Austin Nicols and Co. Inc v Heather Jean McKelvey

[2008] ATMO 86

TRADE MARKS ACT 1995

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

Trade Mark Application 1050100(33) – Bush Turkey Wine - in the name of Heather Jean McKelvey and Opposition thereto by Austin Nichols and Co. Inc.

Delegate:	Debrett Lyons
Representation:	Applicant:  Aiden Bryson Opponent: Sarah Holland of Counsel
Decision:	2008 ATMO 86 s. 52 opposition: section 44 established; trade marks deceptively similar.  Opposition succeeds. Costs:  applicant to pay opponent’s costs.

Background

1. Heather Jean McKelvey (‘the applicant’) filed an application to register a trade mark, current details of which appear below:

   Application number:              1050100

   Filing date:  12 April 2005  

   Services specification:          Class 33 : Wine         

   Trade mark:  Bush Turkey Wine

   (‘the trade mark’)

2. The trade mark was accepted for possible registration and advertised for opposition purposes on 11 August 2005 after which Austin Nichols and Co. Inc. (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.

3. The parties filed and served evidence in accordance with the Trade Mark Regulations 1995.  The matter then came before me, Debrett Lyons, as a delegate of the Registrar of Trade Marks, for hearing in Brisbane on 5 September 2008.  The opponent was represented by Sarah Holland of Counsel, instructed by Mallesons Stephen Jaques, Solicitors.  The applicant was represented by Mr Aiden Bryson.

   Notice of Opposition

4. The Notice of Opposition cites every ground of opposition available to the opponent under the Act however at the hearing the opponent limited its submissions to those grounds of opposition under sections 42(b), 44 and 60.  For the sake of completeness, I treat the remaining grounds of opposition as having been abandoned.

   The Evidence

5. The evidence in support of the opposition consists of the statutory declarations of Adam Tracy dated 7 November 2006 and Jo Adamo dated 19 December 2007.  The applicant’s evidence consists of the statutory declaration of Aiden Ian Bryson dated 26 June 2007.

   Submissions and Reasoning

   Onus

6. The opponent bears the onus of establishing its grounds of opposition.  The opposition will succeed if one of those grounds is established.  The standard of proof is the balance of probabilities (Blount v Registrar of Trade Mark (1998) 83 FCR 50; Rejfek v McElroy (1965) 112 CLR 517 at 521). It is logical to analyse the section 44 ground of opposition first.

7. Section 44 – earlier trade mark

8. So much of section 44 as is relevant to this matter is reproduced below:

   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.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   Note 3:  For priority date see section 12.

9. To establish its opposition under section 44, the opponent must therefore show the following:

   • a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
   • the trade mark(s) in the name of that other person must be in respect of similar closely related goods; and
   • the priority date of the trade mark(s) of that other person is (are) the earlier.

10. The opponent pointed to a number of its prior registered trade marks but it was registration 361152 which dominated submissions and which deserves my attention.  It was registered on 5 June 1981 (and so satisfies the final bullet point above) in class 33 for “wines, spirits and liqueurs” for the trade mark, WILD TURKEY.

11. It was not argued that the respective trade marks, BUSH TURKEY WINE and WILD TURKEY were substantially identical.  Instead, the opponent submitted that they were deceptively similar.

12. Section 10 of the Act defines a ‘deceptively similar’ trade mark as one that so nearly resembles another trade mark that it is likely to deceive or cause confusion.  Speaking of the differences between the words ‘deceived’ and ‘confused’, Richards J in Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty. Ltd. [1979] RPC 410 at 423 said:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and causing ‘confusion’ may go no further than perplexing or mixing up the minds of the purchasing public..... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

13. The test for deceptively similar trade marks was described by Windeyer J. in Shell Co.(Aust)Ltd  v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 415 in these words:

    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.

14. In Registrar of Trade Marks v Woolworths [1999] FCA 1020, French J. said at paragraph 50:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (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.

