Baron Philippe De Rothschild SA, Societe Civile De Chateau De Lafite Rothschild, and Groupement Foncier Agricole Des Vignobles De La Baronne Philippine De Rothschild v DCI International Pty Ltd

[2011] ATMO 2

TRADE MARKS ACT 1995

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

Re:Opposition by Baron Philippe de Rothschild SA, Societe Civile de Chateau De Lafite Rothschild, and Groupement Foncier Agricole Des Vignobles De La Baronne Philippine De Rothschild to registration of trade mark application 1216456(8) – NR NATHAN ROTHSCHILD & DEVICE - filed in the name of DCI International Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Richard Smoorenburg of Smoorenburg Pini Patent & Trade Mark Attorneys Applicant: Carolyn Welsh of counsel, instructed by Batten Sacks Harvey Bruce Lawyers & Notaries
Decision:	2011 ATMO 02 Section 52 opposition sections 42(b), 43, 44 and 60 pressed – grounds not established – costs awarded against opponent

Background

1. DCI International Pty Ltd (‘the applicant’) is the applicant for registration of a trade mark, current details of which are:

Application No:	1216456
Priority Date:	19 December 2007
Goods:	Class 8: Cutlery
Trade Mark

1. Following examination, the application was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 24 April 2008.

2. On 24 July 2008, Baron Philippe de Rothschild SA, Societe Civile de Chateau De Lafite Rothschild, and Groupement Foncier Agricole Des Vignobles De La Baronne Philippine De Rothschild (collectively ‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Marks Act 1995 (‘the Act’), opposing the registration of the trade mark. The Notice of Opposition cited most grounds of opposition available to the opponent under the Act.

3. The parties duly served and filed evidence in support and evidence in answer, and the matter was set down for a hearing on 10 June 2010; however, on 3 June 2010 the applicant sought to file further evidence and the opponent sought adjournment of the hearing. I directed that the hearing would take place to hear submissions with respect to the further evidence and adjournment and, if appropriate, the substantive issue. 

4. At the scheduled hearing, the opponent had not received instructions from its various foreign clients and was not in a position to address the further evidence, let alone the substantive issue. I adjourned the matter and subsequently set a timetable for the serving and filing of further evidence and submissions.

5. Ultimately, evidence was filed and served as shown below:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Richard Caspar Theodorus Smoorenburg	Attorney	23 March 2009, Smoorenburg	RCTS-1 to RCTS-9
Evidence in Answer
Cyril Nathan	Director of applicant	13 July 2009, Nathan 1	CN-1 to CN-5
Opponent’s Further Evidence
Trevor Cyril Rowe	Executive Chairman, Rothschild Australia Limited	8 February 2010, Rowe	TCR-1 to TCR-6
Applicant’s Further Evidence
Cyril Nathan	Director of applicant	3 June 2010, Nathan 2	CN-6 to CN-11

1. The substantive matter came before me as a delegate of the Registrar of Trade Marks, in Melbourne on 21 October 2010. The opponent was represented by Richard Smoorenburg of Smoorenburg Pini Patent & Trade Mark Attorneys. The applicant was represented by Carolyn Welsh of counsel, instructed by Batten Sacks Harvey Bruce Lawyers & Notaries.

2. Mr Smoorenburg, in written submissions, advised that the opponent would only be pressing sections 42(b), 43, 44 and 60 grounds of opposition. For the sake of completeness, I find that the remaining grounds of opposition have not been established.

   Onus and Standard of Proof

3. The parties agreed that the opponent bears the onus of proof of establishing grounds of opposition and that there is no special standard of proof above the ordinary civil standard; that is, on the balance of probabilities.

4. It is only necessary for one ground of opposition to be established for the opponent to succeed in the proceedings.

   Discussion

5. I intend to discuss the grounds of opposition in the order that they appeared in the opponent’s written submissions.

   Section 60

6. Section 60 of the Act provides:

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

   60. 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.

7. To satisfy section 60 the opponent must establish:

   ·     Priority,

   ·     reputation acquired in Australia, and

   ·     because of that reputation the use of the applicant’s trade mark would be likely to deceive or cause confusion.

