B Seppelt & Sons Ltd and Tucker Seabrook (Aust) Pty Ltd v Blaxland Vineyards Limited

[2014] ATMO 88

TRADE MARKS ACT 1995

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

Re:Opposition by B Seppelt & Sons Ltd and Tucker Seabrook (Aust) Pty Ltd to registration of trade mark application 1510120(33) –  TANUNDA HILL Shiraz 2011 device - filed in the name of Blaxland Vineyards  Limited

Delegate:	Debrett Lyons
Representation:	Opponent:  Peter Wallis of Counsel instructed by whom Allens, Patent & Trade Mark Attorneys Applicant:  written representations only
Decision:	2014 ATMO 88 s52 Opposition: ss42(b),43,44,60 and 62(b) argued; s43 established – trade mark carries a deceptive or confusing connotation. Costs awarded against Applicant.

Background

1. On 23 August 2012, Blaxland Vineyards Limited (‘the Applicant’) made application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark shown below in respect of class 33 goods being “Wine; spirits (beverages); liqueurs”:

(‘the Trade Mark’)

1. The application was examined as mandated by section 31 of the Act and subsequently advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 20 December 2012.  Acceptance was subject to the following endorsement:

   It is a condition of registration that the trade mark will only be used in respect of wines produced predominantly from grapes grown in the Tanunda area.

2. On 20 March 2013, B. Seppelt & Sons Ltd and Tucker Seabrook (Aust) Pty Ltd (‘the Opponents’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark.  The Notice is broad in nature and includes the grounds under sections 42(b), 43, 44, 60 and s 62(b) which were argued by the Opponents at the hearing.

3. On 6 February 2014 the trade mark application was amended to remove the goods of “spirits” and “liqueurs” and currently the application simply covers “wine” (‘the Goods’).

4. As a delegate of the Registrar of Trade Marks I heard this matter in Melbourne on 15 July 2014.   Peter Wallis of Counsel instructed by Allens, Patent & Trade Mark Attorneys represented the Opponents.  Lesicar Maynard Andrews, Patent & Trade Mark Attorneys filed written submissions on behalf of the Applicant.

Onus and Relevant Date

1. The Opponents bear the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]  The date at which the grounds of opposition must be established is the date of filing of the application.[2]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

Evidence

1. The parties have served and filed the following evidence:

Evidence in Support:

Statutory Declaration by Owen John Malone made 20 June 2013

Evidence in Answer

Statutory declaration by Craig Thomas made 27 September 2013

Evidence in Reply

Statutory declaration by Sandra Elizabeth Forman made 9 January 2014.

Submissions

1. The Opponents submit that:

   By reason of the fame of CHATEAU TANUNDA as a brand for premium wine and brandy in Australia for more than 100 years, the word TANUNDA has become closely associated with those products in the minds of Australian wine consumers and hence with the producers thereof.  The word TANUNDA has therefore transcended the geographical connotation of being the name of the small township in the Barossa Valley in which the property known as 'Chateau Tanunda' is located.  The result is that the Applicant should not be permitted to obtain registration of a trade mark that includes the word TANUNDA.

   Even if the above proposition is not accepted, the word TANUNDA is generally understood as referring to a small township in the Barossa Valley.  Australian wine consumers would reasonably expect that a wine label that includes the word TANUNDA would be produced in (or from grapes grown in) that township, or at least very near to that township.  Australian wine consumers would also reasonably expect that a wine label that includes the words TANUNDA HILL would be produced on or near a hill in Tanunda or on or near a hill known as 'Tanunda Hill'. In fact, the Applicant’s wine is produced at its vineyard that is located approximately 11.5 kilometres away from the township in another part of the Barossa Valley, and further there is no topographical feature called 'Tanunda Hill' in the Barossa Valley.  The result again is that the Applicant should not be permitted to obtain registration of a trade mark that includes the words TANUNDA HILL.

