‘Champagne Jayne’ toasts her success: Australian Trademark Law Update
A trademark is defined in the Trade Marks Act 1995 (Cth) as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.’ Trademarks often form a significant part of a brand, and frequently represent a significant investment. Protecting trademarks from appropriation or misuse by third parties is vital to their continued use. A recent case on Australian Trademark Law involving wine ‘edutainment’ agency Champagne Jayne highlights the importance of trademark use, and provides guidance as to when a trademark may be rejected.
The Champagne Jayne story
Jayne Powell, a self-employed wine educator and consultant, recently won a five year battle with French-based organisation Comité Interprofessionnel du Vin de Champagne (CIVC) to use the moniker Champagne Jayne as her official trademark. Powell had been running her business under the same name for more than ten years, before deciding to officially register her trademark. While Powell ultimately succeeded, her story serves as a warning for small businesses struggling in an era of big brands and social media to register your trademark as soon as possible. This would have prevented Powell from building her business over more than ten years based on the contentious name, saving her from the huge stress and financial strain caused by CIVC’s action.
The CIVC alleged that as Champagne Jayne, Powell had engaged in misleading and deceptive conduct and made false representations in contravention of s 18 and 29 of the Australian Consumer Law, respectively. The allegations were based on the fact that Powell often promoted sparkling wine that weren’t champagnes, consequently tarnishing the Champagne name and misleading the public.
Decision of the Federal Court
After two unsuccessful mediations, in October 2015 the Federal Court found that CIVC had not established any entitlement to relief which would require Ms Powell to cancel registrations for her Champagne Jayne business name, domain name or Facebook and Twitter accounts. However, the Court found that a number of Powell’s tweets and posts contravened section 18 of the Australian Consumer Law because they failed to adequately clarify that certain featured sparkling wines were not, in fact, champagne. As a result, Powell was ordered to use a disclaimer hashtag #notachampagnewine in any Champagne Jayne social media posts which refer to sparkling wines which are not from the Champagne region.
Powell was also ordered to stop using the term ‘ambassador’ on her social media accountants, as her role is as an independent reviewer and critic and not as an ‘advocate’ for a wine. Apart from this, the rest of CIVC’s case against Powell was dismissed without costs.
Decision of the Registrar of Trademarks
Despite being unsuccessful in the Federal Court, CIVC continued to extend the Champagne Jayne trademark opposition proceedings for a further 18 months following the Federal Court decision. While CIVC initially based their claim on eleven grounds of opposition under various sections of the Trade Marks Act, their final submissions focused only on s42(b) and 43.
- Section 42(b): This section states that an application for the registration of a trademark must be rejected if its use would be contrary to the law. CIVC based this allegation on the fact that the trademark was in contravention of section 18 of the Australian Consumer Law, as discussed by the Federal Court. The Registrar of Trademarks followed the decision of the Federal Court, stating that while the Applicant’s use of her trademark could be contrary to law in certain circumstances, Powell is able to use her trademark in a manner that is not contrary to the law by providing a disclaimer that make it clear when she is talking about non-Champagne wines.
- Section 43: This section provides that an application for the registration of a trademark of particular goods or services must be rejected if the use of the trademark is likely to deceive or cause confusion. The Registrar of Trademarks found that CIVC failed to establish a ground of opposition under this section as ‘Champagne Jayne’ is likely to be seen simply as a person’s nickname. Alternatively, if her name was ‘Jayne’s Champagne Classes’ then this may be seen as having a strong connotation with respect to the services, and may be likely to deceive or cause confusion for the purposes of a breach of section 43. The Registrar awarded costs against CIVC, however refused to grant Powell an award of costs ‘above the usual scale’ as the opposition was not considered ‘vexatious’.
Finally, after five years of opposition, IP Australia made its decision to approve the Champagne Jayne trademark for registration on 3 April 2017. The decision was not appealed by the CIVC.
Lessons from Champagne Jayne
This is an interesting example of a “David and Goliath” style battle between an international organisation and small business. This demonstrates the numerous considerations regarding the registration of a trademark, and how cases involving Australian Trademark Law often depend on the specific facts involved.