Barossa Valley Estate Pty Ltd v Australian Vintage Limited - [2015] ATMO 70

TRADE MARKS ACT 1995

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

Re:Opposition by Barossa Valley Estate Pty Ltd to registration of trade mark application 1457870(33) - Barossa Valley Wine Company & Letter B (Framed) Logo - filed in the name of Australian Vintage Limited.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Ian Horak of Counsel instructed by Baldwins Patent Attorneys & Solicitors Applicant:Michael Grant of Patent Attorney Services
Decision:	2015 ATMO 70 S52 opposition to registration: grounds under sections 41, 42, 44, 58, 60, and 62A not established.

Background

This matter arises out of an application under the Trade Marks Act 1995 (‘the Act’) by Australian Vintage Limited (‘the Applicant’) to register the trade mark which appears below:

Application No: 1457870
Priority Date: 7 November 2011

Goods:Class 33: Alcoholic beverages (except beer); beverages containing wine (alcohol content 1.15% or more by volume); beverages containing wine (wine predominating); sparkling wines; white wine; wine; spirits (beverages); liqueurs; fortified wines
(‘the Goods’)

Trade Mark:
(‘the Trade Mark’)

Endorsements: It is a condition of registration that the trade mark will only be used in respect of wines originating (as defined in the Australian Wines and Brandy Corporation Act 1980) in the area in respect of which the geographical indication BAROSSA VALLEY is registered and that the use is in accord the Australian Wine and Brandy Corporation Act 1980.
It is a condition of registration that when used in respect of alcoholic beverages, spirits and liqueurs the trade mark will only be used in respect of alcoholic beverages, spirits and liqueurs produced in the BAROSSA VALLEY area.

Following examination of the Trade Mark, as is mandated by section 31 of the Act, it was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 24 October 2013.
On 19 December 2013 Barossa Valley Estate Pty Ltd (‘the Opponent’) filed Notice of Intention to Oppose; this was followed on 20 January 2014 by a Statement of Grounds and Particulars (‘SGP’). The SGP details grounds under sections 41, 42, 44, 58, 60, and 62A of the Act. I note that the ground under section 58 was not argued in oral or written submissions by the Opponent and I will treat that ground as having been abandoned.
The parties filed evidence in support, evidence in answer and evidence in reply as is further discussed below.
The matter duly came on to be heard in Melbourne by a delegate of the Registrar, Ms Claudia Murray. However, Ms Murray is unable to decide the matter due to her appointment to another position within IP Australia. Accordingly, it has been passed to me, another of the Registrar’s delegates, for my decision. I have had the benefit of listening to the recording of the proceedings and consideration of the evidence and written summaries of submissions which were before Ms Murray. At the hearing the Opponent was represented by Mr Ian Horak of Counsel instructed by Baldwins, Patent Attorneys & Solicitors. The Applicant was represented Mr Michael Grant of Patent Attorney Services.

Onus & Relevant Date

The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] 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].
The relevant date at which the grounds must be considered is the filing date of the Trade Mark.[2]
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

The evidence comprises the following declarations:
In Support
Jonas David Steen made on 26 May 2014 with exhibits JS1-1 to JS1-26
Jonas David Steen (Confidential) made on 26 May 2014 with exhibits JS2-1 to JS2-5
In Answer
Michael John Grant made on 29 August 2014 with exhibits MG-1 to MG-9
Scott Burton, made on 28 August 2014
In Reply
Jonas David Steen made on 26 May 2014 with exhibits JS3-1 to JS3-14
In essence, the Opponent’s evidence and argument is that it has use, reputation and registration of the trade mark appearing below such that the grounds under which registration of the Trade Mark is opposed are established:

Registration No:  784535
Priority Date:  4 February 1999
Goods/Services:  Class 33: Wines
Trade Mark:  BAROSSA VALLEY ESTATE

Endorsements: It is a condition of registration that the trade mark will only be used in respect of wines originating (as defined in the Australian Wine and Brandy Corporation Act 1980) in the area in respect of which the geographical indication BAROSSA VALLEY is registered and that the use is in accord with the Australian Wine and Brandy Corporation Act 1980
Provisions of subsection 41(5) applied.

The Opponent also submits that the expressions ‘Barossa Valley Estate’ and ‘Barossa Valley Wine Company’ mean the same thing and are, in effect, interchangeable and that while the latter is inherently unadapted to distinguish the Goods the former is distinctive of the same goods. As explained below, logically this cannot be so and the non sequitur forms the basis for my decision.

