Accolade Wines Australia Ltd, Pernod Ricard W Inemakers Pty Ltd, Treasury Wine Estates Ltd and Australian Vintage Limited v Delegat'S Wine Estate Limited

[2014] ATMO 76

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Accolade Wines Australia Ltd, Pernod Ricard Winemakers Pty Ltd, Treasury Wine Estates Ltd and Australian Vintage Limited to registration of trade mark application 1347803 (33) – BOTTLE WITH SEAL, STATIONERY DEVICE - filed in the name of Delegat’s Wine Estate Limited

Delegate:	Bianca Irgang
Representation:	Opponent: Luke Merrick of Counsel intructed by Corrs Chambers Westgarth Applicant: Iain Horak of Counsel instructed by Baldwins Intellectual Property
Decision:	2014 ATMO 76 s. 52 opposition: sections 41and 59 pressed – s 41 ground established for all goods - no requirement to consider other ground.

Background

1. Delegat’s Wine Estate Limited (‘the applicant’) filed application number 1347803 on 26 February 2010 in class 33 of the International Classification of Goods and Services. Details of the application, which has been accepted for possible registration, are set out below.

Trade mark:  

Trade mark application:      1347803

Filing Date:  26 February 2010

Specification:  Class 33: Wine; wine based beverages

Endorsements:  Provisions of subsection 41(5) applied.

1. Accolade Wines Australia Ltd, Pernod Ricard Winemakers Pty Ltd, Treasury Wine Estates Ltd and Australian Vintage Limited (‘the opponents’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 30 March 2012. Thereafter the opponents and applicant filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Melbourne as a delegate of the Registrar of Trade Marks on 30 May 2014. Mr Luke Merrick of Corrs Chambers Westgarth appeared for the opponent. The applicant was represented by Mr Iain Horak of Counsel instructed by Baldwins Intellectual Property.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Act.  The onus is upon the opponents to establish one or more of their grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. At the hearing the opponents advised that they were not formally withdrawing any of the grounds of opposition listed in the Notice but that they would provide submissions only on those grounds under sections 41 and 59 of the Act. None of the opponents’ evidence served appears to go to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 41 and 59 of the Act. Should the opponents establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other ground of opposition.

Evidence

1. The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Larry Lockshin	Head of the School of Marketing at the University of South Australia, Senior Research Associate at the Ehrenberg Bass Institute for Marketing Sciences at the University of South Australia	16.08.12	A
Tyson Stelzer	Writer in the wine industry	23.08.12	-
David Lowe	Managing Director and Chief Winemaker of Lowe Wines, President of the NSW Wine Industry Association and Chair of the Small Winemakers’ Committee of the Winemakers’ Federation of Australia	18.09.12	-
Michael East	General Manager of Accolade Wines Australia Ltd.	23.08.12	A to V
Owen Malone	Global Intellectual Property Director of Treasury Wine Estates Limited.	23.08.12	A to XX
Evidence in Answer
Jonas David Steen	Global Brands and Communications Manager for Delegat’s Wine Estate Limited	25.03.13	JDS1-1 to JDS1-21
Jonas David Steen	Global Brands and Communications Manager for Delegat’s Wine Estate Limited	25.03.13	Confidential JDS2-1 & JDS2-2
David Stanford Fougere	Market Research Director and Managing Director of Phoenix Research Limited	25.03.13	DSF-1 & DSF-2
Roderick John Brodie	Professor and head of the Department of Marketing at the University of Auckland	25.03.13	RJB-1 to RJB-3
Natalie Kim Harre	Senior Associate of Baldwins	17.05.13	NH-1 to NH-8
Evidence in Reply
David Bednell	Marketing Discipline Head in the School and Marketing at Deakin University	23.09.13	1 to 2
Owen Malone	Global Intellectual Property Director of Treasury Wine Estates Limited.	23.09.13	A to G
Tyson Stelzer	Writer in the wine industry	23.09.13	-
David Lowe	Managing Director and Chief Winemaker of Lowe Wines, President of the NSW Wine Industry Association and Chair of the Small Winemakers’ Committee of the Winemakers’ Federation of Australia	3.09.13	-
Lawrence Lockshin	Head of the School of Marketing at the University of South Australia, Senior Research Associate at the Ehrenberg Bass Institute for Marketing Sciences at the University of South Australia	30.08.13	A to C
Stephen Downs	Principal of QBrand Consulting Pty Ltd	17.09.13	A to C
Further Evidence
Lawrence Lockshin[3]	Head of the School of Marketing at the University of South Australia, Senior Research Associate at the Ehrenberg Bass Institute for Marketing Sciences at the University of South Australia	30.09.13	D

