Antonio Tricarico v Dunn Bay Holdings Pty Ltd

[2010] ATMO 109

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Antonio Tricarico to registration of trade mark application 1282656(43) - MALTMARKET BAR & KITCHEN - filed in the name of Dunn Bay Holdings Pty Ltd.

Delegate:	Alison Windsor
Representation:	Opponent:  David Stewart of Wrays Lawyers Applicant:  Thomas Hobday of Lewis Blyth & Hooper, Barristers & Solicitors
Decision:	2010 ATMO 109 S52 opposition – ss 41 and 44 – neither ground of opposition established – opposition unsuccessful – costs awards against opponent.

Background

1. Dunn Bay Holdings Pty Ltd (‘the applicant’) filed an application to register a trade mark on 9 February 2009.  The trade mark applied for is MALTMARKET BAR & KITCHEN, and it has been applied for in Class 43 in respect of ‘taverns’.

2. The application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’) and as no grounds for rejecting it were identified, it was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 11 June 2009.

3. Antonio Tricarico (‘the opponent’) filed a notice of opposition to the registration on 17 August 2009. The notice nominated only two grounds of opposition being those under sections 41 and 44 of the Act. In respect of section 44, the notice referred to a registered trade mark, current details of which follow:

   Registration number: 1218229
   Owner:             Emerald Lane Pty Ltd (‘Emerald Lane’)
   Registered from:                   7 January 2008

   Services:Class 35:  Event management services; promotion (advertising) of concerts; promotional advertising services; promotional marketing; promotional services; advertising

   Class 41:Entertainment including the arrangement of entertainment, live entertainment production services, disc jockey performances; event management services (organisation of entertainment, music or cultural events); advisory services relating to entertainment; club entertainment services; dissemination of entertainment material; music concert services; music festival services; management of entertainment events; organisation of musical events; arranging of entertainment; arranging of musical entertainment; arranging of parties; concert services; entertainment; live band performances; live entertainment; live music services; management of concerts; management of entertainment events; management of entertainment services; music concert services; night club services; organisation of entertainment events; organisation of live shows; organisation of parties; presentation of live performances; provision of entertainment facilities; provision of live entertainment

   Class 43:Arranging for the provision of food; arranging for the provision of drink; bar services; services for providing drinks; night club services (drinks); provision of a venue for events and functions; taverns; cafe services; cafes; cocktail lounge services; club services for the provision of food and drink; night club services (provision of accommodation), night club services (provision of food); restaurant services; wine bar services

   Trade mark:  Malt Lounge

4. Evidence in support and in answer was provided in due course and, the opponent having requested a hearing, the matter was set down to be heard.  I was delegated to hear the parties in Perth on 19 August 2010.  David Stewart of Wrays Lawyers appeared for the opponent.  Thomas Hobday of Lewis Blyth & Hooper, Barristers & Solicitors appeared for the applicant.

   Evidence

5. The declarations provided as evidence are listed in the following table:

Declarant	Position	Made	Exhibits
Evidence in support
Antonio Tricarico	Director of Emerald Lane Pty Ltd	30 July 2009	1 to 6
Antonio Tricarico	As Above	17 December 2009	AT-1 to AT-4
Joanne Sandstrom	General Manager of Club Capitol	17 December 2009	N/A
Evidence in Answer
Terry Edward Cornelius	Director of Dunn Bay Holdings Pty Ltd	21 June 2010	N/A

Evidence in support

1. The first Tricarico declaration states that Emerald Lane is the owner of registration 1218229, for the trade mark MALT LOUNGE. Otherwise, it consists largely of legal arguments in respect of sections 41 and 44 of the Act. It also refers to the opponent’s attempts via solicitor’s letters to cause the applicant to cease use of its trade mark and also of the term ‘Maltmarket lounge’.

2. The second Tricarico declaration provides information about Emerald Lane’s intention to use the trade mark MALT LOUNGE, subject of registration 1218229, in respect of a licensed lounge bar business.  At the time the declaration was made in December 2009, that business had not commenced trading.  Exhibit AT-3 to the declaration consists of a letter from Mr Chris Arrell, managing director of Hospitality Total Service Pty Ltd, the company which assisted Emerald Lane in lodging its various applications with the City of Stirling and the Department of Racing, Gaming and Liquor.  Emerald Lane could not begin trading until such time as these entities had provided the appropriate permissions for building renovations and liquor serving licences.  Mr Arrell states that the reason trading had not commenced by the applicant’s filing date was because of matters beyond Emerald Lane’s control.

