Australian Grape and Wine Authority v Yi Li - [2018] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Grape and Wine Authority to registration of trade mark application 1749818 (33) - MEDAL - in the name of Yi Li

Delegate:	Aaron Walters
Representation:	Opponent: No submissions made Applicant: No submissions made
Decision:	2018 ATMO 79 *Opposition under section 52 of the Trade Marks Act 1995* – grounds under sections 41 and 43 of the Act – Section 41 established – trade mark registration refused.**

Background

On 3 February 2016, Mr. Yi Li (‘the Applicant’) filed an application for the following trade mark:
Application number: 1749818
Trade Mark: MEDAL
(‘the Trade Mark’)
In respect of the following goods:
Class 33:
Dry sparkling wines; Fortified wines; Mulled wines; Non-sparkling wines; Sparkling fruit wines; Sparkling wines; Still wines; Vintage wines
(‘the claimed goods’)
The Trade Mark was examined as required under s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’), and advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 23 June 2016.
On 22 August 2016, the Australian Grape and Wine Authority (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark. A Statement of Grounds and Particulars (‘SGP’) followed on 22 September 2016 which outlined two grounds of opposition under ss 41 and 43 of the Act. The Applicant filed a Notice of Intention to Defend on 28 October 2016.
The Opponent filed its Evidence in Support in February 2017 and no further evidence has been provided by either party. No request to be heard was made and neither party has provided submissions for me to consider.

Authority to decide the matter

As a delegate of the Registrar of Trade Marks,[1] I provide the following reasons for the decision that follows, which is made under s 55(1) of the Act based solely on what is contained in the SGP and the Opponent’s Evidence in Support.
[1] Pursuant to s 206(2) of the Act.

Evidence

The evidence in question consists of the following:

Statutory Declaration made by Rachel Jane Triggs, General Counsel and Registrar of Geographical Indications and Other Terms of the Opponent, made on 3 February 2017, with Exhibits RJT-1 to RJT-22 (‘Triggs’).

Grounds of Opposition and Onus

The Opponent relies upon both of the nominated grounds in the SGP. To succeed, the Opponent need only establish one of these nominated grounds.[2] As will be seen below, I have determined the Opponent has successfully established opposition under s 41 of the Act. Accordingly, I have found it necessary to address this ground only. Should this decision be appealed to a prescribed court, it nevertheless remains the prerogative of the Opponent to pursue their s 43 ground or any other ground available to them under the Act.
[2] Section 55(1) of the Act.
The onus of proof rests with the Opponent,[3] with the standard being the civil standard on the balance of probabilities.[4] The rights of the parties are to be determined as at the date of filing of the Trade Mark, being 3 February 2016 (‘the relevant date’).[5]

Discussion

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[4] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132].

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592, 595.

The Opponent

The Opponent is a federal statutory authority, established prior to the relevant date pursuant to s 6 of the (now superseded) Australian Grape and Wine Authority Act 2013 (Cth) (‘the AGWA Act’).
Ms Triggs says the Opponent is the sole statutory body for servicing Australia’s grape and wine community and bears responsibility for research, development and marketing, as well as the regulation of the Australian wine industry.[6] She refers to ss 7 and 8 of the AGWA Act which set out a broad range of functions and powers available to the Opponent for the pursuance of its statutory purpose, the scope of which I accept would include commencing an opposition to the registration of the Trade Mark.[7]
[6] Triggs, paragraph 6.
[7] Triggs provides the relevant functions and powers available to the Opponent, and as they pertain to this opposition, in paragraphs 7 and 8 of her declaration.
I am aware that since this opposition commenced the AGWA Act has been superseded by the Wine Australia Act 2013 (Cth) (‘the WA Act’). I note that s 6 of the WA Act continues the existence of The Australian Grape and Wine Authority, but under the name Wine Australia. Other than the Opponent’s change of name, the effect this has on the current opposition is minimal since, as noted above, the rights of the parties are determined as of the relevant date. Furthermore, the relevant functions and powers of the Opponent under the AGWA Act remain unchanged in the WA Act in any event.

Section 41 – The principles

Section 41 of the Act is set out below:

41 Trade mark not distinguishing applicant’s goods or services

(1) 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 (the designated goods or services) from the goods or services of other persons.

