ALDI Foods Pty Ltd v Gage Roads Brewing Co Ltd

[2019] ATMO 118

TRADE MARKS ACT 1995

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

Re:Oppositions by ALDI Foods Pty Ltd to registration of trade mark application numbers 1879153 and 1879154 (both class 32) – ALBY (Logos) - in the name of Gage Roads Brewing Co Ltd

Delegate:

Jock McDonagh

Representation:

Opponent: Spruson & Ferguson, Attorneys

Applicant: O’Sullivans Attorneys

Decision:

2019 ATMO 118

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – no grounds established – trade marks may proceed to registration

Background

1. This matter relates to oppositions under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of trade marks filed by Gage Roads Brewing Co Ltd (‘the Applicant’). Relevant details of the opposed application are set out below.

Application No	1879153  1879154
Trade Marks	(‘the Trade Marks’)
Filing Date:	11.10.2017 (‘the Priority Date’)
Goods:	Class 32: Alcohol-free beer; Alcoholic beers; Beer; Beer-based cocktails; Bitter beer; Black beer; Dark Beer; De-alcoholised beer; Fruit beers; Ginger beer; Ginger beer (alcoholic); Ginger beer (non-alcoholic); Low alcohol beer; Malt beer; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Non-alcoholic beers; Non-alcoholic beverages (except non-alcoholic beer); Pilsner beer; Root beer

1. The Trade Marks were examined in compliance with section 31 of the Act and were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 8 March 2018. ALDI Foods Pty Ltd (‘the Opponent’) filed Notices of Intention to Oppose the registration of the Trade Mark on 8 May 2018 and Statements of Grounds and Particulars (‘the Statement’) on 10 May 2018.  Thereafter the Applicant filed Notices of Intention to Defend on 22 May 2018.

2. The parties then filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’). This evidence was the same as that filed in the matter of trade mark application 1836102, for the word mark ALBY.

3. The parties were advised of their right to be heard or to make written submissions.  The parties elected to defer hearing the matter until such time as the opposition to application 1836102 had been decided. The parties agreed that the decision made for application 1836102 would be applicable to these oppositions and the submissions made for that hearing would be applicable to deciding these oppositions.

4. I am a delegate of the Registrar of Trade Marks and I am to decide the oppositions as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs including my decision [2019] ATMO 118 dated 1 August 2019 and annexed hereto as Annexure 1.

   Grounds of Opposition

5. The Opponent pressed the same grounds of opposition as those pressed for the hearing of application 1836102, namely:

   • Section 44: The Trade Mark is substantially identical with or deceptively similar to a prior application or registration;
   • Section 60: The Trade Mark is similar to a mark that has acquired a reputation in Australia; and
   • Section 42(b): Use of the Trade Mark would be contrary to law (by virtue of breach of section 18 and 29 of the Australian Consumer Law, and action constituting the tort of passing off).

6. To succeed in its oppositions the Opponent bears the onus of establishing at least one of these grounds on the ‘balance of probabilities’.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

7. The time at which the grounds of opposition must be established is the date of filing of the application for registration.[2]

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Decision

8. Section 55(1) of the Act provides:

   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.

9. Subsection (3) does not apply to these proceedings.

10. For the reasons provided in Annexure 1, the opponent has not established any grounds of opposition. The Trade Mark applications may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

    Costs

11. 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 Opponent under section 221 of the Act in the terms of Schedule 8 of the Regulations. Costs for application 1879154 do not include Items 7 to 16 inclusive.

    Jock McDonagh

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    2 August 2019

    ANNEXURE A TO

    DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS DATED 2 AUGUST 2019

    TRADE MARKS ACT 1995

    
    
    

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

    Re:Opposition by ALDI Foods Pty Ltd to registration of trade mark application number 1836102 (class 32) - ALBY - in the name of Gage Roads Brewing Co Ltd

Delegate:

Jock McDonagh

Representation:

Opponent: Written submissions prepared by Spruson & Ferguson, Attorneys

Applicant: Martin O’Sullivan of O’Sullivans Attorneys

Decision:

2019 ATMO 117

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – no grounds established – trade mark may proceed to registration

Background

1. This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark filed by Gage Roads Brewing Co Ltd (‘the Applicant’). Relevant details of the opposed application are set out below.