[3] The further evidence only comprises of exhibit D which the same Lockshin declaration as listed in the opponent’s Evidence in Reply.

Section 41: Trade mark not distinguishing applicant’s goods or services

1. At the date this application was filed section 41 read as follows:

   Section 41.  Trade mark not distinguishing applicant's goods or services

   (1)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant. 

   Note 1: For applicant and predecessor in title see section 6.

   Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

   (2)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons. 

   Note:  For goods of a person and services of a person see section 6.

   (3)  In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4)  Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5)  If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services: 

   (a) the Registrar is to consider whether, because of the combined effect of the following:  

   (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii) the use, or intended use, of the trade mark by the applicant;

   (iii) any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and 

   (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services-the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

   (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services-the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

   Note 1: For goods of a person and services of a person see section 6.

   Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   (6)  If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply: 

   (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant-the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

   (b) in any other case-the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   Note 1: Trade marks that are not to any extent inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate: 

   (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or 

   (b) the time of production of goods or of the rendering of services.

   Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

2. Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. It provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition the onus is on the opponents to make their case under section 41. The opponents must establish that the applicant’s trade mark is not capable of distinguishing the goods in question. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the goods through its use in trade.

10.  Justice Branson provides an interpretation of the structure of section 41 of the Act in Blount Inc v Registrar of Trade Marks[4] with the words:

[4] [1998] 440 FCA (1 May 1998), 40 IPR 498 at 504

Subsections (3) - (6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the registrar to conclude:

(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

If the Registrar reaches conclusion (b) above, then the provisions of paras (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

If the Registrar reaches conclusion (c) above, then the provisions of paras (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparas (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the Registrar, having considered the combined effect of the matter listed in subparas (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application.

1. The question of whether a trade mark has sufficient inherent adaptation to distinguish one trader’s goods from those of other traders was considered by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd[5]:

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

   [5] (1965) 112 CLR 537 at 555

12.  And the same reasoning may be applied to device trade marks. In Clark Equipment Co v Registrar of Trade Marks[6], Kitto J also said:

That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

[6]Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 513–14; [1964] HCA 55; [1965] ALR 344 at 345–6, per Kitto J.

13.  The applicant describes its trade mark as follows:

·     Elongated blue cap with gold band;

·     Bottle shape as shown

·     Label comprising:

a.   Top (gold) band with wave shaped lines;

b.   Grey elliptical medallion substantially within the aforementioned band;

c.   Further contrasting darkened gold band below the elliptical medallion;

d.   Predominantly white label area; and

e.   Grey band running along the bottom of the white label area.

14.  An enlarged picture of the applicant’s trade mark with the aforementioned characteristics is seen below:

15.  I note the application was accepted for registration pursuant to section 41(5) and that the applicant’s reference to the particular colours of the trade mark’s components in its submissions but the trade mark application contains no limitation to those colours mentioned. Mr Horak, the applicant’s representative, submitted at the hearing that if the Registrar considers that the opposed trade mark is registrable but only in respect of selected colours limitations that a decision be issued indicating the findings and seeking further submissions. I took this submission into consideration when making my decision.