Section 41

At the relevant date section 41 of the Act relevantly provided:
41Trade mark not distinguishing applicant’s goods or services
(1)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).
(2)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 (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.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1:For goods of a person and services of a person see section 6.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6)If the Registrar finds that 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, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
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:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
Concerning the structure and operation of section 41 of the Act, in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241 Branson J said:
Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:
(a)     that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b)     that 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; or
(c)     that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.
If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.
If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).
If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).
The initial step then is to consider the trade mark in terms of subsection 41(3); that is, to first take into account the extent to which the Trade Mark is inherently adapted to distinguish the designated goods from the goods of other persons.
The classic statement concerning the assessment of inherent adaptation within a trade mark is that by Kitto J in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at [5]:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that 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. (at p514)
In his submissions Mr Horak states:
The Opposed Mark consists [sic] of the words “BAROSSA VALLEY WINE COMPANY”. If this trade mark were to be used then it is clear that consumers would simply refer to the trade mark by reference to those words.
Those words do not distinguish the Applicant [sic]. This appears to be conceded by Mr Burton where he refers to the words “BAROSSA VALLEY WINE COMPANY” and states: “.. [the Applicant] understands that other traders can use that and other descriptive phrases to describe their business or their products in connection with the Barossa Valley.”
The Opposed Mark does include the letter “B” in a stylized form but this of itself does not provide any distinctiveness particularly when the focus is on Barossa Valley. Even if that letter provides some distinctiveness it does not provide sufficient distinctiveness where the Opposed Mark would be simply described by reference to the key wording shown in that label, namely “Barossa Valley Wine Company”.
It follows that in the circumstances that either subsection 41(5) or subsection 41(6) of the Act applies.
I agree with Mr Horak that the expression ‘Barossa Valley Wine Company’ lacks any inherent adaptation to distinguish the Goods of the Applicant from those of other traders. I also agree that the alphabetical letter B lacks inherent adaptation to distinguish the Goods of the Applicant. However, the Opponent’s evidence does not show, nor does Mr Horak explain, why other traders would honestly need to use the particular combination of words ‘Barossa Valley Wine Company’ with the alphabetical letter B enclosed in an ornate frame which resembles heraldic mantling in respect of their similar goods in the form that they are rendered within the Trade Mark.
It is very difficult to understand how another trader could, without improper motive, alight upon the particular combination and graphical arrangement of the elements which form the Trade Mark to use in respect of similar Goods. This does not appear to be a realistic likelihood.
Viewed in this light, the Applicant’s rights arise in the combination of elements and the manner in which they are presented rather than the words ‘Barossa Valley Wine Company’ or the letter B (although there may exist copyright in the border which encloses the letter B and the particular arrangement of the elements which form the Trade Mark). The principle here is the same as that in Diamond T Motor Car Co’s Appn (1921) 38 RPC 373 where it was observed by Lawrence J of the Diamond T (Logo) trade mark below the quote that:
In order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves.

I consider that the Trade Mark is inherently adapted to distinguish the Goods.
The Opponent has not established its opposition to registration of the Trade Mark under the provisions of section 41 of the Act.