8. There is no longer a need to establish substantial identity or deceptive similarity to rely upon this ground of opposition, although such findings could be relevant to determining the likelihood of deception or confusion.

9. The relevant priority date is 19 December 2007. The opponent relied upon its reputation in the name ROTHSCHILD generally, but specifying the following trade marks.

No.	Priority date	Trade Mark	Class/goods	Endorsements
338052	20.09.1979	RESERVE BARON PHILIPPE DE ROTHSCHILD	33 wines	It is a condition of registration that the mark will only be used in relation to wines which originate from France. Registration of this trade mark shall give no right to the exclusive use of the word RESERVE and the surname ROTHSCHILD.
3530947	1.12.1980	BARON PHILIPPE DE ROTHSCHILD CHATEAU MOUTON BARON PHILIPPE CRU CLASSE EN 1855 PAUILLAC	33 wine	Registration of this trade mark shall give no right to the exclusive use of the names 'BARON PHILIPPE DE ROTHSCHILD' nor the surname 'MOUTON', nor the geographical name 'PAUILLAC' nor the numerals '1855' The English equivalent of the French words 'CRU CLASSE EN 1855' in the mark is 'CLASSIFIED GROWTH OF 1855' It is a condition of registration that the mark will be used only in relation to wines produced in the Medoc region of France
353948	1.12.1980	BARON PHILIPPE DE ROTHSCHILD CHATEAU MOUTON BARONNE PHILIPPE CRU CLASSE DU BARON PHILIPPE	33 wine	Registration of this trade mark shall give no right to the exclusive use of the names 'BARON PHILIPPE DE ROTHSCHILD' and the surname 'MOUTON' The English equivalent of the French words 'CRU CLASSE DU BARON PHILIPPE' in the mark is 'CLASSIFIED GROWTH OF BARON PHILIPPE' It is a condition of registration that the mark shall be used only in relation to wines produced in the Medoc region of France
391132	10.05.1983	CHATEAU MOUTON ROTHSCHILD	34 cigars	Registration of this trade mark shall give no right to the exclusive use of the surname ROTHSCHILD
391843	25.05.1983	N.M.ROTHSCHILD & SONS LTD	36 Merchant banking services	Registration of this trade mark shall give no right to the exclusive use of the surname ROTHSCHILD
391844	25.05.1983	N.M.ROTHSCHILD & SONS LTD	14 All goods included in this class	Registration of this trade mark shall give no right to the exclusive use of the surname ROTHSCHILD
394183	15.07.1983	N.M.ROTHSCHILD & SONS LTD	16 All goods included in this class	Registration of this trade mark shall give no right to the exclusive use of the surname ROTHSCHILD
408505	16.05.1984	BARON PHILLIPE DE ROTHSCHILD	33 Wines, sparkling wines, Champagne, liqueurs	It is a condition of registration that the mark shall be used only in relation to wines, sparkling wines, champagne and liqueurs which originate from France. The provisions of section 34(1) applied
409077	28.05.1984	CHATEAU LAFITE ROTHSCHILD	34 cigars and cigarellos	Registration of this trade mark shall give no right to the exclusive use of the surname ROTHSCHILD
441799	10.05.1986	MOUTON ROTHSCHILD	34 Tobacco, raw or manufactured; matches; cigarettes; cigars; cigar cases in this class; cigar cutters; cigar holders in this class; cigarette cases in this class; cigarette holders in this class; such parts and accessories for the foregoing holders as are included in this class; cigarette paper; cigarillos	Registration of this trade mark shall give no right to the exclusive use of the surname ROTHSCHILD
674671	10.10.1995	CHATEAU LAFITE ROTHSCHILD	33 Wines, sparkling wines and wine-based alcoholic beverages; spirits and beverages including spirits; all being goods included in class 33	Provisions of subsection 44(4) applied
748178	7.11.1997	CHATEAU MOUTON ROTHSCHILD	33 Wines of guaranteed vintage origin	Provisions of paragraph 44(3)(b) applied
86767	28.02.2001	Class 14: Precious metals and their alloys and goods of precious metals or coated therewith, not included in other classes, jewellery, precious stones; horological and chronometric instruments Class 33: Alcoholic beverages (except beers) Class 34: Tobacco, smokers' articles, matches	Provisions of paragraph 44(3)(b) applied

1. Mr Smoorenburg submitted that the test for reputation is that propounded in ConAgra Inc v McCain Foods (Aust) Pty Ltd[1]:

   But reputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark as opposed to the product.

