There’s been recent media interest in wine names and labelling in Australia. It follows a letter to industry from Garry Crittenden of Crittenden Estate in February 2014 concerning confusion between his label, “Crittenden Estate” and Woolworths’ label, “Crittenden & Co”.
This was taken up by Robyn Lewis, CEO of VisitVineyards.com, Australia’s leading online wine and food travel guide, who regards it as one aspect of a much larger issue.
|Garry Crittenden plants first vines at Dromana in Victoria|
|Garry Crittenden starts selling wine under a label prominently featuring his surname|
|Woolworths purchases “Crittenden & Co” bottleshop businesses|
|Woolworths starts selling wine under the label “Crittenden & Co”|
|Crittenden Estate registers “Crittenden Estate” as a trade mark|
|Garry Crittenden and Woolworths start discussions around Woolworths’ use of “Crittenden” on its wines|
|Garry Crittenden distributes his letter. Internet takes it viral|
|Woolworths decides “to phase out the Crittenden and Co brand … in recognition of concerns” and Garry responds|
Robyn has kindly let me shed some light on the battle of the Crittendens. A couple of things first. I’m basing this on information that’s in the public domain. This post is my opinion and is a discussion of some legal issues. I’ve dramatically condensed the legal issues into a simplified overview. It’s not legal advice. Feel free to contact me if you want more than an interesting read.
Business names versus trade marks
A business name is required where the person or company trades under a name which is different from their name or the company’s name. It’s different from the name of a company name (e.g. a Pty Ltd), a trade mark and a domain name.
Registering a business name:
- does not stop another person from registering a similar name;
- will not prevent the name being registered as a trade mark;
- will not prevent the name being used by someone who has already registered it as a trade mark; and
- does not protect you if your business name infringes someone else’s intellectual property rights (e.g. a registered trade mark).
A trade mark is simply something that traders use to tell consumers that anything bearing that mark is from that trader, or is similar to other things bearing that mark. But anyone can slap the TM symbol at the end of their brand name or logo. This is usually shorthand for a business asserting that they use that brand name or logo as a trade mark. It doesn’t itself mean that the trade mark has been registered.
A registered trade mark ® is more powerful. A registered trade mark gives the owner a monopoly to use that name on certain goods and services in Australia. It can be extended to most of the world.
Crittenden Estate registered the words “Crittenden Estate” as a trade mark in 2007. That’s different from the corporation, “Crittenden Estate Pty Ltd”.
Once that trade mark was registered, Crittenden Estate had a monopoly in Australia on using the words Crittenden Estate – any anything substantially identical or deceptively similar to those words – when selling wine and a few other things.
Honest concurrent use
That’s not the end of the story for the “Crittenden Estate” trade mark.
If a person establishes that they were honestly using a brand name or logo which was later registered as a trade mark by another person, they may be able to continue to use the brand name or logo. It’s referred to as honest concurrent use. Honest concurrent use is rather technical and requires specific evidence – particularly that the use was honest. It takes more than a simple lack of knowledge that the (now registered) trade mark was being used.
This story suggests that Woolworths obtained the trading name “Crittenden & Co” by buying a wine merchant business by that name in the 1990’s. It may be that Woolworths honestly started selling wine under that name without knowledge of Garry Crittenden’s wine labels. That seems to me to be consistent with Woolworth’s apparent resistance to settle with Crittenden Estate. Garry Crittenden says Woolworths was selling Crittenden Estate wines at the time.
If Crittenden Estate had been registered as a trade mark before Woolworths started selling “Crittenden & Co” wine, this story may not have been a story at all.
It’s still confusing
It’s possible to stop someone from using your brand name or logo when you don’t have a trade mark or where the other person claims honest concurrent use. Pursuing those claims requires a lot of technical evidence, including that people recognise your business’s brand and that people have confused it with that of the other business. It’s often a long and expensive claim to pursue.
It’s very rare for the ACCC to take steps in disputes between two people. The ACCC looks to big headline issues which are in the public interest to solve and which affect a broad range of consumers.
What can winemakers do?
If Garry Crittenden had registered some trade marks earlier, he may have had a stronger claim to make Woolworths go away sooner. It’s impossible to criticise anyone for not taking steps that they didn’t know were available to help them.
Winemakers, take note. Developing and protecting intellectual property is not solely the domain of the Goliaths. For winemakers, so much of the value of the business is in the reputation of the brand. A reputation that’s often a lifetime’s work. It’s worthwhile protecting that reputation.
What can you do?
- Strongly consider registering some trade marks. They’re not that expensive (starting at around $420 in fees to IP Australia to do it yourself).
If you are considering doing it yourself, you’ll need to be familiar with what can and can’t be registered and conduct a trade mark search.
Otherwise, you can speak to a lawyer or trade mark attorney.
- For winemakers, consider registering the name of the winery and its logo, plus any distinctive flagship wine names and any distinctive labels.
- For those that have registered trade marks, vigorously monitor use by others. You want to be able to either stop someone encroaching on your brand name and logo, or try to work with them.
- If someone is using one of your registered trade marks, deal with it sooner rather than later. It may be eroding the goodwill in your business and your brand. Get advice and act on it.
Disclosure: Neither Richard Edwards nor Whites Legal have anything to do with either Crittenden Estate or Woolworths, other than Richard visiting Crittenden Estate’s cellar door, buying a few bottles of the Pinocchio Sangiovese and thoroughly enjoying them; and buying some groceries from Woolworths from time to time.