With South Africa’s wine sales having increased by approximately a third in the last calendar year, popping the cork on protection of intellectual property on and inside the wine bottle has become increasingly important. So how do you protect your plonk?
Aspects that may be protected include the front and back labels, the bottle shape itself (including the cork or screw-top), and even extend to the grape varietals used to make the wine. Turning firstly to the label, this may be protected under both the Trade Marks Act and the Copyright Act.
In layman’s terms, the trade mark used on a wine label is the brand name. This may include both the house brand / estate name and the sub-brand used for the particular wine. An example thereof is Jordan Winery’s estate brand, JORDAN, and one of their sub-brands, THE PROSPECTOR for their syrah.
On a more detailed level, the Trade Marks Act 194 of 1993 (“the Trade Marks Act”) makes provision for registration of any “mark” which is capable of distinguishing one wine from another. The function of a trade mark is accordingly to serve as a badge of origin or source identifier for the wine, as opposed to describing the qualities thereof. For this reason, it is not possible to obtain exclusivity in descriptive matter which forms part of a trade mark, such as a varietal name, the year of production of the wine or a geographical region in terms of the Wine of Origin (WO) scheme.
A “mark” may consist of “any sign which is capable of being represented graphically”, and may therefore include a name (such as JORDAN), a signature, word or device.
A “device” is defined as “any visual representation or illustration capable of being reproduced upon a surface”. It could accordingly include the entire label - minus descriptive matter such as the vintage year and the region of production.
In addition, a “mark” may also consist of the “shape, configuration, pattern, ornamentation, colour or container for goods”, or a combination thereof. One may for instance, obtain registration for embossed wording on a wine bottle.
Although theoretically, it is possible to register the shape of a bottle as a trade mark, shape marks are notoriously difficult to obtain protection for and defend against infringement. This is because unless the particular shape is very unusual it would be unlikely to be seen as distinguishing one wine from another. Instead wine drinkers would be likely to see the bottle shape as purely functional (to hold the wine), or else decorative, if it departs from the norm.
Registration of a trade mark grants the proprietor the right to prevent any unauthorised use of the mark as registered, or any mark confusingly similar thereto, in relation to the goods for which the mark is registered, or similar goods. A registration lasts for a 10 year period from the application date, but is renewable every 10 years indefinitely.
Protection afforded by trade mark registrations (unlike copyright), is territorial, and it is accordingly important for wine estates to register their marks in all countries in which their wine will be sold. Furthermore the export of goods bearing a trade mark is also considered to be use of that mark in terms of the South African Trade Marks Act, and many equivalent Acts in foreign countries. It is accordingly important to obtain registered rights in all such countries.
While at present, South Africa is not a participant in the Madrid system which provides for international registrations (in territories of member states), indications are that such system may be implemented soon. In the interim though, it is possible for South African natural and juristic persons to file applications on the Community Trade Marks (CTM) Register, which provides for registration in 27 European Union member states.
Common law protection
In addition to registered trade mark protection, the distinctive and reputable getup of a wine bottle may also be protected through the common law delict of passing-off. In order to fall within the ambit of this remedy, an applicant would need to prove the reputation in the get-up of its bottle, confusion caused by the third party’s get-up, and the damages that will be suffered thereby.
Unlike registered trade mark protection which may be obtained for a particular name, being the house brand or sub-brand of the wine, where passing-off is concerned, the entire get-up of the applicant’s wine is compared to that of the allegedly infringing party. Accordingly, registered trade mark rights are useful for obtaining more specific protection as they may be used to isolate the more distinctive aspects of a label. Additionally, the cost of perusing a passing-off action is generally higher than addressing infringement of a registered mark, as the applicant in a passing-off matter bears a higher evidentiary burden.
Wine bottle labels may additionally be protected in terms of the Copyright Act 98 of 1978 (the Copyright Act”). The front label, may for instance, include a drawing, or photograph, both of which constitute “artistic works” in terms of the Copyright Act. In the example above, the drawing of the Jordan wine farm would be protected as such. A logo accompanying the name of the wine may also attract copyright protection. In addition, the written content on the label, inclusive of the label on the reverse side of the bottle, may constitute a “literary work” which may likewise be protected.
As suggested within the Copyright Act’s title, works protected thereunder may not be reproduced (copied), and furthermore, may not be adapted.
Although copyright in literary and artistic works comes into being automatically provided the works meet the criteria set out in the Copyright Act, an important aspect for a wine estate to consider is who is the owner of the work. In the first instance, the owner of the copyright work will be either the author thereof, or where the author has produced the work in the context of his/her employment, the employer. However, many wine farms commission designers or advertising agencies to create labels for their bottles.