   [1] (1992) 23 IPR 193 at 234

2. Mr Smoorenburg referred to his evidence in Smoorenburg regarding the opponent’s longstanding and substantial international reputation developed from 1853 to the present day, including business and philanthropic ventures. He submitted that this reputation extends to Australia and includes sales of the opponent’s wines since 1888.

3. Mr Smoorenburg also referred to Rowe regarding the opponent’s reputation in Australia through N.M Rothschild & Sons Limited, its subsidiaries and related companies with regard to commerce and finance. Rowe also explains that NM Rothschild, the ancestor who commenced the dynasty, was Nathan Mayer Rothschild.

4. Mr Smoorenburg submitted that the names Rothschild and Nathan Rothschild are famous in the context of the opponent’s activities. Therefore, he submitted, anyone seeing the trade mark NM NATHAN ROTHSCHILD would be confused or deceived because of the reputation associated with the opponent’s Rothschild names and trade marks.

5. Ms Welsh was critical of the opponent’s evidence, in particular with regard to the extent of the opponent’s activities in Australia. She noted that the wine sales exhibited with Smoorenburg were reasonably small quantities and of uncertain date (due to poor photocopies) but probably the 1990s.

6. Likewise, Ms Welsh submitted that the evidence in Rowe was not readily referable to the priority date of 19 December 2007, with some examples provided of large banking transactions being in 2009.

7. Further, Ms Welsh submitted that any reputation that the opponent might have established was limited to the “high end” wine industry and the merchant banking and finance industry. She submitted there was no evidence of the opponent’s reputation amongst general consumers, particularly amongst the typical consumers of consumer home wares.

8. Ms Welsh conceded that the reputation referred to in section 60 need not be in relation to the goods sought in the opposed application; rather, it has been held to mean recognition of the specified marks “by the public generally”: McCormick v McCormick[2]. However, Ms Welsh submitted, in this case the goods for which the applicant seeks registration are so completely different, and the markets in which the opponent and applicant operate are so disparate, from those for which the opponent has any reputation in Australia that there is simply no likelihood of deception or confusion occurring.

   [2] (2000) 51 IPR 102 at 127

9. Ms Welsh pointed out that the applicant had been selling cutlery under the applied for trade mark since March 2004, throughout Australia in both capital city and regional centres. In that time, the applicant has developed its own reputation and had not experienced any instances of confusion.

10. As pointed out by counsel for the applicant, the copies of invoices relating to sales of wines in Australia did not clearly show the dates of transactions, although the transactions appeared to be in the 1990s. The reputation as at the priority date is not established in relation to any of the opponent’s trade marks. Even if the reputation had been established, it was in the context of high quality wines produced by Baron Phillipe de Rothschild. I consider it highly unlikely that cutlery bearing the applicant’s trade mark would confuse or deceive persons familiar with the Baron’s wines.

11. Similarly, the evidence relating to the Rothschild banking services in Australia is insufficient. It would seem that such services are very well known in the UK and Europe; however, the Australian reputation is not established. I do note that such evidence there is of the opponent’s merchant banking services in Australia is invariably accompanied by the distinctive arrow device, which serves further to differentiate it from the applicant’s trade mark.

12. I have examined the opponent’s evidence in detail. I am not satisfied that it is sufficient to support an inference of reputation for the purposes of section 60. I find that this ground of opposition has not been established.

    Section 43 – trade mark likely to deceive or causeconfusion

13. Section 43 of the Act provides as follows:

    Section 43: Trade mark likely to deceive or cause confusion

    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.

14. The opponent submitted that the applicant’s trade mark contains the connotation that the opponent has, in some way, given approval for, or has a connection with, the applicant. The opponent relied on a line of authority[3] to state that any connotation that had a significant risk of deception or confusion arising would support the ground of opposition.

