Agave Loco LLC v DZ Licores S.L.U

[2018] ATMO 187

TRADEMARKSACT1995

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

Re:Opposition by Agave Loco LLC to registration of trade mark application 1780731 (in class 33) - LICOR 43 OROCHATA - in the name of DZ Licores, S.L.U.

DELEGATE:  Nicole Worth

REPRESENTATION:                 Opponent: Andrew Sykes of counsel, instructed by MacMillan Trade Mark Attorneys

Applicant: Andrew Fox of counsel, instructed by Mills Oakley Lawyers

DECISION:  2018 ATMO 187

Trade Marks Act 1995 (Cth) – opposition to registration under s 52 – grounds of opposition pursued under ss 44, 60 and 42 – no grounds established – registration to proceed.

Background

1. This decision is pursuant to an opposition by Agave Loco LLC (‘the Opponent’) under s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark detailed below, in the name of DZ Licores, S.L.U. (‘the Applicant’).

   Trade Mark:         LICOR 43 OROCHATA (‘the Trade Mark’)

   Application No.:     1780731

   Convention Priority Date: 25 May 2016

   Filing Date:            1 July 2016

   Goods:                   Class 33: Liqueurs

1. The application for registration was examined as required by s 31 of the Act and accepted for possible registration. Its acceptance was advertised in the Australian  Official  Journal  of Trade Marks on 13 October 2016.

1. On 12 December 2016 the Opponent filed a Notice of Intention to oppose registration of the Trade Mark, and on 11 January 2017 it filed a Statement of Grounds and Particulars (‘SGP’), particularising grounds of opposition under ss 44, 60 and 42 of the Act.

1. The parties filed their evidence in due course (discussed in more detail below), after which the opposition was set down for hearing. I heard the matter in Canberra on 3 August 2018. Andrew Sykes of counsel, instructed by MacMillan Trade Mark Attorneys, made verbal and written submissions on behalf of the Applicant. Andrew Fox of counsel, instructed by Mills Oakley Lawyers, made verbal and written submissions on behalf of the Opponent.

Onus and relevant date

1. The Opponent bears the onus of establishing at least one of the grounds of opposition. The standard of proof is the ordinary civil standard of the balance of probabilities.1

1. The relevant date at which the rights of the parties are determined is usually the filing date of the application.2 Here, however, priority is claimed per s 29 of the Act on the basis of an application for registration made in Spain, one of the Convention Countries referred in to s 225 and reg 21.29 of the Trade Marks Regulations 1995 (‘the Regulations’). Such applications are allowed to claim the date that the application was filed in the Convention

   Country as the priority date in Australia. The relevant date for the purposes of the grounds of opposition under ss 44 and 60, which specify ‘the priority date’, is therefore 25 May 2016. The language of s 42, on the other hand, does not refer to either a filing date or a priority

   date. I am not aware of any authority that looks specifically at whether a convention priority date applies to s 42. In Apple Inc. v Registrar of Trade Marks3 Yates J considered that the filing date was the relevant date for the assessment of s 41 in respect of an application claiming a convention priority date. In particular his Honour noted:

   [T]he Act does not in terms provide a mechanism for implementing a shifting date in s 41 or, indeed, in any other provision of the Act dealing with the registrability of a given mark. I can discern no basis for reading such a mechanism into the Act.4 [Emphasis added].

1. On that basis I am inclined to believe that the filing date is probably the correct date at which to assess s 42. Nonetheless, the Opponent has made its submissions on the basis that 25 May 2016 is the relevant date for that ground and so I will proceed on that basis as well, noting that in any event the outcome would be the same whether the s 42 ground was assessed at the convention priority date or at the filing date in Australia.

1 Pfizer Products Inc v Karam [2006] FCA 166, [6]-[26].

2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.

3 [2014] FCA 1304.

4 Ibid, [45].

Evidence

1. The evidence filed in these matters comprises the following declarations:

Evidence in support

Declaration by Georgina Wright (‘Wright 1’), Director of The Beverage Company Pty Ltd trading as Artisan Handcrafted (the distributor in Australia of goods provided by the Opponent), with Exhibits GW-1 to GW-29, dated 24 May 2017.

