Jacob's Creek overcomes Yalumba trademark challenge in Australian court

Mathew Lyons

An Australian court this week dismissed claims that Jacob’s Creek owner Pernod Ricard had violated a trademark belonging to the family-owned Yalumba winery.

The case was brought by Yalumba, which argued that the Jacobs Creek Reserve Barossa Signature range, launched in autumn 2015, infringed its trademark ‘The Signature’ Cabernet-Shiraz blend.

Yalumba has produced The Signature since 1966 and trademarked it in 2000.

The case revolved around three key questions, the Federal Court judge, Natalie Charlesworth, said. Did Pernod Ricard use the words “Barossa Signature” appropriately under the Trade Marks Act? Was its use deceptively similar to the Yalumba trademark? And did Pernod Ricard use the term “in good faith to indicate the kind, quality, intended purpose, geographical origin or some other characteristic”.

Charlesworth ruled in Pernod Ricard’s favour on two out of the three issues: “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.”

Charlesworth accepted the argument of Pernod Ricard’s lawyers that Jacob’s Creek’s use of the word ‘signature’ was adjectival and expressive of regionality, a practice they claimed to be widespread in the wine industry.

Yalumba’s ‘The Signature’ refers to the signature of winery founder Samuel Smith, reproduced on its label, the court was told.

Yalumba chairman, Robert Hill-Smith told Australia’s Business Insider that the company would be reviewing the court’s judgement over the coming weeks.

“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.”

A bottle of Jacob’s Creek Barossa Signature retails for less than a third of the price of Yalumba’s The Signature.

 

 

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