    [3] Amalgamated Television Services Pty Ltd v Clissold [2000] ATMO 14 (7 February 2000), Winton Shire Council v Lomas (2002) 56 IPR 243, McCorquodale v Masterson (2004) 63 IPR 582

15. Mr Smoorenburg submitted that the trade mark clearly incorporated the name and initials ‘NR NATHAN ROTHSCHILD’. He submitted that the name was instantly recognizable as one of the opponent’s famous names. Such recognition would involve a connotation that the opponent somehow approves or endorses the applicant’s products.

16. Ms Welsh submitted that there was no connotation arising from the word ‘ROTHSCHILD’ or the reputation of the opponent such that use of the applicant’s trade mark would be likely to deceive or cause confusion.

17. Ms Welsh further submitted that a connotation must be within the mark having regard to the nature of the goods or services to which it is to apply and other relevant circumstances[4]. She concluded by stating that there can simply be no connotation that the goods provided under the applicant’s mark are associated with those provided by the opponent.

    [4] McCorquodale v Masterson (2004) 63 IPR 582, page 589 at [26] per Kenny J

18. While it is true that the names ‘NATHAN’ and ‘ROTHSCHILD’ and the initials “NR” are included in the applicant’s trade mark, I am not satisfied that use of the trade mark in relation to cutlery would be likely to deceive or cause confusion.

19. While the ‘N.M. Rothschild’ referred to in the opponent’s registered trade marks for classes 14 and 16 goods and class 36 services is, in fact, ‘Nathan Mayer Rothschild’, there is no evidence of any general recognition in Australia of that fact. There is no evidence of use of ‘NATHAN ROTHSCHILD’ being used commercially in Australia.

20. Most significantly, there is no evidence of any connection between the opponent and cutlery. There is no apparent reason why a customer purchasing cutlery would associate the applicant’s goods with the opponent. I find that this ground of opposition has not been established.

    Section 42(b) – use contrary to law

21. Section 42 (b) of the act relevantly provides:

    Trade mark scandalous or its use contrary to law

    42. An application for the registration of a trade mark must be rejected if:

    (a) …
    (b) its use would be contrary to law.

22. The opponent submitted use of the opposed trade marks would be contrary to law because it would offend against sections 52 and 53 of the Trade Practices Act 1974 (“the TPA”) and also constitute the common law tort of passing off.

23. The TPA sections deal respectively with misleading or deceptive conduct and with the making of false or misleading representations and are reproduced below:

    S.52  Misleading or deceptive conduct

    (1)  A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

    (2)  Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).

    Note:          For rules relating to representations as to the country of origin of goods, see Division 1AA (sections 65AA to 65AN).

    S.53 False or misleading representations

    A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:

    (a)  falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use;

    (aa)  falsely represent that services are of a particular standard, quality, value or grade;

    (b)  falsely represent that goods are new;

    (bb)  falsely represent that a particular person has agreed to acquire goods or services;

    (c)  represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

    (d)  represent that the corporation has a sponsorship, approval or affiliation it does not have;

    (e)  make a false or misleading representation with respect to the price of goods or services;

    (ea)  make a false or misleading representation concerning the availability of facilities for the repair of goods or of spare parts for goods;

    (eb)  make a false or misleading representation concerning the place of origin of goods;

    (f)  make a false or misleading representation concerning the need for any goods or services; or

    (g)  make a false or misleading representation concerning the existence, exclusion or effect of any condition, warranty, guarantee, right or remedy.

    Note:          For rules relating to representations as to the country of origin of goods, see Division 1AA (sections 65AA to 65AN).

24. Mr Smoorenburg’s submissions were essentially that as a consequence of the fame of the opponent’s name as part of business names, company names and trade marks in relation to a wide range of business, social and philanthropic ventures, consumers would be misled or deceived.

25. Ms Welsh submitted that, with respect to the TPA claims, “the question is whether reasonably minded members of the class of consumers to whom the cutlery not originating from the opponent would be directed would take from the use of the opposed mark an impression that the goods were associated with the opponent”, citing Campomar Sociedad Limitada v Nike International Limited[5] and Johnson & JohnsonPacific Pty Ltd v Unilever Australia Ltd[6].