Section 44

Section 44 of the Act relevantly 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.
The registration upon which the Opponent relies has a priority date earlier than that of the Trade Mark and the Opponent’s goods are similar to or the same as the Goods. It is not argued by the Opponent that the trade marks are substantially identical. It accordingly remains for me to decide whether the trade marks are deceptively similar.
Deceptive similarity is defined by section 10 of the Act which provides:
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.
Concerning deceptive similarity, Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 said:
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] HCA 51; (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”
The assessment of the likelihood of deception and confusion is informed by the factors outlined by French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; [1999] AIPC 91-499; (1999) 45 IPR 411 (‘Woolworths’) at [49]:
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.”
All of the surrounding circumstances are to be taken into consideration, including the market context. In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), 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. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.
One of the surrounding circumstances (as per Pianotist and Woolworths) is the nature of the trade marks under consideration – in particular the nature of the indicia which are proposed as the source of confusion or deception. In oral submissions arguing this ground, Mr Horak stressed that the registration has been accepted under the provisions of subsection 41(5) and must therefore be regarded as a distinctive trade mark. I do not agree. It is apparent that the registered trade mark was accepted under the provisions of subsection 41(5) which provides, inter alia, that a trade mark may be accepted on the basis that the evidence before the examiner establishes that the trade mark will distinguish the goods as being those of the (then) applicant. When the evidence of the quantum and mode of use of the Opponent’s trade mark is assessed, I consider it a moot question as to whether the Opponent’s trade mark has yet become distinctive because, as further discussed below under the heading Section 60 & paragraph 42(b), the Opponent’s evidence suggests that it has not.
Further, as far as this line of argument suggests that I should take into account the evidence that led to the Opponent’s trade mark being accepted for registration, absent evidence that the Opponent’s trade mark is notorious, I am rather to consider the use of the parties’ trade marks fairly and normally with no particular use or reputation attaching to either: 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 Court, after discussing the judgment of French J in Woolworths observed:
Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred. It is unnecessary, in order to decide this case, to go further.
Be that as it may, it is apparent that the Opponent relies on the common occurrence in the parties’ trade marks of the words ‘Barossa Valley’ together with its perceptions that the expressions ‘Barossa Valley Estate’ and ‘Barossa Valley Wine Company’ are interchangeable.
I will initially observe that if this ‘interchangeability’ in meaning were true, which I do not think is the case, the Opponent’s registration should never have been registered. The Opponent has submitted, and I have agreed, that the expression ‘Barossa Valley Wine Company’ is without any inherent adaptation to distinguish. If the terms are interchangeable, the trade mark BAROSSA VALLEY ESTATE should have also fallen foul of the (then relevant) provisions of subsection 41(6) as being without any inherent adaptation to distinguish the Opponent’s goods.
Plainly, the expressions under consideration have different meanings. In the context of the goods of the parties, the Opponent’s trade mark, BAROSSA VALLEY ESTATE, refers to a place – an estate in the Barossa Valley which produces wine whereas the expression ‘Barossa Valley Wine Company’ within the Trade Mark, refers to a corporate personality who makes or deals in wine from or within the Barossa Valley.
Additionally, as the endorsements on the parties’ trade marks make obvious, the words ‘Barossa Valley’ are a Geographical Indication for wines and no trader could claim, expressly (or by implication as is the case here), a monopoly in those words.
In Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11; (1978) 140 CLR 216; (1978) 18 ALR 639; (1978) 52 ALJR 392; [1978] ATPR 40-067; [1978] ASC 55-010; (1978) 3 TPC 244; (1978) 1B IPR 818; 18 A Crim R 639 (‘Hornsby’) the High Court said at [22]:
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.
Viewed in this light, the Opponent’s registration casts a very small shadow as far as deceptive similarity is concerned. Mr Horak brought such cases as Payton & Co Ltd v Snelling Lampard & Co Ltd (1900) 17 RPC 48 (‘Payton’) to my attention where it was said that “[W]hen one person has used certain leading features, though common to the trade, if another person is going to put goods on the market, having the same leading features, he should take extra care by the distinguishing features he is going to put on his goods, to see that the goods can really be distinguished…..” Payton was, of course, a passing off case in which the plaintiff was required to show reputation in the leading features. Such is not the case here as discussed at [26], above, where I am considering the notional use of the trade marks.
The preferred approach is that of the Trade Marks Office and Courts in Australian Homestay Network Pty Ltd v Homestay Network Pty Ltd [2015] ATMO 28; Watches of Switzerland Pty Ltd v Mappin & Webb Ltd [2015] ATMO 23; Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862 per Marshall J at [77]; Dimokranitis v Exotic Limo Pty Ltd [2010] ATMO 69 at [43]; Kosciuszko Thredbo Pty Ltd v ThredboNet Marketing Pty Ltd [2013] FCA 563 where it was found at first instance that where there was evidence of confusion between businesses using a geographic description, this was caused by the nature of the word itself and therefore the “... risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words....” Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd (1946) 63 RPC 39 at 42 per Lord Simonds. This reasoning was affirmed on appeal by the Full Court of the Federal Court [2014] FCAFC 87 at [32]-[34] per Siopis, Rares and Katzmann JJ.
The circumstances here are similar to those of the cases mentioned at [35], above, and, in addition, the expressions ‘Barossa Valley Wine Company’ and ‘Barossa Valley Estate’ have different meanings and are likely to be perceived as being different. Of course, there is also the letter B enclosed in the ornate frame which further distinguishes the trade marks from each other.
The trade marks of the parties are not deceptively similar and the Opponent has not established its opposition under section 44 of the Act.

