Barton & Guestier S.a.s v Anthony Barton

[2013] ATMO 95

TRADE MARKS ACT 1995

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

Re:Opposition by Barton & Guestier S.A.S. to registration of trade mark application 1456665 (33,35) - BARTON & BARTON - filed in the name of Anthony Barton.

Delegate:

Hearing Officer: Cristy Condon

Representation:

Opponent: Collision & Co Patent & Trade Mark Attorneys

Applicant: Not represented

2013 ATMO 95

Decision:

Section 52 opposition: ss 41 and 44 pursued – neither ground established – application to proceed to registration.

Costs: No Costs award

Background

1. This is an opposition brought by Barton & Guestier S.A.S. (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark BARTON & BARTON (‘the Trade Mark’) subject of application number 1456665 in the name of Anthony Barton (‘the Applicant’).

2. The application has a lodgement date of 31 October 2011 (‘the Relevant Date’) and, after examination, the Trade Mark was accepted for registration in relation to the following goods and services:

   Class 33: Beverages containing wine (alcohol content 1.15% or more by volume); beverages containing wine (wine predominating); blended wine; dessert wine; drinks containing wine (wine predominating); dry fortified wine; dry red wine; dry sparkling wines; dry white wine; dry wine; fortified wines; non-sparkling wines; red wine; still wines; vintage wines; white wine; wine

   Class 35: Cellar door sales of wine

3. On 23 May 2012 the Opponent filed a Notice of Opposition to the Trade Mark.

4. In due course the parties filed and served evidence.  In particular, the Opponent’s evidence in support consists of a statutory declaration of by Dr Donald Angus made 24 September 2012. The Applicant’s evidence in answer consists of a statutory declaration by Anthony Barton made 7 January 2013. 

5. The matter was set down for hearing on 28 August 2013 in Canberra. As a delegate of the Registrar of Trade Marks I heard oral submissions that day from the Opponent’s representatives. The Applicant did not appear.  The Opponent was represented by Dr Donald Angus, assisted by Ms Fiona Nguyen, both Trade Mark Attorneys in the employ of Collision & Co Patent & Trade Mark Attorneys.  Prior to the hearing both parties also filed and served written submissions.

Discussion

1. The Notice of Opposition lists a number of grounds of opposition but Dr Angus advised at the hearing that the Opponent was pressing only those grounds dependent on sections 41 and 44 of the Act.

2. I treat the remaining grounds listed in the Notice of Opposition as abandoned. However, should the matter be appealed it is open to the Opponent to plead any ground it sees fit.

3. In order to succeed in its opposition the Opponent bears the onus of establishing at least one of the grounds pressed on the balance of probabilities.[1]

   [1] 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]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13].

4. For the sake of convenience I will turn to the section 41 ground for opposition first. Should the Opponent succeed under this ground it is not necessary for me to consider the remaining ground.

Section 41

1. I must initially address which form of wording should be applied in this case having regard to the fact that section 41 has recently been amended.

2. The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came into effect on 15 April 2013. It repealed section 41 of the Act and substituted a new section 41.

3. The Registrar’s position is that the new iteration of section 41 applies to trade mark applications filed on or after 15 April 2013 and that the repealed provisions continue to apply to trade mark applications filed before 15 April 2013.[2]

   [2] See, for example, Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50.

4. As mentioned, the opposed application was filed on 31 October 2011 and accordingly the now repealed version of s 41 is applicable in this case.

5. Section 41 as it then stood is reproduced below:

41 Trade 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).

1. I must firstly consider the extent to which the Trade Mark is inherently adapted to distinguish the designated goods and services from those of other traders, a matter to be:

   [t]ested 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 … 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.[3]

   [3] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514 per Kitto J.

2. In the context of Section 41, the word BARTON is a common surname and at the date of writing appeared on the Australian Electoral Roll (‘the Roll’) 4279 times. Current office practice is to consider any surname which appears on the Roll greater than 750 times a common surname.

3. I consider that in the context of the Trade Mark as a whole, a consumer of wine of ordinary intelligence and education would either know, or would presume, that BARTON was a surname.  I therefore consider it more likely than not that an ordinary member of the Australian public would have reason to conclude that the Trade Mark was a simple conjunction of two identical surnames. 