   Based on the above alternative propositions, the opponent presses the following grounds of opposition:

   The Applicant’s Mark has a connotation (arising from the word “Tanunda” contained in the mark) that the goods the subject of the Application are either those of the Opponent (or produced with its authority) or made in the township of Tanunda and/or from grapes grown in the township of Tanunda, when this is not in fact the case, such that the use of the Applicant’s Mark in relation to those goods would be likely to deceive or cause confusion pursuant to s 43 of the TMA;

   The use of the Applicant’s Mark would be contrary to law pursuant to s 42(b) of the TMA because it falsely represents that the goods the subject of the Application are either those of the Opponent (or produced with its authority) or made in the township of Tanunda and/or from grapes grown in the township of Tanunda;

   The Registrar accepted the Application on the basis of a representation that was false in material particulars pursuant to s 62(b) of the TMA, namely that the Applicant’s Mark would be used in respect of wines produced predominantly from grapes grown in the Tanunda area, when the Applicant instead intended to produce wine from grapes grown in another area of the Barossa Valley;

   The use of the Applicant’s Mark would be likely to deceive or cause confusion pursuant to s 60 of the TMA because of the reputation that the Opponent had acquired in respect of the words CHATEAU TANUNDA before the priority date of the Applicant’s Mark; and

   The Applicant’s Mark is deceptively similar to the Opponent’s Marks, which have been registered since before the priority date of the Application in respect of the same goods, pursuant to s 44 of the TMA.

9. The particulars of the Opponents’ section 43 ground of opposition follow:

Section 43 of the TMA (read together with s 57 of the TMA) provides that the registration of a trade mark may be opposed if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to the goods in respect of which registration is sought would be likely to deceive or cause confusion. 

…

In Redbank Long Paddock Pty Ltd [2007] ATMO 37 the applicant sought to register the word REDBANK in class 33 in respect of wines. The applicant operated a winery known as REDBANK, which was located in a wine growing district near a small town in the Pyrenees in Victoria named “Redbank”. …

Hearing Officer Thompson accepted the application and noted that Redbank was only a small village.  He went on to conclude for the purposes of s 41 of the TMA:

“[32] The word ‘Redbank’ has, because of doubts over its true geographical significance, some slight degree of inherent capacity to distinguish as a trade mark but also doubts over its capacity to function as such.  The evidence shows that the extent to which the applicant or its predecessors in business have used the word as a trade mark is significant and the trade mark has acquired the capacity to distinguish the goods of the applicant.  Whatever the geographical significance of the word REDBANK, I believe that the evidence shows that it is widely known within the industry and amongst the public such that it has developed a secondary significance as denoting the wines of the applicant.”

Hearing Officer Thompson went on to conclude for the purposes of s 43 of the TMA:

“[35] However, where a trade mark has acquired capacity to distinguish goods or services, it has acquired a secondary meaning – as connoting the goods, rather than the geographical origin of the goods.  Thus, as the applicant has shown that the trade mark is in fact distinctive in relation to the goods, it appears to me that, in doing so, it has also addressed concerns that arise under section 43.”

In Griffin Pastoral Co Pty Ltd v Ralph Fowler Wines Pty Ltd, (2005) 68 IPR 171, Hearing Officer Thompson heard an opposition to an application to register the words FROG ISLAND in respect of wines in class 33. The opponent was the owner of a property that was known as “Frog Island”, due to the presence of an island on the property that was inhabited by frogs. The applicant produced wines at its property located approximately 35 kilometres away from the opponent’s property and decided to use the FROG ISLAND name after driving past the opponent’s property and observing the “Frog Island” name.

Hearing Officer Thompson held that the opponent had made out the ground under s 43 of the TMA and stated his reasoning as follows:

“[21] The words “Frog Island” have the flavour of being a geographical location – it is a term which would lead ordinary people to believe that the words used within the proposed trade mark refer to an actual place where the grapes might be grown or the wine produced.  The words are not, for example, of the same ilk as are the words “Pooh Corner”, or “Hill of Beans”, or “North Pole”.

[22] The words “Frog Island” within the opposed trade mark are, in short, ones which would readily suggest to people that the wines are produced at a property called Frog Island – this property is, in fact, uniquely associated with the opponent who produces wines.