Note: For goods of a person and services of a person see section 6.

(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3) This subsection applies to a trade mark if:

(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4) This subsection applies to a trade mark if:

(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii) the use, or intended use, of the trade mark by the applicant;

iii) any other circumstances.

Note 1: 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, geographical origin, or some other characteristic, of goods or services; or

(b) the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

As s 41(1) indicates, an application may only be rejected if it is “not capable of distinguishing” the designated goods or services and s 41(2) says that this will only be the case if either s 41(3) or (4) applies. Whether ss 41(3) or (4) applies depends in turn upon whether, and if so to what extent, the mark in question is “inherently adapted to distinguish” those goods or services.[8] The necessary considerations to be applied for determining whether a sign is inherently adapted to distinguish one’s goods or services from those of another are well established under Australian case law. The seminal and oft quoted test is found in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’), where Kitto J explained:
… the question whether a mark is adapted to distinguish 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[9]
[8] Unilever Plc v Beiersdorf AG [2017] ATMO 25, [45]
[9] [1964] HCA 55; (1964) 111 CLR 511, [5]
His Honour reached this conclusion after having approved of, inter alia, the decision of Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), who said of a distinctive trade mark, that it’s registrability should:
… largely depend on whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark merely resembling it, upon or in connection with their own goods.[10]
[10] [1913] AC 624, 635.
More recently, the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’) discussed the test to be applied.[11] The joint majority considered with approval the test by Kitto J in Clark Equipment and noted:
In Burger King [Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 at 424-425], Gibbs J applied Kitto J's test to a directly descriptive word when his Honour declined to find "WHOPPER" registrable… in respect of hamburgers. His Honour explained that "whopper" is not "inherently adapted" to distinguish hamburgers because it is an ordinary English word, apt to describe a characteristic of hamburgers, namely their size, and moreover could be used in a laudatory sense. It is because of the ordinary signification or meaning of the word "whopper" to anyone concerned with hamburgers that a rival trader might, without improper motive, desire to use "whopper" to describe that trader's hamburgers.[12]
[11] [2014] HCA 48; (2014) 254 CLR 337.
[12] Ibid, [58]. Per French CJ, Hayne, Crennan and Kiefel JJ.
While concerned with the distinctiveness of foreign words, the majority judgment in Cantarella is still relevant to English words. In particular, their Honours provided:
It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[13]
[13] Ibid, [59].
Further discussed by the joint majority in Cantarella:
… the consideration of the "ordinary signification" of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has "direct" reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the "ordinary signification" of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods… Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.[14] [Citations omitted]
[14] Ibid, [71].
Therefore, to reach a conclusion on whether the Trade Mark is inherently adapted to distinguish the claimed goods, one must first consider the Trade Mark’s ordinary signification, before enquiring into whether another trader might have a legitimate need to use it in relation to those goods.
Of import, and noted earlier, is the Opponent’s onus to establish its ground of opposition. However, its onus under s 41(4) or s 41(3) of the Act is effectively limited to satisfying me that the Trade Mark is not sufficiently adapted to distinguish the claimed goods so as to qualify for registration on that basis alone.[15] Even should the Opponent succeed in discharging their onus in relation to s 41(4), the Applicant may still achieve registration provided he shows that the combined effect of the extent of the Trade Mark’s inherent adaptation to distinguish, its past and future proposed use and any other relevant circumstances are such that the Trade Mark does or will in future distinguish the claimed goods. Alternatively, if the Opponent satisfies me that the Trade Mark is not to any extent inherently adapted to distinguish the claimed goods such that s 41(3) is triggered, of course then the Applicant would be obliged to establish that the Trade Mark had been used to such an extent before the relevant date that it did in fact then distinguish the goods.
[15] Pacific Magazines Pty Limited v Bauer Consumer Media Limited [2015] ATMO 69, [16].
That being said, no such evidence has been put forward by the Applicant in this matter. Therefore, should the Opponent discharge its onus (whether under s 41(3) or (4)), it will have effectively succeeded in establishing its ground of opposition under s 41 of the Act.