Declaration by Mike Neises (‘Neises 1’), Vice President and General Manager of the Opponent with Exhibits MN-1 to MN-40, dated 23 May 2017.

Evidence in answer

Declaration by Emilio Restoy Cabrera, Director General of the Applicant, with Exhibits ERC-001 to ERC-003, dated 29 August 2017.

Evidence in reply

Declaration by Georgina Wright (‘Wright 2’) with Exhibits GW-31 to GW-37 dated 15 December 2017.

Declaration by Mike Neises (‘Neises 2’) with Exhibit MN-41 dated 1 November 2017.

Declaration by Adam Palmer, Director of Digital of the Opponent, with Exhibit AP- 1 dated 2 November 2017.

1. Relevant statements and exhibits are described below.

The Opponent’s evidence in support

1. Neises  1  provides  the  details  of  two  Australian  trade  mark  registrations  owned  by  the Opponent. Their details are below.

Registration 1550933	Registration 1557499
CHATA	RUMCHATA
Priority date: 15 February 2013	Priority date: 15 February 2013
Goods: Class 33: Mixed alcoholic beverages, namely, a cream-based horchata-flavored alcoholic beverage made with rum.	Goods: Class 33: Mixed alcoholic beverages, namely, a cream-based horchata-flavored alcoholic beverage made with rum.

1. The following statements are contained within Neises 1:

Agave Loco LLC is a United States limited liability company organised and existing under the laws of the state of Illinois.

The Opponent began trading RUMCHATA brand liqueur in the United States in May 2008 and adopted CHATA as a co-brand for its RUMCHATA liqueur with trading under CHATA beginning in the United States in November 2011.

RUMCHATA and CHATA branded alcoholic beverages are also being sold internationally including in Australia, Canada, Mexico and Europe.

RUMCHATA is a horchata inspired unique and wonderfully-tasting blend of Caribbean rum, real dairy cream, cinnamon, vanilla, and other secret flavors.

There are a total of 114 trade mark registrations or applications [in Exhibit MN-3] in twenty nine (29) countries for CHATA or RUMCHATA.5 The Opponent refers to its marks as the ‘CHATA Family’ of marks because of the shared use of the term CHATA.6

Goods bearing the trade mark were shipped to Australia as early as June 2014. On July 10, 2014, the opponent shipped free of charge via Fed Ex a case of the goods bearing the trade marks to Mr. Dave Higgins, Southtrade International Pty Ltd…On March 9, 2015 the opponent shipped free of charge via Fed Ex a further case of the goods bearing the trade marks, this time to Ms Georgina Wright, Paramount Liquor…By purchase order dated May 5, 2015, Artisan Handcrafted, with which Ms Wright is now associated, purchased 1,666 cases of the goods bearing the trade marks…On August 6 2015, the opponent shipped the goods to Artisan Handcrafted in Australia.

The goods bearing the trade marks are distributed throughout Australia by The Beverage Company Pty Ltd trading as Artisan Handcrafted.

1. Invoices supporting the shipments to Australia described above are exhibited to Neises 1. They describe the goods accordingly as ‘Rum Chata’, ‘RumChata’ or RUMCHATA.

1. Neises 1 further provides printouts of archived and current pages of the website ‘ which has been operating since 7 February 2011. According to Mr Neises, 5,954 visits from people in Australia were made to the website in the period October 2012-2017, with 947 of them in 2017 (being after the priority date, as would be a proportion of the unspecified number of visits in 2016).

1. Confidential sales figures for revenue generated outside of the United States in the period 2013-2016 is provided, as well as confidential marketing and advertising expenditure for the period 2014-2016 (none of these figures are specific to Australia).  In  my  estimation  the former is moderate whilst the latter is quite significant (especially as a proportion of sales revenue). In respect of sales in Australia Mr Neises makes the following statements:

   The goods bearing the trade mark are sold in Australia at a retail price of approximately AU$25-$35 per bottle.