[23] The use of the words “Frog Island” by the applicant is, hence, obviously a misstatement as to the source of the goods – thus, the use of the opposed trade mark by the applicant is likely to deceive or cause confusion.

[24] The opposed trade mark therefore contains a connotation which is likely to mislead or deceive.”

In the present case, the Opponent has filed substantial evidence that establishes that it enjoys a very strong reputation in respect of the words CHATEAU TANUNDA. Although there are other wineries within the township of Tanunda, none has a name that includes the word TANUNDA and none has produced wines with names that have included the word TANUNDA. As a result, the word TANUNDA has become closely associated with the Opponent and its wines. The transcendent nature of the words CHATEAU TANUNDA (and by extension TANUNDA) is indicated by the endorsements carried by the Opponent's registration nos 7078 of 18 January 1909 and 197758 also of 18 January 1909, which state 'The essential particulars of the Trade Mark are the following – the device and the words 'CHATEAU TANUNDA' which are not used or likely to be understood in a geographical sense'.

The Opponent submits that in the above circumstances, similar to the Redbank case referred to above, the word TANUNDA has acquired a secondary connotation of referring to the Opponent’s wines, such that the use by the Applicant of the Applicant’s Mark, which includes the word TANUNDA, would be likely to deceive or cause confusion. 

Alternatively, the Opponent submits that the evidence establishes that Tanunda is a small township located in the centre of the Barossa Valley. Maps showing the location of Tanunda within the Barossa Valley, the vineyard and property known as 'Chateau Tanunda' and the Applicant's vineyard, are Annexure A to these submissions.  There is no evidence to the effect that the word “Tanunda” is used to describe a broader area within the Barossa Valley than the township of Tanunda. The Chateau Tanunda is located within the township of Tanunda. The Applicant’s vineyard is located approximately 11.5km from the township of Tanunda, and is closer to other townships or regions in the Barossa Valley, including Seppeltsfield, Gomersal and Freeling.  Clearly the Applicant’s vineyard can only be properly described as being well outside what can fairly be characterised as 'the Tanunda area'.

In the above context, the inclusion of the word “Tanunda” in the Applicant’s Mark connotes a wine that is made in (or perhaps very near to) the township of Tanunda and/or that is made from grapes grown in (or perhaps very near to) the township of Tanunda.  The connotation, and likelihood of confusion, is reinforced by the use of the word “Hill” to form the phrase “Tanunda Hill”.  This connotes that the Applicant’s vineyard is located on a hill that is in the township of Tanunda, or at least that overlooks the township of Tanunda.  In fact, the Applicant’s vineyard is not on a hill at all, let alone a hill that is in or overlooking the township of Tanunda.  The Application therefore suffers from the same vice as the “Frog Island” application referred to above.  Unlike the beer that was the subject of the Bavaria case referred to above, there are no other words or devices in the Applicant’s Mark that would neutralise the connotation that the Applicant’s wines are made in or near Tanunda.

The fact that the connotation arises in this case, and the likelihood of deception or confusion as a result, is implicit in the examiner imposing a requirement on the Applicant to include the endorsement set out above. 

1. The Applicant submits that:

   The Applicant has developed several vineyards in prominent grape growing regions, including the Tanunda Hill Vineyard (“the Applicant’s vineyard”) in South Australia.  The Applicant’s vineyard is located six kilometres from the town of Tanunda, which is the most well-known and populous town in the area.  

2. So far as section 43 is concerned, the Applicant argues that:

   Possible connotations can include misuse or misdescription in connection with geographical indications or geographical references.  There may be a likelihood of deception or confusion if the origin of the wine is not as indicated by the trade mark.   

   Tanunda is not a geographical indication within the meaning of the Australian Wine and Brandy Corporation Act 1980, however it is the name of a town within the wine-producing region of Barossa and the sub-region of the Barossa Valley, which are registered GIs. 

   The Thomas Declaration indicates that the vineyard was named due to the close proximity to the town of Tanunda.  Tanunda is in fact the most populous town within the region, with a population of approximately 4000.  Tanunda is also well-known as an area containing many vineyards and is also a popular town for Barossa-based tourism, with the Barossa Visitor Information Centre being located within the town.  It is therefore well frequented by the general public and is well known as a wine-producing area.     

