Avola Grapes – a rare Geographical Indication decision in Australia

By David Stewart

27 November 2018

On 8 August 2017, the European Union lodged a list of 906 European Geographic Indications (GIs) for protection in Australia. Some of these are entirely familiar to Australian consumers: “Chianti”, “Port”, “Port wine”, and “Sherry”. Another one of these was “Avola”.

The Winemakers’ Federation of Australia (WFA) filed an opposition to the registration of the term “Avola”.

Nero d’Avola grapes are originally from Sicily, and were imported into Australia in 1998. But Avola is a city in Syracuse province in Sicily, and that geographical location gave rise to the application for protection as a GI. This is the crux of the WFA’s objection. The WFA argued that “Nero d’Avola” is a commonly used grape variety, and this registration could impact Australian wineries producing wine derived from that variety.

The application underwent examination by the Australian Trade Mark Registry in accordance with Division 2 of the Australian Grape and Wine Authority Regulations 1981, and then was open to opposition.

The WFA opposed the mark on the basis of reg 58(5) of the Australian Grape and Wine Authority Regulations 1981:

Common use

 A person may object to the determination of a proposed item on the ground that the proposed item is used in Australia:

 (a) as the common name of a type or style of wine; or

 (b) as the name of a variety of grapes.

The process in a GI opposition is different to that of standard trade mark oppositions. As the hearing officer noted, “Legislation provides for both parties to simultaneously file evidence in support of their position and then to simultaneously provide evidence in answer.” Curiously, while the WFA filed evidence in support of its objection, the EU did not, nor did it file evidence in answer to the material filed by the WFA.

On 4 January 2018, WFA submitted around 40 pages of evidence to IP Australia, supporting the objection to the EU registering of the term “Avola” as a European GI in Australia. Significantly, this included:

1. Statistics from Wine Australia showing that 31,245 litres of Nero d’Avola or Nero d’Avola blends were exported from Australia between November 2013 and November 2017; and
2. Data extracted from Vinehealth Australia Vineyard Register on 6 December 2017. The data relates to Nero d’Avola plantings in South Australia and shows that there are seven regions within South Australia that have Nero d’Avola plantings, 28 different vineyard owners, and 7.6 hectares of Nero d’Avola grape vines within South Australia.

On 6 August 2018, IP Australia issued its decision. The decision held that the evidence provided, “establishes that Nero d’Avola is used in Australia as the name of a variety of grapes”. The hearing officer noted, “The question posed by reg 58(5)(b) is whether, as a matter of fact, the proposed item is used in Australia as the name of a variety of grapes. As such, I do not think it is open to me to simply find that the ground has been made out where the proposed item only forms part of the name of a variety of grapes. That said there may well be exceptions, such as where the evidence establishes that the proposed item has been used in Australia to the extent that it is regarded as the shortened name of a variety of grapes.”

But there was no evidence of this tendency to abbreviate. The WFA was unsuccessful. In 2013, the WFA had been successful in the Registrar of Trade Marks decision in Winemakers’ Federation of Australia v European Commission [2013] ATMOGI 1 (‘Prosecco Decision’). The Prosecco Decision successfully preventing the word “prosecco” from being registered as a GI because it was a variety of grape as well as a location.

But that was not the case here. The hearing officer noted:

“[I]n this matter the proposed item being objected to is Avola, not Nero d’Avola. The evidence before me demonstrates that the proposed item Avola is contained within the name of a variety of grapes, namely Nero d’Avola. However, this does not automatically equate to use of Avola as the name of a variety of grapes. Further, the evidence does not demonstrate that there is a tendency for Nero d’Avola to be shortened to Avola in Australia, nor has the WFA suggested this is the case.”

“Avola” accordingly was allowed to proceed to being registered as a GI.

How this practically plays out in respect of prospects of confusion between wine made from Nero d’Avola grapes, and wine sourced from Avola in Sicily, remains to be seen.

Disclaimer: The information published in this article is of a general nature and should not be construed as legal advice. Whilst we aim to provide timely, relevant and accurate information, the law may change and circumstances may differ. You should not therefore act in reliance on it without first obtaining specific legal advice.