   During 2015, the opponent shipped approximately 20,000 bottles of the products bearing the trade mark to the Australian distributor.

   During 2016, the opponent shipped approximately a further 10,000 bottles of the products bearing the trade mark to its distributor in Australia.

   Approximately 1,000 value-added products were also shipped to Australia during 2016. These consisted of a Christmas gift box containing a free ceramic mug branded with RUMCHATA, together with a 750ml bottle of the products bearing the trade marks.

5 The Australian registrations being those described in paragraph 9.

6 I note that only three variants of the CHATA/RUMCHATA trade marks have been registered, all in the United States, being GOCHATAS, MINICHATAS (both registered from March 2016) and YUMCHATA (registered

from October 2010). As at the time of declaration MINICHATAS was also a pending application in Australia.

1. The Opponent has invested heavily in an ‘aggressive and effective U.S. marketing and advertising campaign’ (in terms of confidential marketing and advertising figures for the U.S. market). Neises 1 provides examples of advertising including in major U.S. publications and upon billboards, buses and an airborne banner. Examples of further industry recognition in the United States are provided, wherein the ‘RUMCHATA brand’ has won various awards (particularly relating to brand growth) in the years 2011 to 2016. Such awards were granted by bodies including ‘The Beverage Information Group’, ‘Shanken’s Impact Newsletter’ and ‘Shanken News Daily’. Articles from such publications as Chicago Business Journal, BIN (Beverage Industry News) Magazine and Cain’s Chicago Business Magazine also feature the RUMCHATA trade mark and growth of the brand.

1. Two Australian publications feature the RUMCHATA trade mark. The Shout: Hotel, Bar, Club & Liquor Industry News (at ‘ states in an article dated 8 December 2015: ‘Rum cream liqueur RumChata, which has become hugely popular in the US, is now available in Australia’. Bartender (at ‘australianbartender.com.au’) states ‘Here’s a new flavor for the bar: RumChata’. Also of relevance is its statement that ‘Its flavour is based on horchata, a summer drink popular in Spain and Latin America that’s made from rice, sugar, vanilla and other spices’.

1. Details of the Opponent’s social media accounts are provided. The Opponent has a presence upon Facebook® (since 2010), Instagram® (since 2014, with an Australian-specific account since 2017), Twitter® (since 2010), YouTube® (no date is given for when the account was created although I note that as of 23 May 2017, videos were uploaded to that account ‘3 years ago’) and Pinterest (since 2014). Of the Facebook account Neises 1 exhibits two comments posted to the Opponent’s Facebook page, both asking where RumChata can be obtained in Australia. The comments are dated 3 January 2012 and 17 July 2012.

1. Wright 1 makes the following statements:

Artisan [being a reference to Artisan Handcrafted, the trading name of The Beverage Company Pty Ltd] is the distributor in Australia of goods provided by Agave Loco LLC (Agave) bearing the trade marks RUMCHATA and CHATA.

Artisan has been distributing Agave’s goods by mutual agreement with Agave in Australia since 2015.

The trade marks are promoted by being displayed prominently on the goods. The CHATA trade mark is affixed to the top of each gold bottle cap. [As shown in the image below, taken from Exhibit GW-3].

Artisan operates a website at (the website). The website prominently features the goods bearing the trade mark…[Attached] are printouts of results from the Internet Archive search engine, Wayback Machine [from as early as March 2015, which show a stylised version of the trade mark but not actually upon goods].

In 2015 the goods bearing the trade marks were sold in more than 200 retail stores throughout all states in Australia. These included liquor chain stores First Choice and Vintage Cellars, as well as a number of independent liquor retailers.

In 2016, distribution of the goods bearing the trade marks increased substantially by being stocked in Dan Murphy’s online store. Dan Murphy’s is the largest independent liquor chain in Australia.

As at the date of this declaration, the goods bearing the trade marks are stocked in and sold to the purchasing public through a total of over 400 retail liquor stores in Australia.

In 2015, the goods bearing the trade marks were provided to the purchasing public via approximately 70 different licensed bar, club and restaurant venues throughout Australia.