Application No

  1758694

Trade Mark

ALBY      

(‘the Trade Mark’)

Filing Date:        

4.04.2017 (‘the Priority Date’)

Goods:

Class 32: Alcohol-free beer; Alcoholic beers; Beer; Beer-based cocktails; Bitter beer; Black beer; Dark Beer; De-alcoholised beer; Fruit beers; Ginger beer; Ginger beer (alcoholic); Ginger beer (non-alcoholic); Low alcohol beer; Malt beer; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Non-alcoholic beers; Non-alcoholic beverages (except non-alcoholic beer); Pilsner beer; Root beer

1. The Trade Mark was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 24 August 2017. ALDI Foods Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark on 26 September 2017 and a Statement of Grounds and Particulars (‘the Statement’) on 6 October 2017.  Thereafter the Applicant filed a Notice of Intention to Defend on 27 November 2017. The parties then filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. The parties were advised of their right to be heard or to make written submissions.  The parties elected to be heard, and also filed outline written submissions prior to the hearing.

3. I heard the matter by in Canberra on 18 March 2019 as a delegate of the Registrar of Trade Marks. The Opponent did not appear but provided written submissions for the hearing prepared by Spruson & Ferguson, Attorneys. The Applicant was represented by Martin O’Sullivan of O’Sullivans Attorneys who also provided written submissions in support of his submissions made at the hearing.

   Grounds of Opposition

4. The Opponent nominated the following grounds of opposition under the Act, all of which were pressed at the hearing:

   • Section 44: The Trade Mark is substantially identical with or deceptively similar to a prior application or registration;
   • Section 60: The Trade Mark is similar to a mark that has acquired a reputation in Australia; and
   • Section 42(b): Use of the Trade Mark would be contrary to law (by virtue of breach of section 18 and 29 of the Australian Consumer Law, and action constituting the tort of passing off).

5. To succeed in its opposition the Opponent bears the onus of establishing at least one of these grounds on the ‘balance of probabilities’.[3]

   [3] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

6. The time at which the grounds of opposition must be established is the date of filing of the application for registration.[4]

   [4] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Evidence

7. The evidence consists of the following declarations:

Evidence in support
Declarant and Position	Date Made	Exhibits
David Lentini, Corporate Buying Administration Director	5 February 2018	1 to 3
Evidence in answer
Cameron Collison, National Brand Manager of Applicant	5 June 2018	CC-1 to CC-3
Evidence in reply
Blake David Knowles, Principal at Spruson & Ferguson Intellectual Property	3 August 2018

1. The Lentini declaration indicates:

   ·     the Opponent, ALDI Foods Pty Ltd, and ALDI Pty Ltd are partners in ALDI Stores - a limited partnership;

   ·     trade marks registered in the name of the Opponent are used by ALDI Stores under licence;

   ·     the ALDI trade mark has been used in relation to retail services in Australia since 2001;

   ·     the majority of products retailed under the ALDI trade mark are sold under exclusive 'private label' brands;

   ·     since 2003, the retail services provided under the ALDI trade mark have included the retail of packaged beer under a range of private labels (“the Private Labelled Beer”) that do not include the ALDI trade mark;

   ·     the word ALDI appears on the Private Labelled Beer by way of a statement on the label stating the private label brand is the property of ALDI i.e. ALDI Stores and ALDI Foods Pty Ltd; and

   ·     since 2003 the Private Labelled Beer has been promoted and retailed by ALDI Stores and certain of those beers have received awards.

2. The Collison declaration states:

   ·     The Applicant was established in Western Australia in 2002 and is one of Australia’s largest brewers producing a substantial amount of award-winning beer and cider each year under a range of brands.

   ·     The Applicant’s marketing team developed the Trade Mark following a creative process and in accordance with an objective to develop a brand that was distinctive and new but also had a “personality” that would resonate with consumers. ALBY was chosen by the Applicant mainly because it was a person’s name and could also be linked to The Albion Brewery - WA’s first brewery. These characteristics made ALBY attractive from a marketing perspective because it humanized the brand. ALBY also performed strongly in market testing undertaken by Applicant prior to its market launch in 2017.

   ·     The Trade Mark is a diminutive or abbreviated form of the suburb name ALBION, or the name ALBERT. In regard to the latter, reference was made to the film maker Alby Mangels, and Cyclone Alby

3. The Knowles declaration relies on the declarant’s long experience as an occasional purchaser of alcoholic beverages, attendance at professional events at licensed premises, and extensive experience as a former trade mark examiner of applications for relevant goods.

