Quick Hit

The Federal Court of Australia’s decision in Republic of Peru (Peruvian State) v Registrar of Trade Marks [2026] FCA 791 (Pisco Case) is the first court decision to consider the acceptance of a certification trade mark application under the Trade Marks Act 1995 (Cth).

The Court held that the same requirements for distinctiveness apply to certification trade marks as apply to standard trade marks. The Court’s analysis of the ordinary signification of foreign words in Australia has relevance for both certification and standard trade marks.

What is a certification trade mark?

Certification trade marks serve a different purpose to standard trade marks. A standard trade mark functions as a badge of origin, distinguishing the goods of one trader from another.A certification trade mark, on the other hand, functions as a badge of certification, distinguishing goods that comply with specified requirements for use from goods that don’t meet the same standards.

The rules governing the use of certification trade marks must specify the requirements that goods must meet, as well as the process for determining whether goods meet those requirements. The rules can include a requirement based on geographical origin. Any trader who satisfies the requirements of the rules for certification will be entitled to apply the certification trade mark on their goods.

The requirement of distinctiveness

Distinctiveness is a requirement for registration of a trade mark. A key determination in this case was that, on the question of distinctiveness, the examination of certification trade mark applications is no different from standard trade marks. The test is the same, and a presumption of registrability applies to both kinds of trade marks.

The test is a two stage analysis. The first is to determine the ordinary signification of the word. The second is then to determine whether other traders are likely to desire to use that signification legitimately in the course of trade.

The question of ordinary signification rests on:

a) the extent to which the certification trade mark is inherently adapted to distinguish the claimed goods; or

b) the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish the claimed goods.

What was the Pisco dispute about?

Pisco is a grape brandy traditional to Peru as well as being the name of a town close to vineyards where grapes used to make pisco have been grown for more than 450 years. Its production in Peru is regulated by a public agency, and the use of the term “Pisco” in Peru is strictly controlled – it must be a particular type of spirit which originates from a particular place.

The Republic of Peru applied in Australia for a certification trade mark for “PISCO”, with certification rules that required the product be produced in Peru.

The dispute in this case was whether the ordinary signification of the word “pisco” in Australia was that the beverage only originated from Peru, or whether it could also mean a beverage originating from Chile.

The Registrar of Trade Marks rejected the Republic of Peru’s application on the basis that pisco could come not only from Peru, but also from neighbouring Chile.

The Court’s decision on ordinary signification

The Federal Court disagreed, finding that the Republic of Peru’s application for a certification mark could proceed to acceptance. Burley J held that in Australia, the likely ordinary signification of “pisco” was an alcoholic beverage from Peru.

In making this decision, Burley J had reference to dictionary definitions, specialist publications, and use in the Australian marketplace.

  • Competing dictionary definitions: The Macquarie Dictionary, as Australia’s national dictionary, is generally expected to be authoritative on meanings of words as used in Australia. However, it may not be regarded as definitive where there is a forensic dispute as to use of a term in a particular trade. The Macquarie Dictionary defined “pisco” as a type of grape brandy made in Peru and Chile, but the meaning was inscrutable as the provenance of the entry was not documented. Definitions of “pisco” in other, non-Australian, dictionaries were inconsistent and inconclusive. Burley J therefore did not place significant weight on the dictionary definitions.
  • Specialist and foreign publications: Reference to a rivalry between Peru and Chile was presented in specialist publications and other materials originating from outside of Australia. This material may be relevant to whether other traders have a legitimate need to use the proposed trade mark, but not for the threshold question of ordinary signification. Burley J observed that however interesting the historical intrigue may be, it is not what took place overseas in the past that matters. The issue is how the ordinary meaning of the word is likely to be perceived and understood as at the more recent priority date in Australia by the ordinary consumer.
  • Australian sales figures: There were reliable estimates that 650,000 bottles of pisco from Peru had been sold in Australia in the nearly 15 years before the priority date compared to “scant” sales of pisco from Chile. The context of the sales from Chile was unknown. By contrast, clear labelling of pisco from Peru, including as to geographical origin, was likely to have educated ordinary consumers as to the connection between Peru and the word PISCO.

The Court was not persuaded on the evidence before it that other persons, actuated only by proper motives, will want to use the word “pisco” for alcoholic beverages to designate an origin somewhere other than Peru.

The later BASMATI rice case and “other circumstances”

The decision of Burley J was followed by Dowling J in Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India v Registrar of Trade Marks [2026] FCA 1125 (Basmati Case). That case concerned an application for a certification trade mark for basmati for rice from India, and the meaning of the word BASMATI.

In the Pisco Case, Burley J was satisfied as to the ordinary signification of PISCO from a consideration of its inherent distinctiveness and from its use. The Court did not need to consider “other circumstances”.

The position was different for basmati rice. It is grown in both India and neighbouring Pakistan and substantial volumes of basmati rice are sold in Australia from both countries. The ordinary signification of BASMATI was held to be a type of rice associated with a specific growing area in India and Pakistan. Evidence of use of the word BASMATI did not establish that the word has become adapted to distinguish certified rice from India alone.

BASMATI is registered as a geographical indication under Indian law. Dowling J considered whether this constituted “other circumstances” for the purpose of distinguishing a certification trade mark, having regard to Australia’s participation in the TRIPS Agreement and the obligation to provide recognition to geographical indications.

Dowling J found a geographical indication has the capacity to satisfy the requirement of “other circumstances”, but it is not determinative. The certification trade mark regime in Australian law predates and is separate to the obligations under the TRIPS Agreement. Geographical indications may be relevant to “other circumstances”, but a certification trade mark still needs to satisfy the requirement for distinctiveness in the same way as a standard trade mark.

Key takeaways

Certification trade marks are examined for distinctiveness in the same way as standard trade marks.

Information contained on labels of product sold in Australia can be useful in educating consumers and may, depending on the circumstances of the case, be more persuasive than overseas history, foreign usage, or recognition as a transnational geographical indication.

Geographical indications may assist in understanding the ordinary signification of a word, but they will not displace how Australian consumers factually understand a word sought to be registered as a certification trade mark.

Next steps

The rules governing use of the trade mark PISCO are currently being assessed by Australian Competition and Consumer Commission (ACCC). If certified by the ACCC, the application can then proceed to publication for opposition purposes.

An appeal has been filed from the decision of Dowling J in the Basmati Case.

The final outcome for these applications for certification trade mark registration may not be resolved for some time and it will be interesting to see how they progress.

For assistance with trade marks, please contact Michelle Cooper.

By Michelle Cooper