16.  Mr Merrick, the attorney for the opponents argued that the applicant’s trade mark is not capable of distinguishing the applicant’s goods. He submitted that the various elements separately lack an inherent capacity to distinguish the goods separately and, crucially, also when considered as they appear in the applicant’s trade mark. Mr Merrick stated that the label elements of the applicant’s trade mark are all common conventional elements of wine labels used extensively in the wine industry in Australia. Further to this the applicant has only ever used the opposed trade mark in conjunction with additional brand elements and never used the device simpliciter at all. Most notably, the applicant only ever uses the applied for trade mark with its OYSTER BAY brand name.

17.  The applicant argued, inter alia, that the opponents’ arguments should be rejected because IP Australia has already accepted the application and that the applicant has extensive use of its trade mark and that its appearance with other material such as the OYSTER BAY brand name does not derogate from its trade mark function and therefore does not detract from its registrability as a trade mark. However, the fact that a trade mark application has been accepted for possible does not necessarily mean that it will be registered. Section 41 of the Act is a ground of opposition as well as a ground for rejection and French J said in Registrar of Trade Marks v Woolworths[7]:

The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.

[7] [1999] FCAFC 1020 (1999) 45 IPR 411 at [34]

18.  A consideration of the applicant’s trade mark reveals that it consists of a cap with a band around a common burgundy bottle shape with a rectangular label placed on the center of a bottle comprising of a top band with some wavy lines and an oval placed in the front center of the band. Two additional bands border the top and bottom of the label as can be seen below:

19.  According to the opponents the combination of these features is common to the wine industry and that other traders are likely to want to use them in the ordinary course of trade in relation to their wine goods. The first statutory declarations of Michael East (the ‘East 1 declaration’) and Owen Malone (the ‘Malone 1 declaration’) support the opponents’ arguments and put forward considerable evidence of the use of similar label styles by other traders in the wine industry. In particular, exhibits K through to N, T, W, Y, Z, BB, CC, FF, GG to II accompanying the Malone 1 declaration contain various photographs and advertisements of other wines being sold within Australia with labels containing elements that resemble the element present in the applicant’s trade mark. Similarly, exhibits E, F, J, M and N accompanying the East 1 declaration also contain photographs of other wines using similar lay outs of the above elements.

20.  I am satisfied by opponent’s evidence[8], that the burgundy bottle shape and the use of bands and oval components on a rectangular label are common to the wine industry in Australia. I am in agreement with the opponents that the applicant’s trade mark has limited inherent adaptation to distinguish and does not satisfy subsection 41(3) of the Act. However, the establishing of a section 41 ground of opposition need not be fatal to the application. Section 41(5) provides for the registration of trade marks with limited inherent adaptation to distinguish by considering the combined effect of the ‘extent’ that the trade mark is ‘inherently adapted to distinguish the designated goods or services’ as being those of the applicant; ‘the use, or intended use, of the trade mark by the applicant’ and ‘any other circumstances’. Therefore, I must consider the evidence of use of the trade mark and ‘any other circumstances’ that may enable the application to proceed to registration.

[8] East 1 para 21, Malone1 para 45, 47 and 51, Lowe 2 para 11, East 2 para 2 and 23, Lowe 1 para 8, Stelzer 1 para 6 and 10, Stelzer 2 para 20.

Application of section 41(5)

21.  I turn now to the applicant’s evidence of use of its trade mark. In his first declaration Mr Steen states that the applicant commenced business in New Zealand in 1947. The applicant and its wholly owned subsidiary, Oyster Bay Wines Australia Pty Ltd, sell and market its wine through a combination of subsidiaries and distributors in New Zealand and overseas in the Australian, United States, Canadian, United Kingdom, Asia, Pacific Island markets among others. Mr Steen states that the applicant’s OYSTER BAY wines which feature the opposed trade mark are currently sold in over 30 countries. Under this OYSTER BAY label the applicant produces Sauvingnon Blanc, Chardonnay, Pinot Noir, Merlot, Sparkling Cuveé Brut and a Sparkling Cuveé Rosé. Mr Steen states that the applicant’s OYSTER BAY get up[9] was first used in 1990 on its wine which was exported to the United Kingdom and that this OYSTER BAY get up has been used since that time globally. In 2003 the applicant sold its first wine using the opposed trade mark in Australia. Since that time wine bearing the opposed trade mark have been continuously sold in Australia9.