Application of Section 41

I think it pertinent to begin by offering the following observations in relation to the Trade Mark:

The Trade Mark features the plain word MEDAL and is devoid of any fanciful stylization, get-up or accompanying device; and
The term ‘medal’ is defined in the Macquarie Online Dictionary[16] as:
noun 1. a flat piece of metal, usually in the shape of a disc, star, cross, or the like, bearing an inscription, device, etc., issued to commemorate a person, action, or event, or given to serve as a reward for bravery, merit, or the like.
–verb (medalled or, US, medaled, medalling or, US, medaling)
–verb (t) 2. to decorate or honour with a medal: to medal the winners at a ceremony.
–verb (i) 3. to win a medal in a sporting competition: to medal at the Olympics
[16] Accessed at (

From its dictionary definition, the term ‘medal’ does not appear to have an obvious application to the claimed goods. However, the majority in Cantarella held the ordinary signification is “to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a ‘direct reference’ to the relevant goods.”[17] Additionally, the Full Federal Court in Primary Health Care Limited v Commonwealth of Australia (‘Primary Health Care’) noted:
Although the majority in Cantarella described that audience as “persons who will purchase, consume or trade in the goods”, that was not an exhaustive description. The majority went on to say that the ordinary signification of the trade mark to “any person in Australia concerned with the goods” is to be considered. However, the majority cannot be taken to suggest that any class of persons with some interest in the goods or services, no matter how remote, is to be considered.[18]
[17] Surpa, note 12.
[18] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [302].
On this point, Ms Trigg’s evidence is that:
16. The word MEDAL is widely used in the Australian wine industry:
16.1. to refer to, communicate or otherwise indicate an accolade awarded to a wine at a show or competition; and

16.2. as a generic and descriptive term to denote the quality and credibility of a wine by the reference to that wine having achieved a relevant accolade or award.

Although I do not have submissions from the Opponent, the SGP relevantly expands on this point:
The word MEDAL, in isolation, is a descriptive and generic term widely used in the Australian wine industry to refer to, communicate or otherwise indicate an accolade or award bestowed on a wine at a recognised wine show or competition.
It is a term used to denote the quality and character of a wine by reference to that wine having achieved a relevant accolade or award.
It is also a term that is purely descriptive of the form or nature of an award or accolade (i.e. being a “medal”).
…
The word or phrase MEDAL, in isolation, is not, to any extent, inherently adapted to distinguish the Applicant’s designated Goods from those of other persons.
As mentioned, whether s 41(3) or s 41(4) applies will depend upon whether the Trade Mark is not to any extent (s 41(3)), or is to some extent, but not sufficiently (s41(4)), inherently adapted to distinguish the claimed goods.[19]
[19] Paraphrasing the Delegate’s summary of s 41 of the Act in Unilever Plc v Beiersdorf AG [2017] ATMO 25, [45].
The SGP makes clear the Opponent considers the Trade Mark is one which falls within s 41(3) of the Act. However, should the Opponent be unable to establish the Trade Mark is not to any extent inherently adapted to distinguish the claimed goods, this would not preclude a determination under s 41(4) of the Act.
The Opponent’s focus is on the term ‘medal’, which it is said, in isolation, is widely used in the Australian wine industry to denote high quality wine since it signifies receipt of a relevant accolade or award. To assist in understanding the signification of such medals, Exhibit RJT-9, being an extract taken from the Cellarmasters website (at ‘ dated 2 January 2017, is illustrative. It provides the following commentary:
Wine show medals – why they’re your guarantee of quality
Winning a medal or Trophy is a pretty big deal for most winemakers. Here’s why they’re so highly prized.
As a rule of thumb, less than 30% of all wines entered in a wine show will end up winning an award. The most prized are the Trophies and Gold, which are also the scarcest.
In nearly all shows the wines are judged in classes categorised by style, variety and vintage, which helps create a level playing filed. The wines are tasted “blind” by a panel of independent judges (made up of leading winemakers and wine experts).
Each judge awards scores out of 20 or 100 points, which are then tallied to arrive at a final number. Bronze medals awarded to all wines scoring between 15.5 and 17 points (85-89), Silver medals to all wines scoring 17 to 18.5 (90-95), and Gold medals to all wines scoring 18.5 and above (96 points and over).
There are usually more Bronze medals awarded than Silvers, and usually even fewer Gold. Trophies are then awarded to the very best wines in the show, which means only Gold medal winners are eligible.
So when a wine wins a medal you know it’s got to be good – and likely among the very best in its class.

