Where does the value in your wine brand lie?

In the wine industry…
we all create brands and then use them on our labels to distinguish our wines from those of our competitors. Such brands may indicate the origin of the vineyard; the name of the winery; the name of the owners; or the winemaker.

All of these brands and sub-brands, particularly in the wine industry, contain an element of love, of passion, of family history, or of a favourite location.

To register or not?
Through marketing and sale of these branded wines, goodwill and equity are created in these names such that they become actual assets of your company and attract considerable value. This value attaches to the goodwill and equity in the brand and your company. You can rely on this goodwill and equity to enforce your rights in the particular brand should any unauthorised party use the same or similar name to market its wine products. Such unauthorised use could give rise to a successful action for passing off or breach of the Fair Trading Act. However, to succeed in such an action requires a heavy evidentiary burden (and cost) on the part of the party bringing the action. There is a much cheaper and efficient way of protecting and enforcing your rights in your valuable asset: a trade mark registration.

A trade mark registration is the only way to obtain a national monopoly in your brand.

Do industry changes also change your trade mark protection?
Yes.

When filing a trade mark application, you need to select what categories of goods and services to cover (there are 45 to choose from). You need to consider how your brand might grow and what your competitors are doing when preparing an application because it can’t be changed once filed. For example, the explosion of non-alcoholic alternatives means that it is critical to cover not just the wine category but also the non-alcoholic beverages category. This will mean you are covered if you decide to release a non-alcoholic wine in the future or if your competitor does under a similar name to your own.

Protecting your brand overseas
Many New Zealand wineries export their wine so protecting your brand in key overseas markets is wise. This is particularly important in civil law countries like China which only recognise registered rights. The Madrid system is a cost-effective way of protecting your brand overseas. When using Madrid, your New Zealand trade mark registration will form the basis for protecting your brand overseas. Getting your protection right at home is key to ensuring you have the strongest protection in all markets.

How can we help you?
We can help you register your brand in New Zealand and make sure those rights reflect your business and are suitably broad. If you are already covered in New Zealand, we can advise how to go about protecting your brand in the countries you operate in, based on your New Zealand trade mark registration. We will also provide costings involved through the entire registration process, so you can budget for these.

By protecting your rights through the trade mark registration process, you are building up your asset base and value in the business through the goodwill and equity established by your use of your brand.

Get in touch with our experts John Hackett and Amanda Griffiths for leading advice and insights.