As at the end of April 2016, the total number of on-premise establishments throughout Australia stocking the goods bearing the trade marks was approximately 110.

As at the date of this declaration, there are over 300 licensed venues throughout Australia which provide the goods bearing the trade marks to the purchasing public.

1. Wright 1 provides confidential sales figures in Australia which, in response to questioning from the Applicant in its evidence in answer, were corrected in Wright 2 with the explanation that certain figures were inaccurate due to  inadvertent  misinterpretation  of data  extracted from ‘Artisan’s’ computer-generated reports. I accept this explanation. The corrected figures show modest sales in Australia for the years 2015 and 2016 (I disregard the figures relating to 2017, being well after the priority date, and note that an unspecified proportion of the 2016 figures would also relate to the period after the priority date).

1. Examples of advertising are exhibited to Wright 1, including a cocktail list, a large cocktail menu board, an outdoor umbrella and signage upon a vehicle. None of  them  are  dated, although Ms Wright declares that the cocktail list was distributed to  stockists during the period May to November 2016 (and therefore mostly after the priority date). A catalogue from First Choice Liquor, relating to a sale taking place from 10 to 16 February  2016, advertises RUMCHATA for sale. An email, described to be from Coles to its electronic direct

marketing  distribution  list,  likewise  advertises  RUMCHATA  for  sale,  dated  10  February 2016.

1. Promotion by way of sampling is declared to have taken place around 12 and 13 February 2016 (the Valentine’s Day weekend of that year) at all 140 First Choice liquor stores throughout Australia. Similarly, sampling events known as ‘Indie Tasting events’ run by ‘Bartender Australia’ are  declared  to  have  taken place  at  licensed  venues  in Sydney and Brisbane during May and September 2016 (it is not stated whether the May event took place before or after the priority date).

1. Further promotion is declared by Ms Wright to have taken place at various event showcases and exhibitions. These are the Australian Drinks Festival 2016, the St Kilda Film Festival 2016, Shop the City event 2016, Taste of Melbourne 2016 and Taste of Sydney 2017. Of these events it appears only the Shop the City event 2016 took place prior to the priority date, it being an event held at the ‘Emporium Melbourne’ on 18 May 2016.

1. Wright 1 gives details of ‘Artisan’s’ social media accounts upon Facebook and Instagram, with posts upon the Facebook page dating from 10 March 2015 and upon the Instagram page dating from 25 December 2015.

1. Lastly, ‘Artisan’s’ confidential advertising expenditure is provided. Only one of the figures is relevant, in that it relates to the first six months of 2016. The proportion relating to the period before filing is not specified, so that although it is a significant amount (particularly when viewed as a proportion of sales) it is not possible to ascertain pre-filing expenditure. Ms Wright also explains that during 2015 Coles, the parent company of First Choice and Vintage Cellars, arranged the advertising and promotion of the goods.

The Applicant’s evidence in answer

1. Most of the Applicant’s evidence questions or refutes the Opponent’s evidence in support. In particular it notes that Ms Wright appears to conflate the trade marks RUMCHATA and CHATA, such that information specific to each trade mark is not provided. Additionally, most of the evidence relating to the bottle appearing on shelves would obscure the view of the cap, so that CHATA would not be visible to the viewer. It  also  notes  that  most  of  Ms Wright’s evidence is either undated or dated after the priority date, and that of information relating to 2016, there is little specification of whether it relates to the period before or after the priority date.

1. Of Neises 1, the Applicant submits that other trade marks, such as MINICHATAS, which were not specified in the SGP ought not be relied on by the Opponent. The Applicant also notes that much of the Neises evidence relates to the United States and/or does not specify use outside of the United States which is specific to Australia.

1. In relation to the Applicant, Mr Cabrera states that use of its brand ‘Licor 43’ commenced in Spain in 1934, and that brand has since been used in 55 countries around the world (including Australia).

1. Of horchata Mr Cabrera states:

Definition of ‘horchata’:

Horchata, is the name of several kinds of beverages, made of ground almonds, sesame seeds, rice, barley, tigernuts or melon seeds.