4. To this end the Applicant has provided information about his family history with respect to commercial use of the family name BARTON and some examples of labels that it intends to use in respect of the wine bottling.

5. On behalf of the Opponent, Dr Angus submits that as the Trade Mark consists primarily of a common Australian surname, it has no or very little inherent capacity to distinguish the goods and services of the Applicant. Further, he states that the essential feature of the Applicant’s trade mark is BARTON and being a common surname if it should proceed to registration will give the Trade Mark a monopoly in the word BARTON.

6. The Opponent also draws reference to the Trade Mark Manual of Practice and Procedure (‘the Manual’), specifically Part 22.17 which describes the practice of this office in regard to two or more surnames. This section of the Manual makes no reference to trade marks that are a repetition of the same surname. In this respect I find that there is no evidence before me that the examiner has departed from the accepted office practice in regard to trade mark consisting of two or more surnames during their examination and acceptance of this Trade Mark. For the purpose of clarity Part 22.17 of the Manual is reproduced below:

   17. Trade marks consisting of two or more surnames

   Trade marks consisting of two or more surnames are considered capable of distinguishing without the need for evidence, even when the individual surnames are not adapted to distinguish.  The reason for this is that the need for other traders to use the combination in relation to the same or similar goods or services is relatively low.

   Two or more surnames which are not, individually, sufficiently adapted to distinguish an applicant's designated goods or services, are prima facie capable of distinguishing when they are combined.  This applies whether they are words with other meanings or not, or whether the combination has a meaning or not - except, of course, where the meaning is directly descriptive of some characteristic of the goods or services (e.g. Smart Light).  For example, Smith Johnson, Smith Brown and Brown Simpson are all combinations which form trade marks which are sufficiently inherently adapted to distinguish.

7. In the absence of a relevant and case specific Manual practice Dr Angus posed a question about the treatment of trade marks that consist of two surnames that were merely a repetition of the first surname. After perusing the Trade Marks Register I am able to identify trade marks that consist solely of the repetition of a common surname that were accepted for registration on a prima facie basis. I have summarised some of these trade marks (for the purpose of illustrating the office practice) in the table below.

Trade Mark Number	Trade Mark	Occurrences on the Australian Electoral Roll
1444877	Johnson & Johnson	33,435
1320994	Johnson & Johnson	33,435
1556757	Galvin & Galvin	1,532
974856	56,698

1. I note in passing that trade mark 974856  was accepted on a prima facie basis in class 33 for Alcoholic beverages (except beer).

2. Based on the evidence before me from both parties and the research I have conducted of the Trade Marks Register I am unable to see an error in the examination of the Trade mark with respect to section 41. I think that acceptance under the provisions of section 41(3) is appropriate.

3. Accordingly, the section 41 ground for opposition has not been established.

Section 44

1. Section 44 relevantly provides:

   Section 44. Identical 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.

1. The Opponent relies on its registered trade mark number: 784659 (‘the Opponent’s trade mark’). The relevant details of this registration are:

   Trade Mark: BARTON & GUESTIER

   Priority Date:  4 February 1999

   Class:                  33 “Wines, spirits and liqueurs”.

2. The priority date of the Opponent’s trade mark is earlier than the Relevant Date. Additionally, the goods claimed in the Trade Mark application are “similar”[4] to the Opponent’s goods.

   [4] As defined in s 14(1) of the Act, namely the same goods or goods “of the same description”.

3. There were no submissions from the Opponent in regard to the concept of substantial identity and due to the obvious and notable differences between the trade marks I am satisfied that the trade marks are not substantially identical. Therefore I will proceed to discuss the remaining requisite question prescribed by section 44. That is, are the respective trade marks deceptively similar?

4. Section 10 of the Act defines a ‘deceptively similar’ trade mark as follows:

   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.

5. In assessing the likelihood of deception or confusion an attempt should be made to estimate the impressions consumers are likely to form of the trade marks and whether a number of persons may be caused to wonder if the goods on which the trade marks are used come from the same trade source[5].  

