Allied Domecq v Carlton and United Breweries Limited

[1997] ATMO 56

TRADE MARKS ACT 1995

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

Re:Opposition by Carlton and United Breweries Limited to an application by Allied Domecq Retailing Limited to register the trade mark firkin, application number 622247(32).

Trade mark application number 622247(32) was filed in the name of Allied Domecq Retailing Limited (Allied Domecq Retailing).  The application is for registration of the word mark firkin.  The application is in class 32 and the goods nominated are:

Beer, ale, lager, porter and shandy; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

The application was accepted and advertised for opposition in the Official Journal of Trade Marks on 14 March 1996.  The provisions of the Trade Marks Act 1995 therefore apply.
The application is opposed by Carlton and United Breweries Limited (Carlton and United). Carlton and United rely on the following three grounds:

1.    The trade mark is not capable of distinguishing the applicant’s goods from the goods or services of other persons.

2.    The use of the trade mark would be contrary to law.

3.    The use of the trade mark in relation to the applicant’s goods would be likely to deceive or cause confusion because of some connotation that the trade mark has.

Part 5 of the Trade Marks Act 1995 provides that the opponent may serve and file evidence to support its opposition.  Carlton and United did not avail itself of this right.  Nor did the applicant, Allied Domecq Retailing, take up the opportunity to serve and file evidence in answer to the notice of opposition.  Consequently, the provisions of regulation 5.14 came into operation, and Allied Domecq Retailing requested that the matter be set down for hearing.
I conducted the hearing in Sydney on 30 September 1997.  The opponent, Carlton and United, was not represented in person, but Mr Geoff Mansfield of Griffith Hack, a firm of Melbourne patent and trade mark attorneys, submitted some brief written submissions on the opponent’s behalf.   The applicant, Allied Domecq Retailing, was represented by Mr Martin Pollock of the Sydney firm of Spruson & Ferguson.
Mr Pollock first addressed Carlton and United’s claim that the trade mark firkin is not capable of distinguishing the applicant’s goods from the goods or services of other persons.
The word firkin, he pointed out, is defined in the general dictionaries and in specialist publications such as The Complete Beverage Dictionary (Lipinski, R.A. and K.A.).   The Macquarie Dictionary defines the word as:

1.      a barrel or container in the imperial system holding 9 gallons         (40.5 litres).
2.      a small wooden vessel for butter, etc. 

The Shorter Oxford Dictionary  defines it as:

1.      A small cask for liquids, fish, butter, etc., originally containing a quarter of a barrel

2.      A unit of capacity equal to half a kilderkin

The Complete Beverage Dictionary (apparently a USA publication) defines firkin as

A beer barrel used in England that contains 41 litres or 10.8 gallons.

Mr Pollock then directed my attention to submissions (put on behalf of Allied Domecq Retailing) in the course of examination that firkin is an archaic term and is no longer used as a unit of measure.  There are two points here. 
First is the submission that firkin is an archaic term.  There is no direct evidence of this. None of the references indicate that firkin has fallen out of use.  The Macquarie Dictionary points to a Middle English derivation but it does not say that firkin has no currency.  The Oxford and Complete Beverage dictionaries largely agree.  A search of the Internet, conducted in the course of examination, revealed a report that confirms current usage.  It reports the success of  a British brewer, a Mr Charles Wells of Bedford, who ‘chalked up a massive success’ for his ‘flagship cask bitter, bombardier’.  As a result, says Mr Wells,  ‘towards the end of last year [1994]  we simply ran out of firkin-sized kegs.... we managed to switch some orders to kilderkins and where possible our tenants helped by taking barrels.’  On this evidence and the evidence of the dictionary entries, I think it is clear that firkin, although ancient in origin, has not quite gone out of style.  On the other hand,  the report of Mr Wells’ success with his bombardier cask bitter is the only example of current descriptive usage that the examiner located and it seems reasonable to conclude that firkin is not in very common usage, particularly in Australia. Carlton and United has not put any evidence that shows otherwise, and I think it is fair to observe that, if firkin has significant currency in the brewery or beverage industry, then Carlton and United should be well placed to demonstrate it. The examiner of trade marks comments in her second report that the word may not be widely used in Australia but is still used in Britain. This seems to me to be an appropriate summation of the dictionary and research evidence.
The second point in Mr Pollock’s submission rests on the fact that a firkin is an imperial measure - or as put by Mr Mansfield - unit of capacity.  Imperial measurements have not been an authorised measure in Australia since the introduction of the metric system.

The first ground - section 41

The ground that the trade mark firkin is not capable of distinguishing the applicant’s goods from the goods or services of other persons, rests on section 41 of the Trade Marks Act 1995.

Section 41 states:

(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 from the goods or services of other persons

(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.

As pointed out by Mr Pollock in his submissions at the hearing, the explanatory notes to the Trade Marks Act 1995 expand on the meaning of inherently adapted to distinguish. They say

Trade marks that are not 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, geographic origin, or some other characteristic, of the goods or services;

firkin, says Mr Pollock, is clearly a word that is not ordinarily used to indicate any of these characteristics.  It is not in common Australian use, its meaning is not well known, and it is a measure of imperial units that are no longer in use.  It is therefore not a term that other traders are likely to want to use and prima facie is adapted to distinguish the goods nominated in Allied Domecq Retailing’s application. 
Nothing in Mr Manfield’s submissions successfully counters these points, although he does put forward an unsupported assertion that other traders may wish to use firkin on class 32 goods without improper motive.
Given the facts that firkin is not a common word, that it denominates a unit of imperial measurements now obsolete in Australia, and that the opponent has produced no examples to show that firkin has currency in the Australian beverage or brewing industry, I consider that the opponent has not established the first ground. It has not shown that firkin is a term ordinarily used to indicate quantity or any other characteristic of the goods. At most, there may be an element of doubt concerning the possible future of the word firkin, for it is not beyond the bounds of possibility that the meaning of the word could be re-written in metric values if popular usage of firkin was to experience an upsurge. Should that happen, firkin would no longer be adapted to distinguish. However, in light of evidence which shows that firkin is only rarely used, and that its current meaning is attached to an outdated measuring system, I am not satisfied that there is a ground under section 41 for rejecting it. Therefore I find that the opponent’s first ground is not made out.

The second and third  grounds - section 42 and 43

Mr Pollock then made reference to the second and third grounds, namely, that use of the trade mark would be contrary to law; and that use of the trade mark in relation to the applicant’s goods would be likely to deceive or cause confusion because of some connotation that the trade mark has.  Nothing has been put forward to support these claims, and I agree with Mr Pollock that as opposition grounds, they have not been made out.

Decision

The only matter of any substance to emerge from the notice of opposition is the question of whether the mark is capable of distinguishing. I have found that firkin is a term which is not ordinarily used to describe quantity. I therefore find that it is inherently adapted to distinguish and that there is no reason to reject this trade mark application under the terms of section 41. I therefor dismiss this opposition. Subject to any appeal, the application is to proceed to registration.
Mr Pollock sought costs. The trade mark applicant  is the successful party, and there is no reason why it should not have these costs.  Accordingly I award costs in the matter of this opposition proceeding to Allied Domecq Retailing.

Helen R. Hardie
Deputy Registrar
16 October, 1997