Horchata is a famous word and it is a descriptive word as evidenced by the inclusion of same in the Opponent’s specification of goods in trade marks registration 1550933 and 1557499:

Mixed alcoholic beverages, namely, a cream-based horchata-flavored alcoholic beverage made with rum.

The term ‘Horchata’ is one that an ordinary trader without improper motive would desire to use to describe such alcoholic products.

1. I note that no authority or source is given for the above definition.

1. Mr Cabrera submits also that ‘Oro’ may be translated into English as ‘gold’, ‘Chata’ refers to the ‘famous Valencia beverage’ horchata (no source or authority is given for this claim), and that in use the Trade Mark and the Opponent’s trade mark appear quite different, as below (although I note that the images arguably do not fall within the bounds of fair notional use of the trade marks at issue).

2. Lastly Mr Cabrera notes that the trade mark BACHATA exists upon the Register (registration no.’s 1145723 and 1729626), registered in respect of various beverages and preparations for making beverages in class 32 and alcoholic beverages in class 33.

The Opponent’s evidence in reply

1. Wright 2 provides further details of sales made in Australia and, as mentioned previously, corrects the sales figures given in Wright 1. It also provides archived web pages of retailers First Choice Liquor and Vintage Cellars showing that bottles of RUMCHATA were available for sale on those websites at 10 March 2016 and 7 March 2016 respectively.

1. Further details regarding an article in Bars and Clubs magazine, wherein an advertisement for the Opponent’s goods appears, is provided. The article is claimed to be from the January 2016 edition, and Wright 2 provides an indication of the circulation of the magazine  in Australia, being ‘6,216 CAB Audited Circulation’.

1. Neises 2 is made largely for the purpose of further substantiating the sales and samples of the Opponent’s goods provided to Australia, which does not need further description here. It also notes a third no-charge shipment of goods, being six bottles sent to Ms Wright at Artisan Handcrafted on 27 October 2014.

1. The Palmer declaration is provided only to clarify the amount of traffic to the Opponent’s website from people in Australia. According to a Google Analytics report exhibited to the declaration, in the period 1 October 2012 to 24 May 2016, the Opponent’s website received 2,849 visits from people in Australia, with 2,485 of them being new users.

Section 44

1. Section 44 relevantly provides:

   Identical etc. trade marks

   44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)  the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)  the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

1. Subsections (3) and (4), referred to in the passage above, relate to honest concurrent use of a trade mark which would enable registration, other circumstances which would make registration of a trade mark proper, and prior continuous use of a trade mark. The Applicant does not provide any evidence of use or other circumstances so it is therefore unnecessary to consider these provisions.

1. In order to establish the ground the Opponent must establish the existence of another person’s trade mark (or trade marks) with an earlier priority date than that of the Trade Mark, which is in respect of similar goods or closely related services and which is deceptively similar or substantially identical to the Trade Mark. The Opponent relies upon its trade mark registrations 1550933 and 1557499 to do so (the CHATA and RUMCHATA trade marks, referred to collectively as ‘the Opponent’s trade marks’).

1. I consider it straightforward that the priority date of the Opponent’s trade marks are earlier than that of the Trade Mark, and that the goods are similar. The only remaining determination is whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s trade marks. Substantial identity was not pressed, on the basis that deceptively similarity between the trade marks was sufficient to establish the ground.

1. Deceptive similarity relies upon impression rather than a side by side comparison of trade marks. The expression ‘deceptively similar’ is defined in s 10 of the Act, which indicates ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. The causing of confusion is the lower threshold, and a trade mark is likely to do so if the result of its use is that a

   number of persons are caused to wonder or entertain a reasonable doubt as to whether two goods (or closely related services and goods) come from the same source.7

1. The assessment of impression relies upon ‘on the one hand, the impression based on the recollection of [the prior trade mark], that persons  of  ordinary  intelligence  and  memory would have; and, on the other hand, the impression that such persons would get from [the Trade Mark]’.8 Relevant also to this assessment is that the impressions left by the trade marks

   may be imperfectly recalled9 and that the possible confusion need not be limited to mistaking

7 Registrar of Trade Marks v Woolworths (‘Woolworths’) [1999] FCA 1020, [50].

8 Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [13].