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592

6. On behalf of the Opponent, Dr Angus, in his oral submissions, argued that the Trade Mark looks quite innocuous but because of the repetition of the word BARTON is actually more complex than it appears. During the hearing he made the following remarks:

   …the essential feature of the BARTON & BARTON mark is undoubtedly the word Barton. The marks BARTON & BARTON and BARTON & GUESTIER share this visual and oral similarity at the beginning of the word. We submit that the beginning of the word or the beginning of the mark plays an extraordinarily important role in consumers’ minds in particular on the basis of the notion of imperfect recollection and it is that essential feature which repeats in both marks.

   With respect to BARTON & GUESTIER it is clearly a conjunction of two surnames. That being the surname BARTON inter disposed with the ampersand and the mark or surname GUESTIER...looking at the Search for Australian surnames database the BARTON element of that is of course quite common [being] greater than 4200. The GUESTIER name itself does not appear at all on the search for Australian surnames database and so it is a very uncommon one. We submit that…The name BARTON therefore becomes quite a strong element in terms of the likelihood of confusion in respect of imperfect recollection. The shared essential word BARTON is likely to be the word and feature that is recalled by consumers in both instances. Taking into account the class of good we are looking at here…being wine in particular and these are goods that are readily available…consumers view products side by side. A lot of the time consumers are in a hurry to purchase goods so that there is this issue where there will be a high likelihood of confusion between the two particularly when a person unable to recollect the full name of BARTON & GUESTIER would be confused upon seeing the word BARTON at the beginning followed by the ampersand on another bottle on the shelf. These casually purchased goods have a high likelihood of confusion based on the beginning of the word, based on the type of goods and the customer that’s involved.

7. Dr Angus also added that trade marks are known by a truncation. In this case, he stated that the Trade Mark would be referred to, or at least remembered as being, “the BARTON mark”. The Opponent’s written submissions cite Automobiles Peugeot v Viva Time Corp[6] where the Delegate said:

   In any request for goods by reference to a trade mark, it is also likely, I consider, that the prospective purchaser will be likely to shorten the trade mark PAUL PEUGEOT to the single word PEUGEOT…The chances of verbal confusion of the trade marks is therefore high.

   [6] [2001] ATMO 52 (June 2001)

8. I nevertheless believe the current opposition can be distinguished from the cited case on the basis that the Trade Mark is a conjunction of two identical, relatively common, surnames, not a very common given name and an extremely rare surname[7], which might well be shortened to merely the distinctive surname.

   [7] There are no occurrences of the name “Peugeot” on the Australian Electoral Roll.

9. I have considered the further arguments put forward by the Opponent in attempting to illustrate that the trade marks in question are deceptively similar. However, I remain unconvinced. My reasons are as follows:

10. Firstly, the essential element in the Trade Mark is BARTON. I accept that this element is also an essential feature of the Opponent’s trade mark, as of course is the element GUESTIER. I note also that the trade marks contain another common element, being an ampersand, but I consider that in the context of the marks as wholes the presence of this non-distinctive element can largely be discounted.  That said, it needs to be shown not only that the marks under comparison share an essential feature, but, unlike the case here, that the marks as wholes also share significant phonetic similarities.   As Greenwood J said in   NV Sumatra Tobacco Trading Co v British American Tobacco Australia Services Ltd[8]:

    The question of imperfect recollection therefore is likely to be informed by, in part at least, the extent to which phonetic similarities arise and whether some part of the registered trade mark reflects an essential feature adopted by the applicant for the new mark. Two things inform imperfect recollection in transactions in which goods are bought and sold in oral transactions apart from broader contextual considerations. First, the degree of phonetic similarity is important. For example, in Berlei, the phonetic similarity was very significant as the phonetic pronunciation of the two marks exhibited the sounds Burley and Barley and in Rysta Ltd’s Application, the similarity was between Rysta and Aristocrat, with Viscount Maugham accepting Luxmoore LJ’s view of a tendency in speech to slur a word beginning with “a” resulting in a phonetic similarity of Rysta and Ristoc. Secondly, a part of the registered trade mark may be shown to be such an essential feature that it dominates the immediacy of recollection and may give rise to confusion.

    [emphasis added ]

    [8] (2011) 283 ALR 743 at [58].