Section 60 and paragraph 42(b)

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.
Note:For priority date see section 12.
As a first step in establishing its ground under section 60 of the Act, the Opponent must establish that, at the priority date, the trade mark on which it relies had a reputation.
In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192, at [81] and [86]:
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”.
[…]
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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587; (2000) 50 IPR 1 said that the reputation required to be demonstrated was:
… one of which a significant number of persons were aware … What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

The Opponent’s evidence which is directed to the reputation of its trade mark is contained in the first two declarations of Mr Steen.
By way of background, Mr Steen explains:
The application to register BAROSSA VALLEY ESTATE as a trade mark was supported by evidence of use produced by David Cumming (product manager at Barossa Valley Estate Limited) in a sworn statutory declaration dated on 17 November 1999. A copy of Mr Cumming’s declaration is annexed as Exhibit JS1-3.
At paragraph 2 of his declaration Mr Cumming explains that the BAROSSA VALLEY ESTATE trade mark, the subject of registration No. 784535, was first used in Australia in 1984 by the Valley Growers Co-operative Limited, a co-operative of wine producers. Mr Cumming explains further that the Valley Growers Co-operative Limited was an organisation registered under the Co-operative Association’s legislation of South Australia and was reorganised in 1998 as an Australian Limited company: Barossa Valley Estate Ltd.
Exhibits demonstrating use of the BAROSSA VALLEY ESTATE trade mark are attached to Mr Cumming’s declaration as “exhibit DC1”. At paragraph 4 of his declaration Mr Cumming’s explains:
The trade mark BAROSSA VALLEY ESTATE is used as the name of a house brand of a number of wines produced by my company. The wines produced by my company are typically also sold under a specific product name. Notably my company is responsible for producing wine sold under the very well known E & E trade mark. Also the BAROSSA VALLEY ESTATE trade mark is used in relation to my company’s further products EBENEZER, MOCULTA and SPIRES...
Mr Steen explains that the Opponent has five core brands as depicted below:

I note now that with the exception of the Shiraz label pictured top-left above, the expression ‘Barossa Valley Estate’ occupies a relatively minor placing which is within an annulus that encircles the monogram BVE on the necklet above the wine labels as shown below:

I also note that the necklet is smaller and less obvious than other potential trade mark material appearing on four of the labels depicted above: E&E, EBENEZER, E MINOR and ENTOURAGE[3]. Mr Steen says of the top-left Shiraz label:
Barossa Valley Estate, a self-titled range, is the newest range in BVE’s portfolio. It was introduced to make the BAROSSA VALLEY ESTATE brand unmistakable and more memorable and to support other wines in the BAROSSA VALLEY ESTATE range.
[3] Respectively registered in Australia under 665767(33) E&E; 433846(33) EBENEZER; 1172675(33) E MINOR; and, 1264936(33) ENTOURAGE.
Mr Steen does not state when the ‘self-titled’ range was introduced.
Mr Steen also includes ‘bottle shots’ of the Opponent’s range of wines as they appeared before 2007:

The ‘bottle-shots’ show both that the necklets carry the words ‘Barossa Valley Estate’ and that the words are smaller and less obvious than the other trade mark material on the bottles.
I interpose that the evidence establishes that the wines of the Opponent are not such that any particular cachet attaches to them as is the case, for example, with PENFOLDS GRANGE® and that reputation in the Opponent’s BAROSSA VALLEY ESTATE trade mark does not exist on this basis.
The predominant use of the Opponent’s trade mark since 2007 (and before the priority date) has been as a part of the Opponent’s composite trade mark where the expression ‘Barossa Valley Estate’ appears in an annulus which contains the monogram BVE. Section 7 of the Act provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
The material other than the expression ‘Barossa Valley Estate’ within the Opponent’s composite trade mark substantially affects the identity of the trade mark BAROSSA VALLEY ESTATE. The Opponent’s use of the composite trade mark thus makes very slight contributions to the reputation of the Opponent’s BAROSSA VALLLEY ESTATE trade mark where its identity is submerged into a more inherently distinctive whole.
The sales referred to in Mr Steen’s confidential declaration establish that the Opponent is a small to medium sized winery with modest to moderate sales.
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 at [40] I observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.
I do not consider that the evidence establishes that the Opponent’s trade mark BAROSSA VALLEY ESTATE has been used such that it has a strong reputation. Considering the nature of the trade mark, BAROSSA VALLEY ESTATE, which has a low inherent adaptation to distinguish wines which are from an estate in the Barossa Valley, the low to modest sales under that trade mark, the relative lack of prominence afforded to it on the Opponent’s bottles, its placement alongside other matter which is more obvious trade mark material, and its predominant use as a part of a composite trade mark over the five years before the priority date of the Trade Mark, my assessment is that the degree of its recognition amongst Australians generally was, at the priority date, likely to be quite low and accordingly so too was its reputation.
While the trade marks under consideration have the words ‘Barossa Valley’ in common, these words merely reveal the geographical source of the goods - the words are, as reflected in the endorsements on the Opponent’s registration and the opposed application, a Geographical Indicator. As discussed above, the expressions ‘Barossa Valley Estate’ and ‘Barossa Valley Wine Company’ mean two different things and if the use of the expressions is going to deceive or confuse it is because the creators of those expressions have chosen particular indicia (the words ‘Barossa Valley’ and either ‘Wine Company’ or ‘Estate’) to fashion the expressions out of which are prima facie unadapted to distinguish their goods: see the quote from Hornsby, above.
Moreover, the Trade Mark has additional features within it apart from the expression ‘Barossa Valley Wine Company’ and, after considering the low extent of the reputation of the Opponent’s trade mark at the priority date and both the similarities and differences between the trade marks, I am not satisfied that the Opponent has established this ground.
It also follows for reasons analogous to the above that the Opponent has failed to establish its opposition under paragraph 42(b) of the Act where the Opponent alleges that the Applicant’s use of the Trade Mark would mislead and deceive under section 18 of the Australian Consumer Law set out in Schedule 2 of the Competition and Consumer Act 2010 and also constitute the tort of passing off.
Mr Horak submits that:
Once reputation is established then the question under passing off and misleading and deceptive conduct turns to the question of whether the Opposed Mark has enough differences to distinguish itself from that used by the Opponent. See, for example, the approach taken by Murphy J in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2014] FCA 568 (30 May 2014) at [598].
At the cited paragraph, His Honour was discussing the relative thicknesses of the parties’ telephone directories. No applicable principle appears to emerge from that comparison for application to this matter.
Mr Horak went to submit:
The Opponent submits that in circumstances where the Opposed Mark includes the words “BAROSSA VALLEY WINE COMPANY” then it does not properly distinguish from the Opponent’s trade marks. The presence of a “B” (for Barossa) in a stylized form will not distinguish the products. Consumers would not refer to those features when ordering and even if the features were appreciated then they are just as likely to assume that the Opponent has included the stylized “B” on its bottles.
Again the principle in Hornsby is germane: the words ‘Barossa Valley’ are inherently unadapted to distinguish ‘wines’, being a Geographical Indicator. The word ‘estate’ is common to the trade, as are the words ‘Wine Company’ and when these words are used in combination with the words ‘Barossa Valley’ those expressions denote different things. In addition, I am to consider the trade marks as wholes and the Trade Mark is a composite trade mark where the alphabetical letter B in an ornate frame make considerable contributions to its identity.
In future there may well be traders who wish to style themselves ‘Barossa Valley Vineyards’, ‘Barossa Valley Wines’, ‘Barossa Valley Vintners’, ‘Barossa Valley Vintages’, ‘Barossa Valley Winery’, ‘Barossa Valley Cellars’ or the like. It is difficult to see how the Opponent’s use or registration of the trade mark BAROSSA VALLEY ESTATE could prevent other traders from using such utterly non-distinctive expressions to fairly and accurately describe themselves and/or as constituents of trade marks.
The Opponent has not established its ground under paragraph 42(b) of the Act.

Section 62A

Section 62A provides:
62AApplication made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Mr Horak submitted:
The principles of bad faith are usefully set out in the decision of Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 at 165 -167. The Applicant has acknowledged that it was aware of “BAROSSA VALLEY ESTATE” prior to filing the Opposed Mark and has been for some time. It follows in these circumstances that it can be inferred from that knowledge and the choice of the Opposed Mark that there is an intention to adopt the reputation of the Opponent.
All that the Applicant has done is to select some inherently unadapted words to use as a part of the Trade Mark. The Applicant, according to the declaration by Mr Burton, is under the belief that the words are only descriptive and akin to the expressions, ‘Barossa Valley Winery’ or ‘Barossa Valley Vineyards’ and are neither misleadingly, deceptively or confusingly similar to the Opponent’s trade mark. I agree. There is no bad faith in only selecting inherently unadapted words for the sake only of their ordinary meanings and knowledge of similar words used as or within another trader’s trade mark does not, per se, indicate bad faith.
The Opponent has not established its opposition under section 62A.

Decision

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.
The Opponent has not established any ground of opposition.
The trade mark 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 the disposition of the application should be in accordance with the Court’s order or direction.

Costs

As the Applicant has been successful it is entitled to its costs which I award against the Opponent at the Official Scale set out at Schedule 8 to the Trade Mark Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
5 August 2015