Barton & Guestier S.a.s v Anthony Barton

The dispute before Hearing Officer Cristy Condon concerned an application by Barton & Guestier S.a.s. (the applicant) to register a trade mark for the word "BARTON" in relation to wine. The application was opposed by Anthony Barton (the opponent), who argued that the proposed mark was deceptively similar to his existing trade mark "CHÂTEAU BARTON" and that registration would be contrary to section 18 of the *Trade Marks Act 1995* (Cth) (the Act). The opponent also contended that the applicant was not the owner of the trade mark, nor was it entitled to be registered as its owner, pursuant to section 58 of the Act.

The primary legal issues before the Hearing Officer were whether the applicant's proposed trade mark "BARTON" was deceptively similar to the opponent's registered trade mark "CHÂTEAU BARTON" for the purposes of section 18 of the Act, and whether the applicant was entitled to be registered as the owner of the trade mark. The Hearing Officer was required to consider the overall impression of the marks, the similarity of the goods, and the circumstances of their use.

In determining deceptive similarity, the Hearing Officer applied the principles established in cases such as *Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd* and *Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd*. The Hearing Officer found that while the word "BARTON" was common to both marks, the addition of "CHÂTEAU" in the opponent's mark created a distinct difference in the overall impression. Furthermore, the Hearing Officer considered the evidence of use and concluded that the applicant had established a prior and continuous use of the mark "BARTON" in relation to wine, and that the opponent had not established that the applicant was not entitled to be registered as the owner of the trade mark.

The Hearing Officer dismissed the opposition and allowed the applicant's trade mark application to proceed to registration.