[9] Mr Steen refers to the applicant’s trade mark as the ‘OYSTER BAY get up’

22.  The applicant has submitted that it has made very substantial use of the OYSTER BAY get up in Australia. To this end it has provided press releases, advertisements and promotions of Australian origin relating to its OYSTER BAY wine activities (exhibits JDS1-8 to JDS1-18 accompanying the Steen 1 declaration). From these exhibits it is clear that the applicant has undertaken substantial advertising within Australia and I note that the applicant’s OYSTER BAY Sauvignon Blanc and OYSTER BAY Pinot Noir are the number one selling wines of their variety in Australia[10]. It is also clear from the sheer number of the applicant’s OYSTER BAY wines sold in Australia[11] that the applicant has made significant use of the OYSTER BAY get up and a large reputation in its OYSTER BAY branded wines.

[10] Paragraph 34 of the Steen 1 declaration

[11] Paragraph 12 of Steen 1

23.  However, the opponents submit:

The evidence reveals that Delegat’s has not used the Device simpliciter, but rather has used the Device in conjunction with other significant brand elements as a part of its OYSTER BAY labels and promotional material.

In particular, the evidence reveals that the Device has only been used in Australia by Delegat’s in conjunction with other significant brand elements including:

(a)the trade mark OYSTER BAY;

(b)a varietal name, such as SAUVIGNON BLANC or CHARDONNAY;

(c)a black and white illustration of a bay;

(d)the region name Marlborough;

(e)the country name New Zealand; and

(f)the phrase “Oyster Bay wines capture the special character of New Zealand … elegant, assertive wines with glorious fruit flavour”.

The elements referred in sub-paragraphs (a) to (f) above are referred to below as the Additional Brand Elements…

…Delegat’s appears to rely on the declarations of Mr Steen to support its assertion of use of the Device in Australia. However, an examination of each of the claimed instances of such use in Mr Steen’s declarations make it clear that the Device has only been used in conjunction with the Additional Brand Elements…

…The Application has been categorised as a device. There has been no use whatsoever of the Device as a device. A cursory examination of the exhibits referred to in paragraph 35 above reveals that in every case the claimed use of the Device is in fact use of the Device in conjunction with the Additional Brand Elements. The consistent use of the Device in conjunction with the Additional Brand Elements is not surprising – Mr Steen emphasises in his declarations that Delegat’s adheres strictly to branding guidelines which require that consistency (and, it can be inferred, would not permit the use of the Device simpliciter).23

Mr Steen provides some other evidence which also demonstrates that Delegat’s has not used (and, it can be inferred, has no intention to use) the Device simpliciter.

24.  A consideration of all the evidence put forward by the applicant and the opponents reveals that the applicant has only used its trade mark in conjunction with significant other materials, namely:

25.  The applicant argues:

The law that get-up acts as a designator of trade origin is well established. Edmonds J in The Change Group International PLC v City Exchange Mart Pty Ltd [2013] FCA 1048 described as propositions in relation to which there can be little or no argument stating at [173] (1):

(1) That reputation may reside in get-up as distinct from a trade name has long been recognised by the courts: see e.g., Brock v Terrace Times Pty Ltd (1982) 40 ALR 97; Apand Pty Ltd v Kettle Chip Co Pty Ltd (1994) 52 FCR 474; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191; R & C Products Pty Ltd (t/a Samuel Taylor) v Sterling Winthrop Pty Ltd (1993) 27 IPR 223; Sterling Winthrop Pty Ltd v R & C Products Pty Ltd (1994) ATPR 41-308; and W D & H O Wills v Philip Morris (1997) 39 IPR 356. The tort protects such things as visual images that become part of the goodwill of the product: Cadbury Schweppes Pty Ltd v The Pub Squash Co Ltd at 858B.