   The name Tanunda Hill was chosen to refer to this proximity, with the additional word Hill used to make the mark as a whole a distinctive and memorable trade mark to represent the vineyard and wine produced from that vineyard.  The Applicant maintains that Tanunda Hill is not purely descriptive and does act as a badge of origin for its wine produced from the Tanunda Hill Vineyard, but acknowledges that use of the word Tanunda refers to the geographical area of Tanunda within which the Applicant’s vineyard is located.   

   Even in the event that the words Tanunda Hill as a whole are considered to be descriptive, the Application as accepted is not for these words alone, but for a composite mark including other highly distinctive elements.  However, the Applicant acknowledges that the consumer would likely assume use of the word Tanunda in the Applicant’s trade mark indicates that the grapes were grown in the Tanunda area as specified in the endorsement.  It does not accept that the word Tanunda has any other connotation or that the word Tanunda is associated with any particular trader.

   The Opponents refer to the reputation of the Chateau Tanunda wine estate and the wines that it produces.  Reference is made to Ivivi Pty Ltd and its Director, Mr John Geber, who owns the Chateau Tanunda property and is responsible for the production and sale of wines under that label.  It is the Applicant’s understanding that Mr Geber and his company are solely responsible for the production of wine from the Chateau Tanunda property and use of the Chateau Tanunda trade mark is under license from the Opponents. 

   It is also the Applicant’s understanding that the Opponents produce no wine themselves nor have any direct involvement with the wine produced by Chateau Tanunda.  It is the Applicant’s understanding that the Opponents produce very small quantities of brandy, however not from grapes sourced from the Chateau Tanunda property or within the Tanunda area. The reference to the reputation and notoriety of the Chateau Tanunda trade marks in relation to the Opponents is therefore misleading, as any association would be with the property and its owner, John Geber, and not with the Opponents.   There has been no evidence submitted on behalf of Mr Geber. 

   In any event the Opponents contend in point 19 of their submissions that there is in fact a secondary connotation between the word Tanunda and the Chateau Tanunda wines.  However, any reputation, based on the evidence submitted, can only be for the conjunction of the words Chateau Tanunda.  There is no evidence that there has been any use of the word Tanunda solus by the Opponents or by Chateau Tanunda.  In fact the word Tanunda is not always used, with the winery often referred to as “The Chateau” on the Chateau Tanunda website and in bottle labelling. 

   The Opponents have indicated in point 19 of their submissions that Registration Nos. 7078 and 197758 contain an endorsement that ‘the words Chateau Tanunda’…are not used or likely to be understood in a geographical sense.’  This endorsement was recorded in 1909, prior to the commencement of the Trade Marks Act 1995 and is therefore not consistent with current trade mark law. 

   The fact remains that Tanunda is a well-known wine growing region and no amount of use by the Opponents or any third party in respect of the trade mark Chateau Tanunda is likely to transcend this geographical connotation.  The Opponents have provided no evidence that consumers associate the word Tanunda alone with their brand.  Rather, Tanunda is associated with the geographical area and consumers, upon seeing the word Tanunda, would only associate it with that geographical area and not with any particular winery or vineyard in that area.

   The Opponents have referred to two cases to support their submission.  The first is the “Frog Island” case, however the circumstances are not analogous to the present matter.  Firstly, in the Frog Island case the trade mark referred to a specific property where there were no other wineries, there was established evidence that the Applicant directly chose the name after seeing the specific property, and the two locations were 35 kilometres away.  In the present case, the Tanunda area contains many different wineries and is associated with being a wine-producing area, the Applicant chose to use the word Tanunda due to the geographical location, not due to the Chateau Tanunda winery, and the Applicant’s vineyard is only six kilometres from the town of Tanunda.  In addition, this case dealt with identical trade marks, wherein the present case the word Tanunda is used in conjunction with other words and distinctive elements in both trade marks. 