9 De Cordova v Vick Chemical Co, (1951) 68 RPC 103, 106.

one trade mark for another but rather wondering whether the trade marks, which might be readily distinguished from each other, are nonetheless associated.10

1. The primary point of difference between the parties’ positions is the significance of CHATA. The Opponent submits that CHATA is a distinctive element in the Trade Mark rendering it deceptively similar to the Opponent’s trade marks, whereas the Applicant submits CHATA is a descriptive reference to horchata and therefore unlikely to lead to deception or confusion. I am not persuaded by either of these arguments. The trade mark is LICOR 43 OROCHATA. Even assuming that LICOR 43 was differentiated from OROCHATA (within the bounds of fair notional use), I am not satisfied that the suffix CHATA in OROCHATA has significance in and of itself. Rather, in my estimation, most Australians would be likely to consider OROCHATA an invented or foreign word and one that is not obviously constructed from the

   separate components ORO and CHATA. Unlike RUM in RUMCHATA, ORO has no separate obvious meaning to Australians.11 To that end I do not believe that Australian consumers would be likely to make a  connection  between  LICOR  43  OROCHATA  and either horchata or the Opponent’s CHATA or RUMCHATA trade marks (or  submitted ‘family’ of CHATA marks, which I am not satisfied existed in Australia in any event). The lack of connection to the Opponent’s trade marks by virtue of CHATA is further corroborated

   by the registration of BACHATA in Australia.

1. The Opponent also made submissions to the effect that the CHATA element in the Trade Mark could be differentiated within the bounds of fair notional use, such as in OroChata or oroCHATA. Whilst I agree that such uses may render the parties’ trade marks more comparable, I am not satisfied that the result would be deceptive similarity. ‘Oro’ is not likely to be perceived as a descriptive prefix denoting a particular type of CHATA product. Nor am I persuaded that by virtue of ORO and RUM being short prefixes of the same length, their combination with CHATA would mean that both would be taken to denote products of the Opponent (particularly bearing in mind that LICOR 43 would also be  present  in  a  fair notional use of the Trade Mark).

10 In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110 (UK Reg.); Tonka Corporation v Chong (1994) 29 IPR 253; Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415; and Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407; all cited in Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, [145].

11 Noted in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48.

12

1. The cases cited by the Opponent which compare trade marks that clearly have a natural separation between words (such as PARKER-KNOLL and KNOLL,12 BRATS and BONZA BRATS,13 and OTTO KEUNIS and KUENE14), are not analogous to the matter here. Moreover findings of deceptive similarity on the basis of words likely to be perceived as similar surnames are not relevant to this case. In such cases deceptive similarity may still

   arise where the first part of the mark is quite different (such as the presence of a first name in one but not the other). Here it is unlikely that any part of the Trade Mark or the Opponent’s trade marks would be perceived to be a surname.

1. I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s trade marks, and the ground of opposition under s 44 accordingly fails.

Section 60

1. Section 60 of the Act provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note:       For priority date see section 12.

1. To establish the ground of opposition under section 60 the Opponent must demonstrate that its trade marks had acquired a reputation in Australia such that by the priority date, 25 May 2016, the use of the Trade Mark would be likely to deceive or cause confusion.

1. Reputation in this context refers to the recognition of the Opponent’s trade marks by the public generally15, although the size and nature of the relevant market must be taken into account.16  I note further that confusion cannot arise solely from reputation but must always

12 Parker-Knoll Ltd v Knoll International Ltd (No. 2) [1962] RPC 265 (HL).

13 Re Application by Coles Myer Ltd (1993) 26 IPR 577.

14 2017 ATMO 143.