Likewise, the well known case of Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 shows a further example where Red Bull were able to establish a reputation in respect of the get-up independently of the primary trade mark appearing on the packaging.  The get-up of that drink alone indicated a connection with Red Bull…

… The appearance of the Opposed Mark on products sold by the Applicant is use as a badge of origin in the sense that, as supported by Red Bull, the get-up acts as an indicator of trade source. Any assertion that the get-up is generic does not withstand a proper review of the evidence which fails to show any combination of the present elements.

The fact that the Opposed Mark appears with other trade marks, such as Oyster Bay, does not mean it is not use as a trade mark. A package can bear more than one trade mark. This is well established from Anheuser-Busch, Inc  v  Budejovick  Budvar,  Nrodn Podnik & Ors [2002] FCA 390

26.  In support of its arguments, the applicant put forward survey evidence[12]. In one survey a considerable percentage of premium wine consumers in the sample (approximately 61 people out of the 403 people surveyed) associate its trade mark with the applicant’s OYSTER BAY wine brand. This survey evidence is the subject of significant dispute between the parties. The applicant referred me to the authorities Nature's Blend Pty Ltd v Nestle Australia Ltd[13] and Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors[14] whereas the opponent referred me to Woolworths Ltd v BP PLC[15] and Chocolaterie Guylian NV v Registrar of Trade Marks[16]. While I draw guidance from the respective cases, I also consider the decision of Jacob J in British Sugar Plc v James Robertson & Sons Ltd[17] where he stated:

I have already described the evidence used to support the original registration.  It was really no more than evidence of use.  Now it is all too easy to be beguiled by such evidence.  There is an unspoken and illogical assumption that ‘use equals distinctiveness’.  The illogicality can be seen from an example:  no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods.  He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. 

[12] The informal survey conducted by Ms Harre (‘the Harre survey’) and the survey conducted by Mr Fougere with the assistance of Professor Brodie (the ‘Phoenix survey’).

[13] (2010) 272 ALR 487; [2010] FCAFC 117

[14] [2002] FCA 390

[15]  (No 2) (2006) 70 IPR 25

[16] (2009) 82 IPR 13

[17] [1996] RPC 281

27.  Justice Jacob then went on to say the following:

It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader.  This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.

28.  While the applicant’s trade mark is not a word, but rather a combination of common label elements, this matter is ultimately one of whether or not the trade mark is acting, in its own right, as a badge of origin for the applicant when applied to its wine goods.

29.  The applicant’s evidence simply does not show that its trade mark is being used to distinguish its goods. There is no reason that applicant cannot use one, two or several trade marks together in its advertising or on its packaging. However, the advertisements, promotions and press releases show what Jacob J described in Phillips Electronics NV v Remington Consumer Products Ltd[18] as a ‘limping mark’; that is, the trade mark always accompanied by the well known trade mark OYSTER BAY and other elements such as the bay device, varietal name and phrases.

[18] (1997) 40 IPR 279

30.  I have carefully considered the results of the Harre and Phoenix surveys. The Harre survey was an informal survey of three employees of the major Australian wine retailer Dan Murphy’s. I give very limited weight to the result of such an informal survey. The Phoenix survey conducted by Mr Fougere appears to have been conducted in a much more professional manner. This survey commenced on the 1 March 2013 and involved a sample size of 403 people. In his first declaration Mr Fougere outlines how the sample size of 403 people was reached and how the questions in the survey were designed. The results of this survey indicate that about 61 people out of the 403 involved associated the applicant’s trade mark with the applicant’s OYSTER BAY wines. The total number of people surveyed was comparatively small and selected from ‘premium wine consumers’. While the margin of error in such a survey could be considered to be relatively small and the number of people who correctly identified the opposed trade mark as being associated with OYSTER BAY wines as being significant, I believe that a single survey conducted a number of years after the filing date of the application and conducted among what could be considered ‘informed’ wine consumers is just not sufficient to establish that the trade mark is capable of distinguishing.

