On 21 September 2018, the Department of Agriculture and Water Resources announced the beginning of a four week consultation period to consider whether a wine export label directory should be established in Australia.
The directory will comprise of wine export labels submitted by licensed wine exporters. It is to be a publically available and searchable directory where users can locate and identify wine export labels by brand, product name, and registration date. Should the proposal receive the green light, Wine Australia will be responsible for maintaining the directory.
Background
The proposal marks increased efforts by the Commonwealth Government to preserve the integrity of Australian wine, building upon the pre-existing Label Integrity Program which requires wine grape growers, manufacturers, suppliers and agents of wine goods to keep records of label claims made or implied about the goods’ vintage, variety or geographical indication. The move also complements Wine Australia’s newly enhanced regulatory powers to control the export of grape products.
It does not appear to be a coincidence that in July, Wine Australia suspended its first wine export licence since 2016. South Australian wine company Dalefold Wines had its licence suspended indefinitely for reasons including the exportation of wine with labels bearing substantial similarity to that of a well-known Australian wine brand.
The aim of the directory, as proposed in the Consultation paper, is to provide greater visibility and transparency over intellectual property contained on wine labels to be exported from Australia. By accessing and searching the directory, Australian wine brands will be able to quickly identify and take action against labels that attempt to mimic their branding.
How will it work?
Licensed exporters will be required to provide image files which include description and presentation elements of the labels for each type of product they intend to export. This includes foreign language versions of wine labels. Licensed exporters will also need to ensure the labels submitted are up to date and provide an accurate representation of the labels applied for export.
Implications
In order to provide greater visibility and transparency of intellectual property contained in the wine labels, the Consultation Paper has stated that the directory cannot be limited to those operating within the wine industry:1
“All of the content on the submitted wine label would be visible to the public. This is intended to allow trade mark owners to identify potentially infringing representations and take appropriate action. Whilst an alternate model with limited access was proposed, trade mark and IP owners are not necessarily limited to only those registered as licenced exporters or active in the Australian wine industry. For the intended benefits of the directory to be realised, the directory would need to be public.”
This means that all types of Australian intellectual property owners may stand to benefit from the establishment of the directory. While its contents focus on export wine labels, it can potentially act as a starting point or database for any copyright or trade mark owner to detect potential infringement in the wine export industry which is an area that is not generally open to such scrutiny.
Nevertheless, it remains the responsibility of individual intellectual property owners to search the directory to identify potentially infringing labels and take private action to enforce their rights. Wine Australia does not purport to enforce protection of individual intellectual property rights. The Consultation Paper also emphasised that the directory will not form any kind of legal registration or claim to ownership of the intellectual property contained on the labels.
The directory is also limited to regulating wine labels at the time of export. Wine Australia would not be able to regulate beyond the Australian supply chain. Hence, grape products within an export market could potentially be re-labelled, undermining the purpose of the proposed directory. The establishment of the directory may also adversely impact small businesses and winemakers that do not have trade mark registrations across domestic and export markets.
How can we assist?
If you are concerned about how your intellectual property rights may be affected by this proposal, or if you are looking to register and protect your wine labels overseas, please feel free to contact a member of our IP, Technology & Media team to discuss possible solutions and next steps.
This article was written by Luke Dale, Partner and Stephanie Leong, Law Clerk.
1 Department of Agriculture and Water Resources, ‘Proposal for a Wine Export Label Directory’ (Consultation Paper, September 2018) 1.4.
P: +61 8 8205 0580
E: lcdale@hwle.com.au