   The second is the “Redbank” case, which involved the common use of the word Redbank.  However, this case included evidence in the form of trade declarations detailing consumers likely to be confused, and evidence that the Applicant’s grapes were sourced from various regions other than the GI of the Pyrenees where the town of Redbank is located.  Neither of these circumstances apply in the present matter. There has been no evidence provided by the Opponent showing any likelihood of deception or confusion.  Tanunda is not a GI, and the Applicant’s vineyard is located in the same GI as the town of Tanunda, being the sub-region of the Barossa Valley. 

   In connection with the Opponents’ claim that the word Tanunda has acquired a secondary meaning, we refer to Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited (2013) FCA 563. This case dealt with the geographical location of Thredbo, and the claim by the Applicant that it had acquired a secondary connotation or independent reputation with their Thredbo brand. Despite substantial evidence, there was no secondary meaning or connotation to the Applicant found. As stated at 87:

   There is no question that KT has been responsible for the expenditure of many millions of dollars in developing the Resort and Thredbo Village. However there was no evidence adduced from members of the public concerning a distinction which they might have drawn between Thredbo, namely the geographic location, and the Thredbo Resort. Further, there is no evidence from the public to suggest that the public identifies ‘Thredbo’ as equating to the Thredbo Resort or Village.

   It was further stated that:

   The fact that ‘Thredbo’ is known as a place, and not merely the Village or KT’s Resort, disentitles KT’s claim that it has established a secondary meaning in the word ‘Thredbo’ so that it has the exclusive right to use such a word.

   This is analogous with the present matter, in which the Opponents are attempting to claim a secondary meaning to the word Tanunda.  As in the “Thredbo” case, no evidence has been provided that members of the public equate the town of Tanunda with the Chateau Tanunda property.  Furthermore, the town of Tanunda is generally known as a place quite outside of the Chateau Tanunda vineyard and therefore secondary meaning cannot be established.  As shown in the Thomas Declaration Tanunda is well known generally as the location of many vineyards as well as other cultural attractions.  It is therefore clear that the town of Tanunda is not particularly associated with the Opponents or the Chateau Tanunda property and no connotation can be claimed. 

   The Opponents also contend that the Applicant’s vineyard is located outside of the town boundaries of Tanunda, and therefore should not use the word Tanunda in their trade mark.  The Forman Declaration includes various documentation which purports to indicate that the “Tanunda area” is defined by the Council boundaries and a Google Map search. 

   Council boundaries should not be considered equivalent with the “Tanunda area” since these boundaries can be arbitrary and do not take into account what the average consumer would consider to be the “Tanunda area.”  The “profile area” represented in Exhibit SEF-1 refers to “Tanunda – Bethany and District” which indicated that the district already encompasses various townships, and also states that it includes “the localities of Bethany, Krondorf, Rowland Flat (part), Tanunda (part) and Vine Vale” (emphasis added) which seems to indicate that the district does not even encompass the entire township of Tanunda.  Furthermore, the Council boundary in Exhibit SEF-1 and the boundary defined on the Google map in Exhibit SEF-3 appear to be contradictory, with the Council boundary appearing to follow the line of the North Para River whilst the western edge of the boundary of the Google map is far beyond the river.  The Council boundary also extends much further south than the Google map to encompass Kaiserstuhl Conservation Park whereas the Google map boundary stops at Krondorf Road. 

   The Opponents take a narrow and contradictory view of what constitutes the “Tanunda area” equating the term to represent only the township of Tanunda and the council boundary.  However based on the maps they themselves have provided, there is no definitive boundary of Tanunda or what could be considered the “Tanunda area.”

   The Forman Declaration also indicates that the postcode for Tanunda (5352) is different to the postcode of Seppeltsfield (5355) and appears to assert that since the postcode applicable to the Applicant’s vineyard is different to the postcode for the town of Tanunda, that the trade mark is misdescriptive.  However this reasoning is flawed in that postcodes are merely sorting information for use by Australia Post: they do not govern what could be considered to be called the “Tanunda area,” particularly considering that postcodes can change over time and do not necessarily apply to specific geographical areas and the boundaries of those areas. 