Exhibit RJT-12 features an article from The Weekend Australian Magazine, dated 19-20 November 2016, which refers to an almost identical 100 point scoring system for determining wines of a gold, silver or bronze medal standard. According to this article, wines receiving a score of 95-99 are of a trophy or gold medal standard and are considered to be exceptional or outstanding. Those wines receiving 90-94 are of a silver medal standard and are wines of great quality, while wines of a bronze medal standard are scored between 86-89 and are considered well produced and flavoursome.
Medals are typically awarded during wine competitions (or wine shows) with a large number of these being held throughout Australia.[20] Exhibit RJT-17 shows close to 70 such events scheduled in 2017 alone. In being awarded a medal, a particular wine or winemaker may affix the competition specific ‘medal’ to the wine label so as to reflect and promote the fact of, and nature of, the medal received.[21] Exhibit RJT-3 provides numerous illustrations of the way in which such medals are presented on wine products. I have reproduced several examples below:
[20] Triggs, paragraph 19.
[21] Triggs, paragraph 20.

(‘the labelling examples’)

As I am not provided any explanation to the contrary, I accept that as a standard practice within Australia, a particular wine is entered into competition to be judged by an independent panel of expert judges. The wine is then scored, according to criteria relevant to its particular category and, should it score highly, will be awarded a medal to distinguish its quality. The level of distinction in medal, be it gold, silver or bronze, is determined by a set bracket of scores which is consistent throughout each competition and the industry.
While gold may be the most prestigious of the medals awarded, the commentary in Exhibit RJT-9 indicates that to “medal” at a wine competition is an achievement which indicates superior quality to a consumer. Exhibit RJT-18 features several examples of published research on wine consumer behavior, which measures the influence certain criteria, including awards or medals, have on consumer purchasing decisions.[22] The research indicates the presence of a (primarily gold) medal on wine labelling has an increased correlation in consumer preference and perceptions of quality. I note, for example, the following passage taken from the conclusions of Lockshin et al:
As we might have expected the addition of a gold medal to a wine label increases the level of its purchase. In almost all the graphs, the gold medal lines are above the no award lines… It seems that the adage in the wine industry of competing for and displaying gold medals has positive results… but the bronze medal has almost the same effect as no medal at all, leading to the conclusion that gold medals (and probably trophies) are the only things that count for most consumers.[23] [My emphasis in bold]
[22] Triggs, paragraph 21 and Exhibit RJT-18.
[23] L. Lockshin et al. ‘Using simulations from discrete choice experiments to measure consumer sensitivity to brand, region, price, and awards in wine choice’, Food Quality and Preference 17 (2006) 166-178, 175. Provided in Exhibit RJT-18.
I would note the Opponent mentions the Trade Mark is widely used in “the Australian wine industry”. However, the Opponent makes no express comment as to who constitutes the “Australian wine industry”. I am aware that Exhibit RJT-6, being an undated extract from the Burch Family Wines Blog, vaguely suggests the wine industry and wine consumers are distinct from each other. Even if such were conclusive on the evidence, I do not think this distinction bears significantly on the ordinary signification of the Trade Mark, particularly given the conclusions drawn on consumer behaviour contained in Exhibit RJT-18. I would also refer to Primary Health Care where it was stated:
It is logical that in determining the ordinary signification of the trade mark, the greatest attention would usually be given to the understanding of the classes with the closest and most direct concern with the designated goods or services (leaving aside the applicant for registration). This will often be rival traders or direct purchasers. It is also logical that the more remote the concern of a class, the less relevant will be the understanding of that class. Having said that, the ordinary signification of a trade mark is a question of fact for the Registrar (and the judge hearing an appeal against the Registrar’s decision).[24]
[24] [2017] FCAFC 174, [313].
Accordingly, I accept the evidence demonstrates the plain word ‘medal’ will have broad regard by producers, traders, purchasers and consumers of wine (‘the relevant audience’) for the competitive process and criteria by which medals of gold, silver and bronze are awarded to the claimed goods. Therefore, the relevant audience will understand the ordinary signification of the term ‘medal’ as it relates to wine to mean one which has qualities of winning a medal. Such understanding necessarily concerns a direct reference to the quality or value of the wine.
In so accepting, the enquiry becomes whether other traders have a legitimate need, one that is without improper motive, to use the term ‘medal’ in relation to the claimed goods. In Telstra Corporation Ltd and Another v Phone Directories Company Australia Pty Ltd and Others, the joint judgment of the Full Federal Court provides:
Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods… Evidence of other traders about their use of the mark, or something similar, seems to be admissible on the second question (Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 at 543-544 [102] per Kenny J), but would be considered in light of all of the evidence in the case. It is important to note the possible dual significance of such evidence. Evidence of other traders using the word yellow or the colour yellow in connection with their print and online directories could be evidence of the ordinary signification of the YELLOW mark and of the fact that other traders might want to use the word to describe their goods or services. [25]
[25] [2015] FCAFC 156; (2015) 237 FCR 388, [126].
Relevantly, Ms. Triggs makes the following statement:
It is general and accepted practice in the Australian wine industry for:
17.1. the word MEDAL to be used:

(a) on the bottle, packaging or other “get-up” of a wine which has been awarded a medal (or medals) at a wine competition or wine show;
(b) in promotional or marketing materials pertaining to an award-winning wine or selection of wines; and
(c) in describing an award-winning wine.

17.2. an award-winning wine to be described as having won a “medal” in reviews, wine lists, wine guides and/or industry journals and publications.[26]
[26] Triggs, paragraph 17.

The SGP claims the Trade Mark is one which:
Other persons and bodies in the wine industry and wine and grape community (not limited to other wine producers or suppliers), including the Opponent, without improper motive, will accordingly desire to use the word MEDAL in the ordinary course, including in the context of referring to or describing award-winning wines, with reference to recognised wine shows or competitions, and/or in the various contexts outlined above, and ought to be entitled to do so.
The labelling examples demonstrate the manner in which the term ‘medal’ can be used on the claimed goods. Clear from the examples is that it is used in combination with the words gold, silver or bronze as well as a corresponding disc of the respective colour. However, use of the Trade Mark it is not limited to use upon the goods but rather “upon or in physical or other relation to” the designated goods.[27]
[27] Section 7(4) of the Act.
There are numerous examples in evidence which Ms Triggs says are illustrative of the descriptive or generic manner in which the word ‘medal’ is used in promotional or marketing material, wine reviews and wine lists. Having reviewed these materials I would comment that many of the examples do indeed feature the word ‘medal’, though generally not in isolation.
For example, Exhibits RJT-4, RJT-6, RJT-7, RJT-10, RJT-13, RJT-14 and RJT-16 chiefly demonstrate use of the phrases “gold medal”, “silver medal” or “bronze medal” in relation to wine. Exhibit RJT-5, being a screenshot of wines available online through Wine Society (accessed at ‘ lists a number of purchasable wines under the heading “Medal Winners”. Similarly, Exhibits RJT-8 and RJT-11 refer to medal winning wines, with RJT-8 in particular listing 12 different “Medal Winning Wines” which it promotes as a “Medal winning dozen, all wines approved by wine show judges”.
Thus plain in a large portion of the Opponent’s evidence is use by other traders of the term ‘medal’ with additional context. Consequently, it could be concluded, albeit prematurely, that another trader may not need to describe the claimed goods simply as ‘medal’. On this point, I agree with the following from Conga Foods Pty Ltd (‘Conga Foods’)[28] where, in relation to the trade mark ASSORTI, being the French word for MATCHED, the Delegate reasoned:
The Applicant has submitted above ‘without additional context, indicating what the goods in question are matched to, no trader is likely to wish to describe goods simply as “matched”’. Trade marks by their very nature are used in connection with goods or services and do not exist in isolation. Words, too, generally do not appear in isolation, they are used within a context created by the surrounding words, if any, and/or the situation in which they are used. Such use may provide a context within which other traders are quite likely to wish to describe goods as ‘matched’ or ‘matching’.[29]
[28] [2018] ATMO 56.
[29] Ibid, [14].
In the current opposition, I consider the Opponent’s evidence does in fact demonstrate the context, created by the surrounding words, in which the word ‘medal’ is desired by, and indeed used by, other traders. In this way, Rares J in Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd (‘Centrefold’),[30] considered the ordinary signification of the term ‘centrefold’, in relation to adult entertainment services. His Honour, in finding the word was not, to any extent adapted to distinguish, determined:
… Providers or performers in the adult entertainment services trade and the consuming public would understand the word “centrefold” to contain a direct reference to the description of the kind, quality or characteristic of a person who provides the services, namely that he or she is (or was) a centrefold or has qualities or characteristics like one.
