Background
On 1 May 2019 the Republic of Peru applied to register the word PISCO as a certification trade mark in Australia for “alcoholic beverages (except beer)” (Class 33, Trade Mark Application No. 2006463). Pisco is a brandy-style spirit distilled from Peruvian grape varieties and produced on Peru’s coastal departments; the town of Pisco, from which the drink takes its name, sits close to the vineyards where those grapes are grown. Peru has regulated pisco as a denomination of origin for decades, requiring that it be produced exclusively within designated Peruvian regions from specified grape varieties using traditional methods. Australia is the third-largest importer of pisco worldwide, having imported more than 3.5 million litres between 2005 and 2017. In support of the application, Peru filed detailed Certification Rules incorporating its Regulation of Pisco Denomination of Origin, which confine authorised use of the PISCO mark to producers certified by INDECOPI, Peru’s designated public agency.
A delegate of the Registrar of Trade Marks refused to accept the application in a decision reported as Republic of Peru (Peruvian State) [2023] ATMO 53. The delegate found that the word PISCO carries an ordinary signification as a type of traditional spirit produced in either Peru or Chile, that Chilean traders therefore have a legitimate desire to use the term on alcoholic beverages, and accordingly that PISCO is neither inherently adapted to distinguish certified goods under s 177(2)(a) of the Trade Marks Act 1995 (Cth), nor capable of distinguishing by reason of use or other circumstances under s 177(2)(b). Peru appealed to the Federal Court pursuant to s 35 of the Act.
The appeal proceeded de novo, meaning the Court assessed the application on its merits rather than confining itself to whether the delegate erred. Peru argued that, as at the priority date, Australian consumers understood PISCO to denote a spirit originating specifically from the Pisco region of Peru, that no evidence of a legitimate Australian trader desire to use the term for non-Peruvian spirits had been adduced, and that the certification mark framework exists in part to fulfil Australia’s obligations under the TRIPS Agreement to protect geographical indications for spirits. The Registrar maintained that Chile’s longstanding production of pisco and its sales in Australia prior to the priority date precluded acceptance.
The Court’s Holding
Burley J allowed the appeal, set aside the delegate’s decision, and ordered the Registrar to accept Trade Mark Application No. 2006463 for registration. The Court found that, on the evidence, the application satisfied the requirements of s 177 of the Trade Marks Act 1995 (Cth) — the central provision applicable to certification marks in lieu of the general distinctiveness ground in s 41 — and that there were no grounds for rejecting the application under Part 16 of the Act.
The Court’s analysis required it to determine the ordinary signification of the word PISCO to those who would purchase, consume or trade in alcoholic beverages in Australia as at 1 May 2019, and then to assess whether that signification was one that other traders would legitimately desire to use. Peru’s evidence included extensive promotional activity associating PISCO with Peru as a denomination of origin, the slogan “Pisco is Peru” used globally since around 2014, and the terms of the Peru-Australia Free Trade Agreement (PAFTA, entered into force 11 February 2020). Although the Registrar produced evidence of Chilean pisco products sold in Australia before the priority date and pointed to the Macquarie Dictionary’s acknowledgment that pisco may originate from either Peru or Chile, the Court ultimately concluded that the certification mark should proceed to registration.
Costs were not resolved at the time of judgment; the parties were directed to confer and provide draft costs orders by 7 July 2026.
Key Takeaways
- A certification trade mark application for a geographical indication is assessed under s 177 of the Trade Marks Act 1995 (Cth) — not the general distinctiveness provision in s 41 — and the relevant question is whether the mark can distinguish certified goods from goods not so certified, assessed on the totality of the evidence in a de novo appeal.
- Evidence of a rival country’s use of the same term in trade (here, Chilean pisco sold in Australia) does not automatically defeat a certification mark application; the Court weighs that evidence against the overall ordinary signification of the term, promotional history, trade agreement protections, and the absence of direct evidence of legitimate Australian trader demand for the competing use.
- The Peru-Australia Free Trade Agreement and Australia’s TRIPS obligations concerning geographical indications for spirits form relevant contextual background when assessing the registrability of a denomination-of-origin certification mark.
- A de novo appeal from a Registrar’s delegate decision under s 35 of the Trade Marks Act requires the Federal Court to re-determine the merits; demonstrating error below is not a precondition to relief.
Why It Matters
This decision is the first reported Federal Court ruling directly addressing the registrability of a geographical indication as a certification trade mark under Part 16 of the Trade Marks Act 1995 (Cth) where a competing producing country disputes the applicant’s exclusive claim to the term. It clarifies that the certification mark regime can accommodate denomination-of-origin protections for traditional spirits and that the existence of a rival foreign industry using the same name is not determinative when the weight of Australian trade and consumer understanding points to a single-origin signification.
For producers of regionally designated goods — wines, spirits, agricultural products — and for countries party to free trade agreements with Australia containing geographical indication commitments, the case confirms that the certification mark pathway under the Trade Marks Act is a viable and enforceable mechanism for protecting appellation rights in the Australian market, and that a well-documented certification rules framework supported by trade agreement context can overcome a Registrar’s refusal based on third-country use of the same term.