   The “Tanunda area” does not necessarily conform to the strict boundary lines governed by the local Council, Australian postcodes or a Google Map search.  The Macquarie Dictionary defines “area” as: 1. Any particular extent of surface; region; tract.  2. Extent, range, scope.  This definition carries with it a fluid interpretation in that it can apply to any region, tract or scope of land and is not particularly defined by boundaries. 

   Tanunda is in fact the closest town of note to the Tanunda Hill vineyard.  The Opponents infer that the Applicant’s vineyard is geographically located in Seppeltsfield, however Seppeltsfield does not have the population nor amenities to classify it as a town. 

   In fact, Seppleltsfield is protected under Trade Mark Registration No. 41555 in the name of Southcorp Brands, despite it also being a geographical location.  The difference between the Southcorp brand and current scenario is that the only known premises located in and associated with Seppeltsfield is the Seppeltsfield Winery, whereas the town of Tanunda and the Tanunda area contains several wineries as well as a local community and other attractions and so the word Tanunda is associated with the town and geographical location itself rather than any particular trader or premise. 

   Given that Seppeltsfield is a registered trade mark, it would not be appropriate for the Applicant to have named their vineyard “Seppeltsfield Hill” even if they had wanted to.  In contrast to the Opponents, Southcorp Brands have obtained registration through use of the word Seppeltsfield solus, and so connotation can potentially be inferred between use of the word Seppeltsfield and Southcorp Brands.  The Opponents do not have a registration for the word Tanunda solus, nor have they provided evidence of reputation in the word alone and so cannot claim any such connotation between the Chateau Tanunda wine and the word Tanunda.    

   Tanunda is the largest, most populous and most well-known town in the area and is referred to as “the focal point” of the Barossa by the official tourism website The word Tanunda is representative of the grapes grown and wines produced in that area and it is therefore logical for the Applicant to use such a geographical name in their trade mark. The Applicant should be permitted to make use of the geographical name of the closest town to the Applicant’s vineyard and the name of the vineyard itself which was named long before the present application was filed.  

   The Opponents state that the Applicant’s vineyard is located “11.7 kilometres by road” rather than six as stated in the Thomas Declaration.  This distance is repeated in the Opponents’ written submissions, however calculation of this distance is misleading as the distance of six kilometres given in the Thomas Declaration refers to actual geographical distance, which when considering a general area of land is more useful than considering distance by road. 

   The distance of six kilometres is more precise in considering the proximity of the vineyard to the town of Tanunda, rather than the distance one would have to travel by road south away from Tanunda, west along Gomersal Road and north again to reach the Tanunda Hill vineyard as shown in Exhibit SEF-4 of the Forman Declaration.  The information contained in the Applicant’s original prospectus in Exhibit CT-3 of the Thomas Declaration, based on rigorous analysis of the property in that prospectus is more precise than GoogleMaps searches, which can be inaccurate.  

   However, even if the vineyard is considered to be located 11.7 kilometres from the township of Tanunda as the Opponents claim, it would still be classified as within the “Tanunda area”.  There is no precise distance defined by the reference to the “Tanunda area” because the use of the word “area” is intended to be encompassing rather than restrictive.     

   The Opponents also claim in point 21 that the Applicant’s vineyard is closer to the towns of Seppeltsfield, Gomersal and Freeling.  As stated above, Seppeltsfield cannot not be considered a town and does not contain any other vineyards than the one owned by Southcorp.  When viewing the map provided with the Opponents’ written submissions, it can clearly be seen that Tanunda is a large town with visible roads and buildings as compared to Seppeltsfield, Freeling and Gomersal, which are tiny in comparison.  Tanunda is no further away from the Applicant’s vineyard than Freeling, which is 13.4 kilometres by road. Nor is Freeling well known as a township with wineries or have the resonance with the consumer that Tanunda does.  Due to Tanunda’s popularity, it can be considered that the surrounding wineries, including the Applicant’s just a few kilometres away, is within the “Tanunda area.”