3. The declaration also refers to a meeting which was held on or about 11 November 2009 where a sales representative employed by an major beer manufacturer indicated that she had mentioned to the applicant that Emerald Lane intended to develop a licensed venue under the name ‘Malt Lounge’ or ‘Malt Supper Club’.  Reference to this meeting is confirmed in the Sandstrom declaration, as Ms Sandstrom was also at that meeting.  Neither declaration has provided a date at which the sales representative made mention to the applicant of Emerald Lane’s intentions in respect of its venue name.

   Evidence in answer

4. The Cornelius declaration provides some brief information about the applicant’s business.  It says that Maltmarket Bar and Kitchen is a tavern located in Dunsborough, a town approximately 250 kilometres south of Perth.  The trade mark was first used in August 2009 in respect of what can broadly be described as ‘tavern services’ – that is, the sale of food and drink, and especially a range of beers.  Advertising figures are included in the declaration.  These show relatively modest marketing expenses, and also demonstrate that the applicant is advertising its business mainly in local newspapers and publications.

   Onus

5. The onus is on the opponent to establish a ground of opposition in order to succeed.  The standard of proof is that of the balance of probabilities.[1]

   [1] [1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

   Discussion and reasons

6. As noted previously, only two grounds of opposition were nominated on the notice of opposition. These were the grounds relevant to section 41 and section 44 of the Act. I will discuss them in numerical order.

   Section 41 – trade marks not capable of distinguishing

7. Section 41 of the Act specifies that 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 from the goods or services of other persons.

8. The opponent’s evidence and submissions in respect of section 41 are neatly summed up in the following quotation from its written submissions:

   The Applicant’s Mark is not inherently capable of distinguishing the Applicant’s venue because it is so similar to the Malt Trade Marks[2] that consumers will not be able to distinguish the services of the Applicant from the services of the Opponent.

   [2] This is a reference to both the already noted registration, and to registration 1284893 (MALT SUPPER CLUB) which has a priority date of 12 February 2009, three days later than the application.

9. The opponent’s argument is that the word ‘malt’ is the essential component of the applicant’s trade mark, and of its own trade marks. The endings of all the trade marks, being the words ‘market’, ‘bar & kitchen’, ‘lounge’ and ‘supper club’ are, the opponent contends, mere descriptions of the nature of each establishment. I infer from this that the opponent considers that these descriptive components should be substantially, if not completely, discounted when considering the application for the purposes of section 41.

10. However, the matter of a comparison between the applicant’s trade mark and those of the opponent is more properly conducted under the provisions of section44, and that is where I will consider it. That aside, I will now consider whether the applicant’s trade mark meets the requirements of section 41 of the Act.

11. In deciding whether a trade mark is capable of distinguishing the applicant’s services, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the relevant services from those of other traders:  see subsection 41(3). 

12. Inherent adaptation to distinguish is a quality within the trade mark itself, and is not something which can be acquired through use or any other circumstances.  In the Whopper case,[3] Gibbs J said of the concept of inherent adaptation to distinguish:

    Inherent adaptability is something which depends on the nature of the trade mark itself - see Clark Equipment Co v Registrar of Trade Marks [(1964) 111 CLR 511 at 515 - the Michigan case] - and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.

    [3] Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 424

13. Considering ‘the nature of the trade mark itself’ means considering the trade mark as a whole when deciding on its level of inherent adaptation to distinguish.  The trade mark applied for may include descriptive material as well as inherently distinctive material.  It is the combination of all its features into the trade mark subject of the application which determines exactly what must be considered when looking into its nature.

14. In this case, the trade mark consists of the words ‘Maltmarket Bar & Kitchen’.  I have been unable to find a definition of the word ‘maltmarket’ in either the Oxford or Macquarie dictionaries.  A Google® search for the term in an effort to find a definition was likewise unsuccessful, though it did reveal the applicant’s website. 

