Old bottles for "New Certan"? Bordeaux wine producer brings unsuccessful passing off claim in the Australian Federal Court

In the latest dispute between European and Australian wine producers, a single judge of the Federal Court of Australia has found that a Tasmanian wine producer had not passed off its "New Certan" wine as being connected or associated with the Bordeaux wine estate, Vieux Château Certan (VCC). 

Sniffing out new wine in old bottles.
Image from Alexas_Fotos via Pixabay

The French wine producer brought a claim alleging contraventions of ss 18 & 29(1)(g)-(h) of the Australian Consumer Law and the tort of passing off. The judgment of Justice Beach in Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd [2024] FCA 248 found that there was no damage, and therefore passing off was not established. VCC also failed to have the NEW CERTAN trade mark registration cancelled.

Background

The Societe Civile et Agricole du Vieux Château Certan (VCC) is the owner of a wine estate located in Pomerol in the Bordeaux region of France. Importantly for this case, VCC produces two types of expensive French red wine involving various up-market grape types. For decades, the packaging of "Vieux Château Certan" and "La Gravette de Certan" included a pink capsule with gold decoration (see photos below), a label featuring the name Certan, and an image of a stately house located on the VCC wine estate, amongst other features (such as the font).

The overall presentation of the wines and close-ups
of the pink capsules on "Vieux Château Certan"
and "La Gravette de Certan" 

The first respondent, Kreglinger (Australia) Pty Ltd, has been registered as a company in Australia since 1914. Kreglinger's first vintage of the wine promoted and sold as "New Certan" was the 2011 vintage, released in 2013. The evidence showed that "New Certan" is a cheaper Pinot Noir produced in Tasmania that sells for AU$75 to $95 per bottle, as compared with the expensive VCC wine produced from Merlot, Cabernet Franc and Cabernet Sauvignon grapes, which sells for AU$600 to $800 per bottle.

The director and CEO of Kreglinger, Paul de Moor, gave evidence that he wanted to pay homage to his family heritage (being descended from the Thienpont family, who run VCC) with the marketing of "New Certan". For the earliest vintages, the label depicted the de Moor family home on their vineyard in Tasmania. The label designer had received photos of VCC bottles and instruction from de Moor to use them as inspiration. For the subsequent vintages, Kreglinger used packaging (pictured below) comprising a pink capsule with gold decoration, although the bottles were different shapes from the VCC products. 

Photos of the packaging of later vintages
of the "New Certan" wine

When VCC learned about "New Certan", their representative emailed in 2014, asking "is this an April fool's joke or a new creation?" -  de Moor informed them it was not a joke. The VCC representative replied that this "not only shocks me, but also fills me with sadness because I will have to defend the image of the domain that you shamelessly plagiarise."

Passing Off

Given the very different price points and the different bottle shapes, VCC did not argue that consumers would be misled or deceived into thinking that the "New Certan" wine is one of the VCC wines. Rather, they argued that the name and packaging conveyed that there is a connection, approval, or affiliation between "New Certan" and VCC. 

Justice Beach started by noting that the word "Certan" is used by other French wine producers and that VCC did not sell its wine by reference to the word Certan alone. Therefore, VCC did not have a monopoly on the word Certan. Additionally, the use of a pink capsule (albeit an unusual shade) was not unique to VCC products, as this was used in the packaging of other red wines.

The relevant class of consumers was found to include Australian wine consumers who have an interest in premium wines, and members of the fine wine trade. Prior to 2013 (when "New Certan" was put on the market), Justice Beach found that the overall sales and promotion of VCC wines were minor, and little of that promotion involved any depiction or exposure of the pink cap or other visual features. The evidence of a reputation was thin, but Justice Beach still found that VCC had - just barely - established a sufficient reputation amongst members of the fine wine trade in Australia.

Regarding intention to mislead, whilst acknowledging the instructions to the label designer about taking inspiration from VCC's wines, Justice Beach found that de Moor’s creative intention was to pay homage to family heritage, not to copy an existing brand. 

The redesigned packaging of New Certan

The critical issue was damage. Justice Beach determined that "there is no evidence that VCC has suffered any loss or damage at all, and there is similarly no basis to infer that it would." By the time of trial, the 2021 vintage of New Certan had been withdrawn from sale and the commercial value of the remaining old stock was insignificant. Kreglinger had also designed new packaging (see image right), which Justice Beach found to be "a world away from the packaging of the VCC wines." In the absence of damage, the tort of passing off had not been established (nor was VCC entitled to an injunction under the Australian Consumer Law).

Trade Mark Cancellation

The final issue was that Kreglinger was the registered proprietor of an Australian trade mark for the words NEW CERTAN, filed on 25 November 1999, in class 33 for alcoholic beverages including wines. The registration of that trade mark was unopposed. 

As part of the case, VCC sought cancellation of the trade mark on the grounds that the mark was likely to deceive or cause confusion and was contrary to law. However, Justice Beach rejected this claim. Prior to the filing date in 1999, the evidence of promotion of the VCC wines by Australian distributors was minimal, and therefore VCC did not enjoy the protection afforded to well-known marks. Furthermore, noting that VCC did not have any rights in the name "Certan" alone, Justice Beach held that the names "New Certan" and "Vieux Château Certan" were not deceptively similar.

Comments

This case illustrates how producers in so-called "New World" countries (e.g. US, Australia, etc) who wish to use the names and presentation of products from their family heritage might place themselves in the legal crosshairs of their European cousins. Whilst Kreglinger used a sufficiently dissimilar name and took enough steps before trial to avoid liability, the judgment highlights the risks of paying homage to "Old World" products - even very niche ones. So, if you're going to make a new wine, it might be a good idea to put it in new bottles.