   The Applicant’s vineyard is close enough to the township of Tanunda to share the same soil properties, terrain, weather and other factors which influence the growing of grapes.  As it is, there are no specific wine or grape properties associated with the town of Tanunda which are not shared by the surrounding area where the Applicant’s vineyard resides.  The Opponents state in their written submissions that their vineyard is located within the actual town of Tanunda, however this is irrelevant.  The size and nature of vineyards and wineries are such that very few, if any, could be considered to be located within the actual township rather than the general surrounding area, which is why the endorsement simply requires that the grapes be grown in an “area” and not a specific town.   

   The Opponents acknowledge this in point 22 of their submissions.  Six kilometres can be considered to be “very near to” the township of Tanunda, particularly when there is no change in the soil, weather or other properties which affect the growing of grapes and Tanunda is the closest town of note.  Seppeltsfield, Gormersal and Freeling could only be considered hamlets or perhaps villages.  The general area can therefore be considered under the name of the largest and most well-known town, Tanunda.  

   The reference to Hill is the Applicant’s choice and is common within wine trade marks.  Consumers would not assume that the grapes are grown on any particular hill and therefore there is no confusion through use of this word.  The endorsement provided merely indicates that the grapes are grown within the Tanunda area, not that they are grown on a hill in the Tanunda area.  This is common in trade marks.  For example, there is a trade mark registration for Koonunga Hill (No. 625273) in Class 33 even though some of the wine sold under that label may not come from the Koonunga Hill vineyard and there is no location known as “Koonunga Hill” in the Koonunga area

   The Applicant’s vineyard itself is 220 hectares in size (2.2 square kilometres).  Therefore, the size of the vineyard is a third of the total geographic distance to the town of Tanunda.  The matter concerns very small distances and it is ludicrous to suggest that a vineyard located so close to the town of Tanunda could not be considered to be in the “Tanunda area.”

   There is no deception or confusion caused by the Applicant’s use of the word Tanunda in the trade mark Application, because the grapes used for the Applicant’s wine are correctly described as being grown in the Tanunda area.  This is not a case where, for example, the term Barossa is used when the vineyard is located in McLaren Vale, which has varying soil properties, terrain and weather to the extent that the resulting wine may have differing characteristics to wine produced in the Barossa.  The Applicant’s vineyard would produce similar grapes whether they were grown in the current location or within the Tanunda township, and therefore the connotation of the word Tanunda is correctly used by the Applicant to indicate to the consumer that the grapes are grown in close proximity to the town of Tanunda.   

Section 43

1. Section 43 provides:

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. The Courts have decided that section 43 deals with trade marks that have a misleading or confusing connotation which is inherent in the trade mark itself and not simply the product of confusion arising from the resemblance of the trade mark to a mark used by another.[3]  In Big Country Developments Pty Ltdv TGI Friday's Inc, [2000] 48 IPR 513, at 521, Wilcox, Kiefel and Emmett JJ commented in this manner upon the scope of section 43:

   The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43.

   [3] see Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 at [79] per Branson J.

3. Circumstances most clearly intended to be addressed by section 43 occurred in the VITAMIN[4] and ORLWOOLA[5] cases. In those cases, there was a danger the public might make a reasonable, but incorrect, assumption about a product based upon the trade mark, which could not easily be confirmed or discounted by even close inspection of the product.

   [4] J. Kitchen & Sons Pty LTD v Inman (1939) 9 AOJP 1383 (Reg).

   [5] Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.).

4. The connotation need not be limited to the physical character of the relevant goods.  The confusion might result from a connotation of the imputed trade mark of an association with unrelated person or business.  In Down to Earth (Victoria) Co‑Operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644 the Court said:

   … considerations under s43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to the character of the services (or goods) or the implied endorsement or licence of services (or goods) by a person or organisation.

5. Further, the Registrar’s delegate in Playboy Enterprises International v Auszan Pty Ltd (2006) 68 IPR 332 noted at page 337 that:

   [A] sign contained within a trade mark might contain a deceptive or confusing connotation if it resembles or signifies a particular sign which is so ubiquitous, of longstanding, or notorious that it has entered Australian parlance or is shown to have become accepted generally in Australia as connoting a particular person, entity or event or connoting a particular meaning (whether or not that particular sign has trade mark significance).   

6. Further, as noted by Lord Denning in Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at p174:

   … ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.

