Barberton Consultores E Servicos LDA v Foster?s Australia Limited

[2012] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by Barberton Consultores E Servicos LDA to registration of trade mark application 1409175(32) - CROWN DIPLOMAT - filed in the name of Foster’s Australia Limited.

Delegate:	Iain Thompson
Representation:	Opponent: Applicant: Tim Allen solicitor, of Corrs Chambers Westgarth
Decision:	2012 ATMO 73 s52 opposition - sections 44 and 60 considered, reputation of opponent's trade mark not established, trade mark not deceptively similar – opposition not established.

Background

1. In this matter Foster’s Australia Limited (‘the Applicant’) of Southbank, Victoria, has applied under the Trade Marks Act 1995 (‘the Act’) to register the trade mark current details of which appear below:

   Application No:         1409175
   Lodgement Date:       16 February 2011
   Convention Claim:     17 August 2010 (T1010550J: Singapore)
   Goods:  Beer
   Trade Mark:               CROWN DIPLOMAT

   (‘the Application’)

2. The Application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration on 17 March 2011 in the Australian Official Journal of Trade Marks.

3. On 17 June 2011, Barberton Consultores E Servicos LDA (‘the Opponent’), of Madeira, Portugal, served and filed Notice of Opposition (‘the Notice’) to the registration of the trade mark (‘the Opposed Trade Mark’).  The Notice includes the grounds which were subsequently addressed by the Applicant at the hearing of the matter.

4. The Opponent served and filed evidence in support of the opposition and the Applicant served and filed evidence in answer.

5. Subsequently the matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Melbourne on 19 July 2012.  The Opponent did not specify the particular grounds in the Notice on which it relied; neither did it file written submissions or attend the hearing.  The Applicant was represented at the hearing by Mr Tim Allen, solicitor, of Corrs Chambers Westgarth.

6. I agree with Mr Allen that the most probable grounds which the Opponent could argue, based on the Opponent’s evidence, are under sections 44 and 60 of the Act. For the sake of completeness, I find that the other grounds listed in the Notice have not been established.

   Onus

7. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.  See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

   The Evidence

8. The evidence in support of the opposition is a statutory declaration by Anthony Brooke Watson, a Partner of Middletons, Solicitors, of Melbourne.

9. Mr Watson declares that the Opponent is the owner of an Australian trade mark registration, details of which appear below:

   Registration No:         576434
   Priority Date:             13 April 1992
   Goods:  Class 33: Alcoholic beverages (except beers and diplomatic   punch) [1]
   Trade Mark:               DIPLOMATICO

   (‘the Registration’)

   [1] These were the goods covered as at the 17 August 2010 Convention priority date of the Application, although I note in passing the goods were subsequently restricted to “Liqueurs and distilled beverages but not including diplomatic punch” following a removal action filed by the Applicant pursuant to s 92 of the Act.

10. Mr Watson exhibits to his declaration a declaration by Mr Patrick Rabion, the Spanish legal representative of the Opponent.  Mr Rabion declares as to the use of the Opponent’s DIPLOMATICO trade mark in Australia in relation to rum.  Sales of the Opponent’s rum under the trade mark before the priority date of the Application were modest.

    Section 44

11. Subsection 44(1) provides:

    44Identical etc. trade marks

    (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.

    Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

12. The Registration has a priority date earlier than that of the Application and the applicant is agreed that the goods of the Application are similar goods to those of the Registration.

13. It remains to be decided whether, in the context of those goods, the trade marks DIPLOMATICO and CROWN DIPLOMAT are substantially identical, deceptively similar or neither of the foregoing.

14. Substantial identity was discussed in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 (‘Shell’) by Windeyer J who said at [12]:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

15. Here, it is obvious that the word ‘crown’ in the opposed trade mark does not appear in the registered trade mark and is an ‘essential feature’ of the opposed trade mark.  This being so, the trade marks are not substantially identical as, when compared side by side, the trade marks are obviously different.

16. Section 10 of the Act defines the words ‘deceptively similar’:

    10Definition of deceptively similar

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

17. Deceptive similarity may be assessed using the tests set out in Shell at [13] by Windeyer J:

    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. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "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"

18. The comparison of the trade marks takes place within the context of the marketplace for the goods: this framework was emphasised in In Re Application by Pianotist Company (1906) 1A IPR 379 at 380; 23 RPC 774 at 777,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.

19. And the process is moderated by the factors discussed by French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 (‘Woolworths’) who said at [50]:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

20. The word ‘crown’ is the first word of the Opposed Trade Mark and thus of some importance: in In the Matter of London Lubricants (1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264 at 279, Sargant LJ said:

    But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

21. In addition, the word ‘crown’ is inherently adapted to distinguish in relation to the goods and thus makes a strong contribution to the identity of the Opposed Trade Mark.  The focus in the Opposed Trade Mark is, in my consideration, very much on the word ‘crown’.  Thus, while the words ‘crown diplomat’ may not form a corporate identity, that expression does bring to mind royal ambassadors and sets itself somewhat apart from the idea of the registered trade mark such that there is no real associative connection between the trade marks.

22. In my consideration, within the contextual comparison referred to, above, when the differences and similarities of both the trade marks and the goods are considered, there is no real likelihood of deception or confusion.

23. Accordingly, I am not satisfied that the trade marks of the parties are deceptively similar and the ground based on section 44 of the Act is accordingly not established.

    Section 60

24. Section 60 of the Act provides:

    60Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

25. It is a prerequisite under section 60 that the trade mark on which an opponent relies has a reputation. In McCormick & Company Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, Kenny J said, at [81]-[82]:

    What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

    Does the evidence establish that in Australia before 9 March 1992 the  McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

26. At the hearing, Mr Allen submitted:

    According to the Opponent’s evidence (Exhibit ABW-6), as at the priority date of the CROWN DIPLOMAT application, 17 August 2010, (the Relevant Date) only 235 bottles of DIPLOMATICO rum had been sold in Australia, all via a single retail outlet located in Hawthorn, Victoria.

    There is no evidence of the marketing or promotion of DIPLOMATICO-branded goods in Australia before 17 August 2010. The list of awards provided in Exhibit XXX-5 to the Rabion Declaration contains no mention of Australian awards. According to the Opponent’s evidence, the discussions between the Opponent and [its distributor] regarding the distribution of DIPLOMATICO rum in Australia commenced in or around March 2010 and there is no evidence that those discussions had significantly progressed by the Relevant Date.

27. I agree with Mr Allen’s submission.  I do not consider that the Opponent’s evidence establishes that its trade mark, used as the evidence shows it to have been in relation to rum, was known to the Australian public generally at the priority date of the Application.

28. The Opponent has not established its opposition under section 60 of the Act.

    Decision

29. Subsection 55(1) of the Act provides:

    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.

30. The opposition has not to any extent been established.

31. The Application may then proceed to 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 registration shall not occur until the appeal has been decided or discontinued and that the disposition of the Application be in accordance with the Court’s order or direction.

    Costs

32. Having been successful the applicant is entitled to its costs which I award against the opponent at the official scale.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    23 August 2012