ was used adjectively.
Robert Hill-Smith, Yalumba proprietor, said he was disappointed by the judgement and what he said was “poor etiquette and market behaviour” from Pernod Ricard Winemakers.
“There has been overwhelming support from the wine community, not just trade and media but also consumers. It’s testament to the importance of history and provenance in our industry,” Hill-Smith said. “Whilst we have to move on, we will work doubly hard at making the label and wine even more famous and valued by discerning wine drinkers and widening the gap between ourselves and others borrowing from us at the fringe”, he said.
An example of the support from the grape and wine community:
Nick Stock, wine writer (on Facebook in mid-December)
“Failure of the Federal Court. Of course Pernod Ricard are in the wrong and Yalumba in the right. At the very least it’s poor form on the part of Jacob’s Creek (owned by French company Pernod Ricard) to try to appropriate “Signature” in a Barossan context. At worst it is just plain old passing off. Fortunately history tells us that they will most likely stuff up the brand and shelve it in a handful of years when a new marketing régime rolls through, but for now it’s an incredibly bad look whether arrogant or simply naive. Smart money says Yalumba, on the other hand, will still be at it in another 166 years. Kudos on grace in defeat Robert Hill Smith, at least for now!”
When handing down the original Federal Court judgement, 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”.
Charlesworth’s conclusion: “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.”