Other traders in the field of adult entertainment services will legitimately and routinely wish to use the word “centrefold” in respect of, and to describe, their services: Cantarella 254 CLR at 361-362 [71]. This suggests that the attempt to claim “centrefold” as a mark to give [the respondent] a monopoly over its use must fail.[31]
[30] [2017] FCA 1249.
[31] Ibid, [97]-[98].
Likewise, having regard to the ordinary signification of the Trade Mark, I have determined the Opponent’s evidence demonstrates the relevant audience would understand the word ‘medal’ to be a direct reference to the quality of the wine it refers to. However, unlike in Centrefold, I am unconvinced the Opponent’s evidence should lead me to conclude the Trade Mark is not to any extent inherently adapted to distinguish the claimed goods such that s 41(3) of the Act would come into play.
The additional context, referred to above, in which the word ‘medal’ is used, cannot be overlooked and is prevalent in the Opponent’s evidence. Parallels can be drawn to the matter in F H Faulding & Co Ltd v Imperial Chemical Industries &c. Ltd (‘Barrier Cream’), where Kitto J relevantly observed of s 56 of the Trade Marks Act 1955 (Cth), being the equivalent of s 24 the Act: [32]
The language of the section makes it necessary, I think, to distinguish carefully between, on the one hand, a word which in well-known and established use is employed as a descriptive epithet in conjunction with a substantive, so that only the composite expression is used as the name or description of an article or substance, and, on the other hand, a word which in well-known and established use is employed "as", i.e. as constituting by itself, the name or description of an article or substance… The evidence which the learned Judge accepted and summarized in his judgment showed beyond question a well-known and established use of the whole expression Barrier Cream as the name or description of a kind or class of skin protective creams; but there is nothing in the evidence to suggest… that the word Barrier is used or has ever been used as the name or description. It is of course used descriptively, but that is not to say that it is used "as" the description, or even "as" a description.[33]
[32] Section 24 of the Act concerns registered trade marks that have effectively become generic because they contain or consist of a word that has become accepted as descriptive.
[33] [1965] HCA 72; (1965) 112 CLR 537, 554.
Windeyer J, in agreeing with Kitto J, stated:
To avoid taking particular trade names as illustrations, I simply give as examples of what I mean, pekinese when dogs are spoken of, burgundy when wine, and overalls when garments. The word "Barrier" could, I suppose, come into use in this way as the name or description of an article or substance, so that a person wanting some of that substance would ask in a pharmacy for a tube or a jar of barrier. But there is nothing to suggest that this has happened.[34]
[34] Ibid, 563.
Accordingly, I find that other traders will have a routine wish to use the word ‘medal’, though necessarily with additional context, to refer to, describe or promote wines which have either been awarded a medal, or reflect the quality of, a medal winning wine.
As such, I disagree with the Opponent that the Trade Mark is not to any extent inherently adapted to distinguish the claimed goods. However, as I have noted earlier, this does not preclude a determination under s 41(4) of the Act. Thus, for the reasons given above, I consider the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the claimed goods and that objection to the application under s 41(4) of the Act is indeed appropriate. Given the Applicant has filed no evidence of use, intended use or any other relevant circumstances, therefore, the Registrar is obliged to reject the application.

Decision

Section 55(1) of the Act provides:
Decision
(1) Unless subsection (3) applies to the proceedings, 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
The Opponent has succeeded in establishing the nominated ground of opposition under s 41 of the Act. Section 55(3) of the Act does not apply and as the Delegate of the Registrar I refuse to register trade mark application number 1749818.

Aaron Walters
Hearing Officer
Oppositions and Hearings
21 May 2018