Although it may seem somewhat counter-intuitive and possibly contrary to the intention of the parties, ownership of copyright in drawings (artistic works) and text (literary works) does not automatically pass to the commissioner when created in the fulfillment of a commission. The Copyright Act only provides for copyright to pass to a commissioner in relation to very specific works. Such works are inclusive of photographs and portraits (whether painted or drawn).
In most instances therefore, it is necessary for the copyright vesting in the label to be assigned from the advertising agency / commissionee to the wine estate / commissioner. It is important to note that copyright may only be assigned in terms of a written contract, signed by the assignee.
The duration of copyright is the lifetime of the author, plus 50 years after their death. As copyright protection, unlike trade mark protection, is finite, it is advisable to register one’s label as a whole as a trade mark in order to maximise protection therein, particularly once the term of copyright protection expires.
A registered design in terms of the Designs Act 195 of 1993 (“the Designs Act”), may (in addition to what is set out above), also be used to protect labels as well as the shape and configuration of wine bottles, screw caps and corks.
There are two types of designs that are registerable; namely functional and aesthetic designs. Functional designs may consists of any (or a combination of) features of pattern, shape and configuration, applied to an article, which are dictated by the function the article is to perform. Aesthetic designs on the other hand consist of one (or more) of pattern, shape, configuration or ornamentation applied to an article, having features which appeal to and are judged solely by the eye.
Functional designs are required to be “new” (ie not forming part of the state of the art) and “not commonplace in the art in question” to be registerable; while aesthetic designs are required to be “new” and “original” (not copied). Designs shall not be deemed to be “new” should they have been disclosed to the public for more than six months before the application date. Functional designs have a duration of 10 years; while for aesthetic designs the period is 15 years.
An aesthetic design (which is more relevant in the present context) could, for example, be a wine bottle in the shape of a bird, with the wine being poured out of the beak. Alternatively, it could consist of an embossed pattern circling around a wine bottle. A functional design could consist of a wine bottle of a particular shape or configuration that facilitates the easy pouring of the wine.
Where one has a registered design, one has the exclusive right to make, import, use or dispose of any article embodying the registered design, or a design not substantially different from the registered design. Any third party undertaking such actions without the consent of the registered owner of the design would infringe such rights.
Plant breeders’ rights
Plant breeders rights may be used to protect new grape varietals from which wine is produced, rather than the exterior features of the wine bottle or label discussed above.
By way of a (somewhat iconic) example, the pinotage varietal was created through the hybridisation of pinot noir and censault (hermitage). An equivalent new varietal created through such process may be protectable under the Plant Breeders Right Act 15 of 1976 (the “Plant Breeders Rights Act”).
Plant Breeders Rights may be applied for in respect of any variety which is “new”, “distinct”, “uniform” and “stable”. A variety shall be considered “new” if propagating / harvested material therefrom has not been sold or disposed of with the consent of the breeder for more than a year. It shall be deemed “distinct” if it can be set apart from any other variety of the same kind of plant which is commonly known. The requirement of uniformity shall be met provided that the propagating material is regular, subject to discrepancies which may be expected from the variety in question. Lastly, it shall be considered “stable” if its characteristics do not change after repeated propagation.
Plant breeders rights may be applied for by a “breeder”, which may either be the person who bred, discovered or developed the variety, or the employer of such person, where the variety was created during the course of such employment.
Plant breeders rights allow the breeder exclusive rights to do or authorise particular acts in relation to propagating or harvested material from the varietal. These acts include producing or reproducing the varietal or conditioning it for the purposes of propagation; selling, marketing, exporting or importing the varietal; or stocking propagated or harvested material from the varietal for any of the aforementioned purposes.
Plant breeders rights in the case of vines have a duration of 25 years from the date of issuance thereof.
Taking into account the time, energy and finances that are expended by wine estates in the production of their fruits of the vine, and the marketing, bottling and labeling thereof, it is certainly worthwhile to ensure that their intellectual property is adequately protected. Rights such as registered trade marks, designs, Plant breeders rights, and copyright are assets that add value to a business and protect the goodwill residing therein. It is somewhat comforting that unlike viticulture which can be subject to the whims of nature, and downy mildew, intellectual property rights exist to demarcate and protect that which rightly belongs to a wine estate.
Written by – Jessica Axelson – Senior Associate, Trade Mark Litigation and Prosecution, Adams & Adams
Verified by – Suzaan Laing, Partner, Trade Mark Litigation and Prosecution, Adams & Adams
1. According to statistics provided by SAWIS (SA Wine Industry Information and Systems) on the website www.sawis.co.za
2. See Bergkelder Bpk v Vredendal Koöp Wynmakery  SCA 8 (RSA)