    [5] (2000) 202 CLR 45 at 85 at [103]

    [6] (2006) 70 IPR 574 at 579 at [17]

1. I have already found that the use of the opposed trade mark is not going to cause deception or confusion in terms of section 60 of the Act as I am not satisfied the opponent has established a sufficient reputation in its mark in Australia. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct, (or by extension conduct amounting to the making of false representations), than is the case with trade marks likely to deceive or cause confusion under sections 44 or 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd[7], by way of example, Gibbs, CJ noted (at 688):

   In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

   [7] (1982) 149 CLR 191

2. As I have found that the use of the opposed trade marks is not, at a minimum, likely to “deceive or confuse”, it follows that use is not, on the stricter test posited by the TPA, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 53 of the TPA.

3. To succeed in an action for passing off, an opponent must establish reputation, misrepresentation and the likelihood of damage[8]. My findings with respect to section 60 of the Act and sections 52 and 53 TPA inevitably mean that this limb of the ground of opposition must likewise fail.

   [8] Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302, Betta Foods Australia Pty Ltd v Betta Fruit Bars Pty Ltd (1998) ATPR 41-624

4. I am therefore not satisfied that the applicant’s use of its trade mark would be contrary to law.  This ground of opposition is not established.

   Section 44 – identical etc. trade marks

5. The opponent’s written submissions did not address the section 44 ground, nor was it expressly discussed at the hearing. The applicant’s written submissions did provide useful submissions refuting the ground.

6. Section 44 relevantly provides:

   Identical etc. trade marks

   44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or
   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:  For deceptively similar see section 10.

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

   (2) …

   (3) If the Registrar in either case is satisfied:

   (a) that there has been honest concurrent use of the 2 trade marks; or
   (b) that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:  For limitations see section 6.

   (4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a) beginning before the priority date for the registration of the other trade mark in respect of:

   (i) the similar goods or closely related services; or
   (ii) the similar services or closely related goods; and

   (b) ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:  An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:  For predecessor in title see section 6.
   Note 3:  For priority date see section 12.

7. The definition of the term deceptive similarity is provided in the Act as follows:

   Definition of deceptively similar

   10. 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.

8. To establish this ground the opponent must show to my satisfaction that it (or indeed, a third party) owns a registered or pending trade mark that:

   ·     has an earlier priority date than the application;

   ·     is substantially identical or deceptively similar to the trade mark of the application;  and which

   ·     has a specification of goods which are similar, or services closely related, to the goods of the application

9. The opponent’s notice of opposition cited ten trade marks under this ground:, 338052, 353947, 353948, 391132, 408505, 409077, 441799, 674671, 748178 and 867671. The details of these trade marks are shown in paragraph 15, above.

10. The term “similar goods” is defined in section 14(1) as follows:

    (1)For the purposes of this Act, goods are similar to other goods:

    (a)if they are the same as the other goods; or

    (b)if they are of the same description as that of the other goods.

11. The opponent’s trade marks are registered, broadly, for wines, cigars and some goods in class 14 made of precious metals, class 14 and 16 generally, and merchant banking services. The marks all contain the word ‘ROTHSCHILD’ and, in some cases, a device.

12. The applicant seeks registration for cutlery in class 8. It is obvious that none of the goods specified in the opponent’s marks are similar goods, nor are merchant banking services even remotely related to cutlery.

13. The factors to be considered in deciding whether goods are of the same description were summarised by Romer J in Jellinek's Application (1946) 63 RPC 59 as the nature of the goods, their respective uses and the trade channels through which they are bought and sold.

14. This ground fails under section 44 (1)(a)(ii), thus I need not consider the other limbs of the ground. I am not satisfied that this ground has been established.

    Decision

15. Section 55 of the Act provides:

    Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a)       to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or

    limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

16. I find that none of the grounds of opposition on which the opponent relied have been established.

17. The trade mark application may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the application be subject to that decision.

    Costs

18. The parties sought their costs. Since costs usually follow the event, I award costs against the opponent pursuant to the official scale.

    Jock McDonagh
    Hearings Officer
    Trade Marks Hearings
    17 January 2011