7. The evidence is that Tanunda is a small township of approximately 4000 inhabitants in the Barossa Valley in South Australia.  The Applicant’s statement that “[T]he fact remains that Tanunda is a well-known wine growing region and no amount of use by the Opponents or any third party in respect of the trade mark Chateau Tanunda is likely to transcend this geographical connotation” is misconceived.

8. There is nothing to controvert the evidence that the words CHATEAU TANUNDA have been used extensively by the Opponents, its predecessors and/or its licensees or authorised users since 1909 to indicate the trade origin of brandy products and, in more recent times, still and sparkling wines.  The evidence is plain that the winery known as “Chateau Tanunda” has operated in the centre of the town of Tanunda for more than 100 years. The Chateau Tanunda is an old and impressive building and from a reading of the evidence as a whole it is reasonable to conclude that it was already a landmark of considerable local significance when the town itself was in a nascent state.

9. What can properly be said is that Chateau Tanundra has long been associated in the public mind with local wine and brandy making in a region of the Barossa and under the ownership or control from time to time of one enterprise.  The evidence is that there are other wineries within the township of Tanunda, but none has a name that includes the word TANUNDA and none has produced wines with names that have included the word TANUNDA.  In short, whatever the geographical significance of the word TANUNDA, the evidence shows that the use of that term as part of the trade mark CHATEAU TANUNDA has replaced that geographical significance in respect of the Goods.

10. I am in agreement with the Opponent’s position that the Applicant’s vineyard is not in Tanunda itself but is sufficiently outside the township (and sufficiently close to other small local towns) to disqualify the Applicant from using the Trade Mark when the trademark has, like the words “Frog Island”, the “flavour of being a geographical location” and is an expression which would lead ordinary people to believe that the words refer to an actual place where the grapes are grown or the wine produced.  There is no geographical formation known as “Tanunda Hill” and the likely association will be with the “Chateau Tanunda” and the products made thereabouts.

11. I am not persuaded of the Applicant’s submission that “Tanunda is associated with the geographical area and consumers, upon seeing the word Tanunda, would only associate it with that geographical area and not with any particular winery or vineyard.”  The evidence is that “Barossa” and “Barossa Valley” are registered GIs.  Those names are closely associated with wine making.  There is no evidence that the public has a general appreciation of a so-called “Tununda area” as some subregion of the Barossa.  As I have found, the public association is in fact between the name Chateau Tanunda and winemaking.

12. Whilst those with a particular knowledge of the Barossa region of South Australia might be more aware of the township or Tanunda as a stepping off point for exploration of the larger region, there is for the purposes of assessing section 43 an important distinction to be made between so-called “involved” and “uninvolved” consumers.  In C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; [2000] AIPC 91-640; [2001] ATPR 41-793; (2000) 52 IPR 42 the Full Bench wrote at [20]:

    It was common ground that, if any segment of the wine-consuming public was likely to be deceived, misled or confused by  Rosemount 's use of the Hill of Gold name, it was the "uninvolved" segment: "involved" consumers would know Hill of Grace, would know by whom it was made, would know  Rosemount  and would be unlikely to suppose that there was any association between the Hill of Grace which they knew (at least by reputation) and  Rosemount 's Hill of Gold. Controversy centred on the likely reaction of uninvolved consumers.)

13. The vast bulk of wine consumers are uninformed.  The Opponents have established their opposition under section 43.  The Trade Mark carries a deceptive or confusing connotation when used in relation to the Goods.

14. There is no need for me to examine the remaining grounds of opposition although I would say that there is much merit to the ground based on section 62(b) and for that reason I am not willing to accept the Trade Mark subject to the endorsement which the examiner suggested.[6]

    [6] See, for example, Thomson v B Seppelt and Sons Ltd – BC2500015 (High Court, 29 October 1925, unreported) per Isaac J.

Decision

1. At the relevant date subsection 55(1) of the Act provided:

   55Decision

   (1)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.

2. I refuse to register trade mark application 1510120.

Costs

1. Having been successful in this matter the Opponents are entitled to their costs which I award against the Applicant.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
17 September 2014