Australian Trademark Law: Understanding the Impact of Adding a Device to a Word Mark

1 March, 2024

In a case E&J Gallo Winery v Lion Nathan Australia Pty Ltd dated 19 May 2010, the Australian legal landscape regarding the incorporation of devices alongside registered word marks was clarified.

Case Overview: 

Lion Nathan challenged E&J Gallo Winery’s utilization of the word “BAREFOOT” in conjunction with a footprint device, contending that it did not constitute use of the registered trademark.

Court’s Verdict: 

The High Court rendered a decision affirming that the inclusion of the device did not hinder the combined use from qualifying as trademark usage. The court regarded the device as an embellishment of the word rather than a separate mark.

Key Insights: 

• Continuity of Trademark Use: The case highlights that adding a device to a word mark may still qualify as trademark usage if the addition does not significantly alter the mark’s identity or impede consumers’ recognition of it.
• Scope of Protection: This ruling underscores the broad protection afforded to registered word marks, potentially extending to combinations with non-distinctive devices.
• Strategic Considerations: Given the expansive protection afforded to distinctive word marks, it is advisable to consider separate registration for such marks. This approach ensures broader protection in the future, irrespective of whether the mark is used with or without the accompanying device.

In conclusion, understanding the nuances of trademark law, particularly regarding the incorporation of devices alongside word marks, is crucial for businesses seeking comprehensive brand protection.

Remember: This information is for general guidance only and does not constitute legal advice. For specific situations and trademark-related queries, always seek professional legal counsel to ensure you comply with Australian trademark laws and protect your brand effectively.

Need assistance with your trademark registration? Whether you’re in Australia, New Zealand, or beyond, Maygust Trademark Attorneys are here to help. Don’t navigate the process alone – our qualified attorneys can guide you every step of the way.