Austin Nicols and Co. Inc v Heather Jean McKelvey

This matter concerned an opposition to a trade mark application brought by Heather Jean McKelvey (the opponent) against Austin Nicols and Co. Inc. (the applicant). The opponent had cited several grounds for opposition under the relevant Act, but at the hearing, submissions were limited to grounds under sections 42(b), 44, and 60, with the remaining grounds being treated as abandoned. The decision was made by Debrett Lyons, a Hearing Officer.

The primary legal issue before the court was whether the applicant's proposed trade mark, BUSH TURKEY WINE, should be rejected for registration. Specifically, the court had to determine if the applicant's mark was substantially identical with, or deceptively similar to, an earlier registered trade mark owned by the opponent, and if the goods in respect of which the marks were used were similar or closely related. The opponent also needed to establish that its earlier trade mark had a priority date that was earlier than that of the applicant's mark.

The Hearing Officer reasoned that the opponent bore the onus of establishing its grounds of opposition on the balance of probabilities. After considering the evidence, the opponent focused on its registered trade mark, WILD TURKEY, registered in class 33 for "wines, spirits and liqueurs" since 1981. The Hearing Officer found that while the marks were not substantially identical, they were deceptively similar. This finding, coupled with the similarity of the goods and the earlier priority date of the opponent's mark, meant that the opponent had successfully established its case under section 44 of the Act.

Consequently, the Hearing Officer ordered that the applicant's application for registration be refused. The applicant was also ordered to pay the opponent's costs according to the official scale. The refusal was to take effect one month from the date of the decision, unless an appeal was filed, in which case the refusal would be stayed pending the outcome of the appeal.