31.  The applicant has argued that no other trader within the wine industry is using the exact combination of the elements present in its trade mark and that the Phoenix survey shows that Australian consumers associate the trade mark with the applicant. I refer to the judgment of the Full Court of the Federal Court of Australia in Woolworths Ltd v BP PLC[19] where it was stated:

Dr Bednall concluded that there was a strong association between green and BP. This conclusion is hardly surprising. Green had been one of BP’s company colours since at least 1956. After 1989 it had been used as the predominant colour with yellow. In particular, in circumstances where there were only a few oil companies, where all have used colour historically to distinguish themselves, where BP has been the only company before 1995 to use green in that way, it is hardly surprising that people shown this stimulus would associate the green service station with BP service stations which have been coloured with a predominant green and accompanying yellow. That association does not lead to the conclusion that the use of colour from 1989 has included use, as a trade mark, of either green alone, or green as the predominant colour accompanied by any other colour. The mere fact that consumers associate green with BP does not, in our view, satisfy the test of distinctiveness required by s 41(6). Evidence of promotion and use does not, without more, demonstrate distinctiveness: see Blount Inc v Registrar of Trade Marks at [61G], citing with approval Jacobs J in British Sugar Plc v James Robertson & Sons Ltd at 286 and 302; and Koninklijbe Philips Electronics NV v Remington Products Australia Pty Ltd (200) FCR 90 ; 117 ALR 167 ; 48 IPR 257 ; [2000] FCA 867 at [13]. It isnecessary for BP to establish that the association is referable to the use of the mark as a trade mark. The learned authors of Kerly’s Law of Trade Marks and Trade Names (14th ed, Maxwell Ltd, UK, 2005, at [8–025]) state, albeit in the European context, that to establish distinctiveness through use the proprietor must have done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source: compare Unilever Plc’s Trade Mark Applications [2003] RPC

Dr Bednall put it no higher that the survey showed a “strong association” in the minds of consumers. That conclusion is consistent with the answers given by participants to the survey  which explored why 85% of people associated the stimulus with the BP brand. The reasons given included: “green is the colour of the BP brand/trademark” (40.3%); “green is part of the BP symbol/logo” (5.3%); “BP promote/advertise themselves with the colour green” (5.4%); “All BP service stations I have seen are green” (12.5%); “BP service stations are the only ones that are green” (16.1%); “BP has been green since I can remember/traditional” (13.6%); “BP colours are green and gold” (4.7%); “BP colours are green and yellow” (6.7%); “yellow is missing” (1.0%). These responses are consistent with a recognition that green has always been part of the BP colour scheme; however, they do not lead to the conclusion that green alone, or green predominantly with other unspecified colours, has been used as a trade mark (emphasis added)

[19] Supra

32.  In the present matter there is no evidence of the applicant having promoted the trade mark as a trade mark, that is, as a means of distinguishing its goods While some premium wine consumers in Australia associate the opposed trade mark with the applicant’s OYSTER BAY branded wines, however, this association does not lead to the conclusion that the trade mark by itself has been used as a trade mark.

33.  I consider, from what is demonstrated in the evidence before me, that the applicant’s use of the opposed trade mark in conjunction with others of the applicant’s trade marks and identifiers shows that opposed trade mark does not distinguish the applicant on its own. Nor does the evidence provided sufficiently demonstrate that the opposed trade mark has acquired a meaning related to the applicant which overshadows its industry common elements. The applicant’s evidence does not satisfy me that the trade mark is capable of distinguishing the applicant’s goods from the similar goods of other traders in the same field. The ground of opposition under the provisions of section 41 has thus been established. Having found in favour of the opponent in terms of section 41 there is no need for me to discuss the other ground pressed at the hearing although this ground or any other ground in the Act may be relied on in the event of an appeal from this decision.

Decision

34.  At the relevant time section 55 of the Act provided:

Decision

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

35.  I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 41. Accordingly, I refuse to register trade mark application 1347803.

Costs

36.  It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
22 August 2014