1. A good deal of case law has dealt with the registrability of trade marks that incorporate an essential feature of another mark. These include Enoch’s Application (1947) 64 RPC 119, (VIVICILLIN and CYLLIN) and Darwin’s Application (1946) 63 RPC 1, (MOREX and REX). In both the above cases the trade marks, where one trade mark was wholly contained in the other, were allowed to coexist.

2. Shanahan’s Australian Law of Trade Marks and Passing Off (^5th Ed) also discusses the issue of a later trade mark incorporating the essential distinguishing or memorable feature of the earlier trade mark[9]. This indicates the  principal consideration is whether “the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection”[10] or, explained another way, has it retained its identity in the later trade mark as an essential or distinguishing feature. This can be dependent upon other factors which include, but are not limited to[11]:

• The distinctiveness of the common elements and the additional element/s
• The meaning of the trade marks.
• The placement and size of the additional elements
• The commercial context of the goods and/or services

[9] Davidson, Mark and Horak, Ian, Lawbook Co., 2012, pp 273-274 at [30.1525].

[10] Saville Perfumery Ltd v June Perfect Ltd (1939) 1b IPR 440 (CA) at 453 per Sir Wilfred Greene MR.

[11]   See also Bale & Church Limited v Sutton Parsons & Sutton and Astrah Products (1934) 51 R.P.C. 129, Torrag Pty Ltd v Lydboots Pty Ltd and Petcure Pty Ltd [2002] ATMO 6 (21 January 2002), Societe Des Produits Nestle SA vNewmans Chocolates Ltd [2004] ATMO 50 (30 August 2004)

1. Taking into account these factors, I now approach the question of whether the identity of the Opponent’s trade mark is maintained in the Trade Mark. To my mind, it is not. I consider its identity is lost most notably because the GUESTIER element is missing.  Both parties’ trade marks consist, in part, of the elements ‘BARTON’ and ‘&’.  However that is where the similarity ends. The word BARTON and the ampersand form part of the Trade Mark but I consider they are no more the essential or distinguishing features than is the second part of the Trade Mark which is the repetition of ‘BARTON’. The trade mark consists of the name BARTON & BARTON which I think is not amenable to be reduced down to ‘BARTON &’ or ‘BARTON’. It is a clear principle of trade mark law that the trade marks must be considered in their entirety:

   “One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.”[12]

   [12] Clarke v Sharp (1898) 15 RPC 141 at 146 (Ch D)

2. As previously stated, the surname BARTON is undoubtedly a relatively common surname in Australia.  However, most importantly the (apparently) French surname GUESTIER does not appear on the Australian Electoral Roll at all. It is an accepted principle of trade mark law that the first part of a trade mark is generally the most memorable, and in this respect I agree with Dr Angus’ submissions and his oral comments reproduced above at paragraph 31. However, this is particularly important when the trade marks being compared consist of a single word which is the same at the beginning and differs in the middle or the end of the word. Where the difference occurs is important to whether it attracts the eye of the consumer and in Australia, where it is common for the enunciation of words to be mumbled or slurred, especially at the end of a word, the risk of confusion is heightened. I am satisfied, however, that this is less important in trade marks that consist of more than one word.  

3. I am accordingly satisfied that it is likely that the Opponent’s trade mark would be imperfectly recollected as consisting of BARTON & “a foreign surname” (or, perhaps,   BARTON & “an unfamiliar word”), whereas with the Trade Mark it is the repetition of the common name BARTON that is likely to be memorable.

4. Moreover, I think it unlikely that customers who know of the Opponent’s wine, spirits or liquors would view the Trade Mark as representing the Opponent’s goods, or otherwise having some connection with, the Opponent’s BARTON & GUESTIER branded products, notwithstanding the parties’ goods could be available for sale in the same establishments. 

5. In my opinion, any real and tangible danger of deception and confusion occurring between the trade marks in any commercial situation is remote. I find that the Trade Mark does not resemble the trade mark of registration 784659 to the extent that it is likely to deceive or cause confusion. The section 44 ground of opposition is not established.

Decision and Costs

1. The Opponent has not established a ground of opposition.  I decide that the trade mark can 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.

2. Although costs usually follow the decision, the Applicant was not represented at any stage therefore I am not issuing a costs award in this matter.

Cristy Condon

Hearing Officer

12 November 2013