15 McCormick & Company Inc v McCormick (‘McCormick’) [2000] FCA 1335.

16 Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587.

involve some degree of similarity between marks, whether it be called deceptive similarity or something less.17

1. In written submissions the Opponent relies upon its submitted ‘family’ of trade marks to establish the ground. It does not say precisely which trade marks constitute its family of marks, except that it includes the Australian registrations of CHATA, RUMCHATA and MINICHATAS.18 The trade mark MINICHATAS was not mentioned in the SGP under any of the grounds of opposition, and in evidence the-then Australian application appeared only in a long list of registrations and applications around the world. It was not presented in any

   way that would cause one to predict it would be relied upon to establish the ground under s

   60. For that reason, I disregard the submissions made in respect of it (and note that, in any event, in respect of that mark there is no evidence of use in Australia at all or a reputation amongst Australian consumers).

1. In respect of the trade mark CHATA, the evidence of its use and promotion falls well short of that required to establish a reputation. In Australia, the only use of it appears to be upon the tops of the caps of bottles labelled RUMCHATA. There is no indication in the evidence that Australian purchasers have taken any particular note of the bottle caps or that there has been any promotion of CHATA as a trade mark apart from its appearance on the tops of bottle caps. I am not satisfied that because of its placement upon the  goods that the sales and promotion of bottles of RUMCHATA apply equally to CHATA. The ground therefore cannot be established on the basis of this trade mark.

1. In respect of RUMCHATA, much of the evidence of use does not relate to the period before the priority date. Sales before the priority date were moderate, and even though sales are not necessary to establish reputation,19 they are  not  supported  by  sufficiently  extensive advertising and marketing activities taking place before the priority date. It is true that the goods were made available via major retailers First Choice Liquor and Vintage Cellars in 2015,20 which does lend a degree of weight to the claimed reputation. However it is not apparent  that  the  Opponent’s  goods  appeared  consistently  in  their  catalogues.  The  other

17 Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5.

18  The trade mark MINICHATAS was pending at the time the Opponent filed evidence in support, and was registered by the time the Opponent filed written submissions for the hearing.

19 Per Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252.

20 The goods were also made available via Dan Murphy’s online store in 2016, however it is not stated whether this was before or after the priority date. Exhibit GW-6, showing goods available on the Dan Murphy’s website,

is dated 24 May 2017.

promotional activities appear to have taken place largely from February 2016 onwards, only about three months before the priority date.

1. In terms of the use of the RUMCHATA trade mark overseas, and therefore its spill-over reputation in Australia, there is insufficient information before me to conclude that such a spill-over reputation exists. Even assuming that there is significant international travel between the United States and Australia, there is no evidence upon which an inference may be made as to how many Australians might have visited bars or restaurants which sold the Opponent’s RUMCHATA goods or how many may have observed the various promotions of RUMCHATA that have taken place in the United States. I do take account of the Opponent’s online presence (in terms of both its own website and its social media accounts), however the online activity which can be attributed to people in Australia is limited.

1. Reputation also needs to be viewed in the context of the market. Here, the goods are not highly specialised but are broadly available alcoholic beverages sold in retail outlets and in bars and restaurants. In this context, I am not satisfied that short period of use in Australia, the moderate sales made of the goods, and the use overseas establishes a relevant reputation for the purposes of s 60.

2. I note the Opponent’s reference to Anheuser-Busch v Castlebrae Pty Ltd,21 wherein Davies J noted both the increase in travel between Australia and other countries and that the courts frown upon an attempt by one trader to appropriate the mark of a foreign trader and will therefore seize upon a small amount of use to find the mark identifies the foreign trader. Here however I do not consider the Applicant is attempting to appropriate the mark of  the Opponent because I do not consider that CHATA is a separately identifiable feature in the

   Trade Mark. For the same reason I do not consider that Moroccanoil Israel Ltd v Aldi Foods Pty Ltd22 applies, wherein Katzmann J noted the principle that if a feature (in this case the colour turquoise) alone or in combination with other features is likely to be associated with a trader, its use by another trader may mislead consumers into believing there is a connection between the two.

1. The ground under s 60 accordingly fails.

21 [1991] FCA 491

22 [2017] FCA 823, [349].