4. The Knowles declaration details the methods of selling the goods the subject of the application and how they are typically ordered by consumers. It highlights the predominance of verbally ordering the goods.

5. I now turn to the grounds of opposition.

   Section 44 – Identical etc. trade marks

6. Section 44 of the Act relevantly states:

(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  serevices 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.

Note 1:       For deceptively similarsee section 10.

Note 2:       For similar goodssee subsection 14(1).

Note 3:       For priority datesee section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

…

             (3)  If the Registrar in either case is satisfied:

   (a)  that there has been honest concurrent use of the 2 trade marks; or

   (b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:          For limitationssee section 6.

             (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)  beginning before the priority date for the registration of the other trade mark in respect of:

   (i)  the similar goods or closely related services; or

   (ii)  the similar services or closely related goods; and

   (b)  ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:       An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:       For predecessor in titlesee section 6.

Note 3:       For priority datesee section 12.

1. Therefore, to found its ground of opposition under s 44(1) the Opponent has to establish to my satisfaction the existence of at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Applicant and which:

   ·        has a priority date earlier than that of the opposed trade mark; and

   ·is registered or made in respect of the same or similar goods or closely related services; and

   ·is substantially identical or deceptively similar to the opposed trade mark.

2. For the purposes of s44, the Statement cites the following Australian trade mark registration:

Trade Mark No.	Trade Mark	Classes of Goods/services	Priority Date
1585399	ALDI	Defensive trade mark in classes 1 to 45, and relevantly: Class 32: Non-alcoholic beverages in this class; preparations for making non-alcoholic beverages in this class; low alcoholic beverages in this class; preparations for making low alcoholic beverages in this class; essences, extracts and pellets for use in the preparation of beverages in this class; beer	11.10.2013

1. The mark relied upon by the Opponent, and shown above, has a priority date earlier than that of the Trade Mark and is registered in class 32. The above goods are clearly the same or similar to those of the Trade Mark.

2. Although the Statement pleaded both substantial identity and deceptive similarity, its submissions only pursued the latter limb, as did those of the Applicant.

3. I concur with the parties' approach, and I am not satisfied that the competing marks are substantially identical. Therefore, I turn to deceptive similarity.

4. Deceptive similarity is defined in section 10 of the Trade Marks Act as follows:

   10   Definition of deceptively similar

   For the purposes of this Act, 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.

5. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[5] (‘Shell’):

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark].

   [5] (1961) 109 CLR 407, at 414-415.

6. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

7. The principles applicable in determining the standard of “confusion or deception” under s 44(1) of the Act were discussed by French J in Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’)[6]:

   [6] [1999] FCA 1020 at [50].

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd at 594-595, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i)           To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii)          A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii)         In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv)    The rights of the parties are to be determined as at the date of the application.

   (v)         The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

1. The Applicant submitted that the principles of deceptive similarity were conveniently detailed by Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd[7]

   [7] [2012] FCA 1022, [38] to [46].

   38.First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths at [49]; Australian Woollen Mills at 658.

   39.Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   40.Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   41.Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   42.Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating at 594 – 595.

   43.Sixth, a trade mark is likely to “cause confusion” if the result of its use will be that a number of persons are “caused to wonder” whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   44.Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   45.Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   46.Ninth, if a registered trade mark includes words which can be regarded as an “essential feature” of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an “essential feature” because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].

2. Mr O’Sullivan submitted that while there was no evidence proffered by the Opponent on the origin of the ALDI trade mark, it has been reported that it was first coined in 1962 as a syllabic abbreviation of Albrecht Diskont. Albrecht being the surname of the founders of the ALDI business, and Diskont being German for discount. I am satisfied that this is correct.

3. Mr O’Sullivan referred to the Collison declaration that had explained that ALBY was a name (derived from Albert) and a reference to Western Australia’s first brewery, the Albion Brewery, which was also referred to as ‘the Alby’. The objective was to humanize the brand with a personality that would resonate with consumers.

4. I need to decide whether the concurrent use of the respective trade marks in relation to the goods in Class 32 for which the Applicant seeks registration is likely to result in a tangible danger of confusion or deception. In this case, I do not consider it would.