15. The bulk of the opponent’s evidence is directed towards proof that it has a reputation in the WILD TURKEY trade mark.  Whilst that fact is important for the purposes of section 60, under section 44 I must put the opponent’s claim to reputation in its trade mark from my mind[1].  Section 44 requires me to assume fair and normal use of the registered trade mark in relation to any of the goods covered by the registration[2] and requires me to decide whether the proposed use the applicant’s trade mark on its goods would be likely to deceive or cause confusion in the sense that its use will result in a number of persons being caused to wonder or entertaining a reasonable doubt whether it might not be the case that the two products come from the same source.

    [1] Pfizer Products Inc v Karam (2006) 70 IPR 599

    [2] Smith Hayden & Co’s Application (1946) 63 RPC 97 at 101 (Ch D)

16. Amongst other things, registration 361152 covers wine.  The applicant proposes to use its trade mark for wine.  Nothing, therefore, turns on a distinction between the goods.  Moreover, for the purposes of section 44, the word “WINE” contained in the applicant’s trade mark is wholly non-distinctive since the notional comparison of both trade marks is only in relation to wine.  The comparison therefore resolves to the words BUSH TURKEY and WILD TURKEY.

17. The opponent pointed to the commonality of the word, turkey, which it submitted was the distinctive element of both marks.  It submitted that the words “bush” and “wild” have similar meanings and that a bush turkey is indeed a wild turkey.  The applicant objected to the dissection of its trade mark and submitted that the bush or “scrub” turkey has bred in Australia for millennia and is a popular part of Australian bush lore and therefore to an Australian public is recognisably distinct from the term “wild turkey” which has no unique meaning to Australians.

18. As I indicated to the parties at the hearing, these are each respectable submissions, but I am also guided by decisions of the courts which have regularly been asked to decide whether trade marks which share visual or conceptual similarities are “deceptively similar”.

19. In Jafferjee v. Scarlett (1937) 57 CLR 115, Latham CJ in the High Court cited this passage from the UK Herschell Committee report:

    Two marks, when placed side by side, may exhibit many and various differences, yet the idea left upon the mind by both may be the same, so that a person acquainted with a mark first registered and not having the two side by side for comparison, might well be deceived if goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.

20. Later it was held by the High Court that where the common element in two marks is descriptive there is a heavy onus in establishing a likelihood of deception and that such common words must to some extent be discounted in considering whether the marks are deceptively similar: Cooper Engineering Pty Limited v Sigmund Pumps Limited (1952) 86 CLR 536 (RAIN KING andRAINMASTER).  But that is not the case here; the trade marks BUSH TURKEY and WILD TURKEY are both completely arbitrary when used in relation to wine and I am reminded more of the case of C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 where the Full Federal Court of Australia was asked to decide, on appeal, whether HILL OF GOLD was deceptively similar to HILL OF GRACE. The court said:

    There is no room for doubt, in general terms, about the test to be applied. In Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described it as follows:

    "But, in the end, it becomes a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

    In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight."

    Equally well known is the following passage from the judgment of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75; (1961) 109 CLR 407 at 415:

    "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."

    Windeyer J 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".

21. Further, the context of the use of the trade marks is to be considered.  This contextual comparison was stressed in the case of In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380, where Parker J said: 

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

22. Weighing the parties’ submissions and these authorities, I come to the conclusion that the trade marks at issue are deceptively similar.

23. Accordingly, I find that the opponent has established its case under section 44.

    Decision

24. Section 55 of the Act provides:

    Unless the proceedings are discontinued or dismissed, 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 opposition has been established on at least one ground.  Accordingly the application is to be refused 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 the application not be refused until the appeal has been decided or discontinued.

   Costs

2. I order that the applicant pay the opponent’s costs according to the official scale.

   Debrett Lyons
   Hearing Officer
   Trade Marks Hearings
   30 October 2008