Allied Domecq v Carlton and United Breweries Limited

Carlton and United Breweries Limited (the opponent) opposed an application by Allied Domecq Retailing Limited (the applicant) to register the word mark "firkin" in class 32 for various beverages. The opposition was based on three grounds: that the mark was not capable of distinguishing the applicant's goods, that its use would be contrary to law, and that its use would be likely to deceive or cause confusion due to its connotations. Neither party filed evidence, and the matter proceeded to a hearing before a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the trade mark "firkin" was capable of distinguishing the applicant's goods from those of other persons, as required by section 41 of the *Trade Marks Act 1995*. The delegate also considered the grounds that the use of the mark would be contrary to law and likely to deceive or cause confusion, as provided by sections 42 and 43 respectively.

The delegate reasoned that the word "firkin" is defined in dictionaries as a unit of capacity, specifically a small cask or a quarter of a barrel, and is an imperial measure no longer in authorised use in Australia. While evidence suggested the term is still used in the UK brewing industry, it was not considered to be in common Australian usage. The delegate concluded that, as "firkin" is not ordinarily used to indicate the kind, quality, quantity, or other characteristics of goods, it is inherently adapted to distinguish the applicant's goods. The opponent failed to provide evidence demonstrating that other traders would likely wish to use the term or that it had significant currency in the Australian beverage industry. Consequently, the delegate found that the first ground of opposition was not made out. The second and third grounds were dismissed due to a lack of supporting evidence.

The delegate dismissed the opposition and awarded costs to the applicant, Allied Domecq Retailing Limited. The trade mark application was to proceed to registration, subject to any appeal.