15. However, via the Google® search I was successful in finding a definition for the expression ‘malt market’.  This expression generally refers to the commodity market for malted grains, mainly barley, designed for use in the brewing, distilling or vinegar-making industries.  This expression, however, is not the exact word appearing in the applicant’s trade mark and when considering its dictionary meaning in relation to the services claimed, it is not a term that other traders are likely to desire to use. 

16. The standard test for determining whether a trade mark is adapted to distinguish is set out at length in the words of Kitto J in the Michigan case[4] from which the following words are taken:

    [T]he question whether a mark is adapted to distinguish [must] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

    [4] Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 at 513

17. I am satisfied that the applicant’s trade mark, when viewed as a whole and considered under the usual tests for adaptation to distinguish, is inherently adapted to distinguish the applicant’s services from those of other traders. I am satisfied that other traders do not have any legitimate need to refer to their tavern services, or to services which are the same as or similar to tavern services, by use of the words “Maltmarket Bar & Kitchen”. The ground of opposition under the provisions of section 41 has not been established.

    Section 44 – identical etc trade marks

18. This section of the Act involves comparing trade marks the subject of new applications with trade marks which have earlier priority dates, and which are either registered or pending registration. If an application is to offend under the provisions of section 44, it must be substantially identical with or deceptively similar to a trade mark owned by another party which has both an earlier priority date and is claiming the same or similar services. All these requirements must be met – if not all are met, then the provisions of section 44 do not apply.

19. The opponent’s trade mark which is relevant to this comparison is registration 1218229 – ‘Malt Lounge’.  This registration has a priority date of 7 January 2008, some 13 months prior to the application’s filing date.  Both application and registration cover the same or similar services in class 43.

20. The remaining factor to be considered is the similarity of the trade marks. 

21. The accepted test for substantial identity is that articulated by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

22. On a side by side comparison there are some similarities between the trade marks, but the overall impression is one of difference rather than similarity.  I am satisfied that the trade marks are not substantially identical.

23. Deceptive similarity is defined in section 10 of the Act as:

    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.

24. The test for deceptive similarity is a different test, also set out in the Shell decision quoted previously: 

    On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

    Therefore the comparison is the familiar one of trade mark law. It 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 impressions that such persons would get from the defendant’s television exhibitions.

25. French J restated the matters to be considered when assessing deceptive similarity in the Woolworths Metro[5] case:

    [5] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624)

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, 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 The Bali Company Inc (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.”

26. The portion of the trade marks which is held in common, and which the opponent submits is likely to cause confusion between them, is the word MALT.  This word is one with a very relevant meaning in the fields of beers and whiskies.  Both applicant and opponent run businesses which they both state make a feature of the sale of beers and the word ‘malt’ is thus a relevant and easily understood reference to those goods. 

27. However, in the applicant’s trade mark the word ‘malt’ forms a relatively small portion of the trade mark as a whole.  It appears as the first part of the word ‘maltmarket’, not as a word on its own.  Its relevance in respect of beer or malt spirits is somewhat reduced because of the way it is used within the trade mark.  Similarly, the likelihood of any connection being assumed between applicant’s and opponent’s trade marks is also reduced by the inherent differences in appearance and meaning of the words ‘malt’ and ‘maltmarket’.  In this circumstance, I am satisfied that it is unlikely to be seen as connected in any way with trade marks such as ‘Malt Lounge’ or ‘Malt Supper Club’. 

28. I am not satisfied that there is a real tangible danger of confusion between the applicant’s and opponent’s trade marks, a requirement before the trade marks could be seen as deceptively similar. I am thus satisfied that the trade marks are not deceptively similar, and that the opponent has not established the ground of opposition in respect of section 44.

    Decision

29. The opponent has not established either of the grounds of opposition it nominated and pursued.  The opposition is therefore unsuccessful.  Trade mark application number 1282656 may proceed to registration after 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.

    Costs

30. The applicant has been successful in this matter and is entitled to its costs.  I award costs against the opponent according to the official scale.

    Alison Windsor
    Hearing Officer
    Trade Marks and Designs Hearings
    2 November 2010