Section 42

1. Section 42 of the Act relevantly provides:

   42 Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   …

   (b) its use would be contrary to law.

1. The basis for the ground of opposition is that use of the Trade Mark would be likely to mislead or deceive consumers, thereby contravening s 18 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010), and would amount to passing off.

1. Part of the Opponent’s submissions in relation to this ground concern reputation in another trade mark. Generally where a reputation sufficient to result in confusion cannot be established, a reputation sufficient to mislead or deceive likewise cannot be established. As observed by the Registrar’s delegate in Monster Energy Co v USA  Nutraceuticals Group

   Inc:23

   In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the [ACL] is a more stringent test than that for deception or confusion under s 60,24 I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

   Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.25 Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation26 also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.

1. On that basis, the Opponent’s submissions based upon reputation do not establish the ground.

23 [2017] ATMO 22, [58].

24 See, eg: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, at p 198 (Gibbs CJ).

25 [2003] FCA 104, at [107].

26 [1989] FCA 506, at [40].

1. The Opponent also made submissions that misleading and deceptive conduct is not necessarily reliant on reputation and that such conduct need not involve representations but may include all relevant circumstances such as acts, omissions, statements or silence; referring to Woodtree Pty Ltd v Zheng (‘Woodtree’) 27  and Butcher v Lachlan Elder Realty

   Pty  Limited  (‘Butcher’).28   Heerey  J  noted  in  Woodtree  that  ‘[In]  claims  under  the  Trade

   Practices Act it is not necessary for a plaintiff to establish an exclusive reputation, or indeed any reputation at all. The question is rather whether consumers are likely to be misled or deceived by the defendant’s conduct.’29  McHugh J stated in Butcher ‘Section 52 [of the then in force Trade Practices Act 1974] is not limited to conduct in relation to statements about goods or services’. His Honour also stated that ‘conduct that objectively leads one into error is  misleading’,  emphasising  as  well  that  the  words  ‘or  is  likely  to  mislead  or  deceive’

   (inserted into the Trade Practices Act 1974 by amendment in 1977) ‘make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone’.30

1. With these principles in mind the Opponent submits that the parties’ goods are likely to be sold side by side, are of a similar nature (both being liqueurs with a creamy consistency), are likely to be around the same price point, and (within the bounds of fair notional use) may be sold in similar coloured bottles. It is submitted that in these circumstances, given the distinctiveness of CHATA, the Applicant’s conduct would be likely to mislead or deceive consumers (in that there would be ‘a real and not remote chance’ of a person being misled, referred to in Butcher).

1. Whilst I acknowledge that in these circumstances there may exist the possibility that consumers would believe the products to be of a similar type, I am not satisfied that consumers would likely be led into mistaking the Applicant’s goods as those of the Opponent, or that the Applicant’s goods have a connection with, sponsorship, or approval of the Opponent. Exhibit ERC-001, being images of the Dan Murphy’s online liquor store in the Applicant’s evidence in answer, demonstrates that many spirits and liqueurs are sold in light coloured bottles, particularly cream based liqueurs. Prices are not included in the exhibit, however there is nothing to suggest that any of the liqueurs are significantly more or less expensive than others. Presumably many of them are sold side by side on the shelves of

27 [2007] FCA 1922.

28 [2004] HCA 60.

29 Woodtree, [34].

30 Butcher, [108]-[112].

shops, and as demonstrated by the exhibit are included within the same category of products in online stores.

1. In my consideration, the factors pointed to by the Opponent do not establish that the use of the Trade Mark would be contrary to law, even where reputation is not relied upon.

1. The ground under s 42(b) is therefore not established.

Decision and costs

1. Subsection 55(1) of the Act provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, 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.

Note:       For limitations see section 6.

1. The Opponent has not established any ground of opposition.

1. Accordingly trade mark application 1780731 may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be  in accordance with the Court’s order or direction.

1. Costs normally follow the event, and as there is no apparent reason to depart from the principle I award costs against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Nicole Worth Hearing Officer

Trade Marks Hearings 14 November 2018