5. I consider that the aural and visual differences are such that there would be no likelihood of confusion between the two marks. Whilst ALDI and ALBY are both single words with the same prefix, the words do not have a close phonetic resemblance (the ‘b’ sound is distinct from the ‘d’ sound - unlike, say ‘d’ and ‘t’, or ‘b’ and ‘p’), and I consider that neither of the words lend themselves to mispronunciation.

6. Further, whilst the words only differ in the last letters, the Trade Mark is the abbreviation of a man’s name, while ALDI is a syllabic abbreviation of the company name. The two words have different connotations that do not create a deceptive resemblance of ideas.[8] Thus, as a matter of impression and common sense, I do not think that a person of ordinary intelligence would be likely to be confused or deceived by the Trade Mark, even allowing for an imperfect recollection.

   [8] Singtel Optus Pty Limited v Optum Inc [2018] FCA 575, at [138]

7. I am not satisfied that this ground of opposition has been established.

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

8. 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.

9. To establish its ground of opposition under section 60 the Opponent must demonstrate that as at the Priority Date there was another trade mark that had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

10. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[9] per Kenny J at [81] – [82]:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [9] (2000) 51 IPR 102

11. Further, at [86], Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

12. To underpin this ground the Opponent seeks to establish that the ALDI trade mark had the requisite reputation in relation to beer. The Opponent’s evidence indicates, in addition to those factors discussed at [9] above, that in the ten years before the priority date the Opponent’s total revenue figures for sale of beer exceeds $100 million, and total revenue sale for non-alcoholic beverages exceed $1 billion.

13. The Opponent conceded that most ALDI products, including beers, are sold under a distinctive ‘private label’ brand. However, it was submitted that the ALDI mark appears on the product and all products are sold only in ALDI stores and are visible online at >

    Mr O’Sullivan submitted that any reputation the Opponent had in the ALDI mark was in relation to retail services, not in beer. This was especially so because the Opponent’s beer bore distinctive ‘private labels’, with ALDI appearing on beer packaging by way of a trade mark ownership footnote.

14. Exhibit 1 to the Lentini declaration displays extracts from the ALDI web-site that feature beverages available at ALDI stores, including the ‘private brands’ described in the Lentini declaration. Paragraphs [13] to [17]. I note that each of the ‘private label’ predominantly displays that label as a badge of origin; however, none reveals the ALDI brand.

15. I also note that the extracts display the URL, or ‘web address’, of the ALDI web-site. Because the extracts in Exhibit 1 were unclear and appeared truncated and incomplete, I accessed the URLs displayed in the Exhibit. I note that the Opponent advertises for sale beverages produced by well-known breweries that are not owned by the Opponent: for example, Coopers, Corona and Carlton.

16. Therefore, I cannot be satisfied that the revenue figures cited by the Opponent indicate that consumers would associate any of the Class 32 beverages sold in ALDI stores as being sourced by the Opponent. I concur with the Applicant’s submission that any reputation the Opponent has in the ADI mark is in the area of retail services.

17. I do not consider that the Opponent has established the requisite reputation in regard to the the goods the subject of the application. Therefore, I am not satisfied that this ground of opposition has been established.

    Section 42(b): Trade mark’s use contrary to law

18. 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.

19. The Opponent nominated contraventions of sections 18 and 29 of the Australian Consumer Law (‘ACL’). Section 18 is contravened when a party engages in conduct in trade or commerce that is misleading or deceptive, or is likely to mislead or deceive customers. Section 29 applies where use of the Trade Mark would amount to a false representation within the terms of section 29.

20. There must be a ‘real but not remote chance or possibility’ of that a customer will be misled or deceived regardless of whether that chance it is less or more than 50 percent.[10]

    [10] Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 55 ALR 25 at 34, per Bowen CJ, Lockhart and Fitzgerald JJ.

21. As I have found that the use of the Trade Mark is not, at a minimum, likely to “deceive or confuse” under section 60, it follows that the use is not, on the stricter test posited by the ACL[11], likely to mislead or deceive within the meaning of section 18, nor do I believe use would amount to a false representation in terms of section 29.

    [11] Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited 1982] HCA 44.

22. I therefore find that the opponent has not established the ground of opposition under section 42(b) of the Act.

    Decision

23. Section 55(1) of the Act provides:

    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.

24. Subsection (3) does not apply to these proceedings.

25. The opponent has not established any grounds of opposition. The Trade Mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

    Costs

26. 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 Opponent under section 221 of the Act in the terms of Schedule 8 of the Regulations.

    Jock McDonagh

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    1 August 2019