Bass & Flinders Distillery Pty Ltd

[2022] ATMO 142

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2201025 (Class 33) – OCHRE – in the name of Bass & Flinders Distillery Pty Ltd.

Delegate:

Debrett Lyons

Representation:

Applicant: Andrew Sykes of counsel instructed by RNG Lawyers

Decision:

2022 ATMO 142

Request to be heard under s 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under s 41 of the Act – s 41 considered – trade mark accepted.

Background

1. This is a decision on examination of trade mark application number 2201025 (‘Application’) filed by Bass & Flinders Distillery Pty Ltd (‘Applicant’) on 16 August 2021 for OCHRE (‘Trade Mark’) in respect of class 33 goods being ‘brandy’.

2. The Trade Mark was examined as required by the Trade Marks Act 1995 (Cth).[1] Having raised grounds for rejection which the Applicant addressed and overcame, the examiner rather late in the process raised in a fifth examination report a new ground for rejection under s 41 on the basis that the Trade Mark was to some extent, but not sufficiently, inherently adapted to distinguish the goods.

   [1] Unless otherwise stated, references to sections or regulations are references to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or a regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

3. The Applicant requested a hearing by videoconference. The matter was heard before me, as a delegate of the Registrar, on 5 August 2022.   Andrew Sykes of counsel appeared on behalf of the Applicant, instructed by Patrick Toscano, solicitor, of RNG Lawyers.

   Discussion

4. As a preliminary observation, I note that the ground for rejection must be considered afresh. Furthermore, s 33(1) provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it, or the application has not been made in accordance with the Act.

5. The Applicant’s position is that the Trade Mark is inherently adapted to distinguish the goods, “brandy”, or in the alternative, that there is sufficient evidence to establish that the Trade Mark ought to be accepted under s 41(4), providing for acceptance of marks shown through use to be adapted to distinguish.

6. The Applicant relies upon three declarations made by its Managing Director and Head Distiller, Holly Klintworth, two of which were produced to overcome the grounds for rejection under s 44 before s 41 was raised.[2]  For reasons which follow, it has been unnecessary to discuss those declarations in detail.

   [2] Declarations of Holly Klintworth dated 21 October 2021 together with Annexures HK-1 to HK-138 (Klintworth-1); dated 24 November 2021 together with Annexures HK-139 to HK-146. (Klintworth-2); and dated 17 May 2022 together with Annexures HK-149 to HK-161(Klintworth-3), this final declaration produced for the purpose of the hearing and was not seen by the examiner.

7. Section 41 requires that the Trade Mark be first assessed for its degree or level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the goods, there is no ground for rejecting it under s 41.

8. The test of whether a trade mark is inherently adapted to distinguish was set out in Clark Equipment Co v Registrar of Trade Marks where Kitto J stated that an applicant’s success “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.[3]

   [3] (1964) 111 CLR 511, 514.

9. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’), the High Court recognised that the assessment of inherent adaptation involves a two-step process, first determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[4]  

   [4] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

10. My knowledge of ochre is that of a naturally occurring earth pigment, being a mixture of ferric oxide and other elements.  It is also the name given to coloured products such as paints and dyes made from the pigment.  I find that most people would think of it in these forms as a solid, opaque colour, in keeping with its naturally occurring counterpart. Further, I find that people would accept that ochre is a brownish-yellow colour, but also apt to describe deeper orange shades or browns tinctured with red.

11. Ochre is not a word I would choose to describe the colour of brandy, nor does it remind me of the colour of brandy.  If I was presented with a puzzle asking me to describe the link between two words “brandy” and “ochre”, colour would not immediately come to my mind as the likely connecting factor.  I do not find the word to have an ordinary signification to a characteristic of the goods, colour or otherwise.

12. The evidence only confirms those findings. Ms Klintworth has been a Committee Member for the Australian Distillers Association for some years.  She declares that ochre is not used as an official descriptor of colour in international spirits lexicon. Ms Klintworth declares that she is not aware of any other trader in the Australian marketplace using ochre in connection with a brandy product other than the Applicant.

13. It was not clear to me why the examiner had raised a s 41 ground for refusal so late, or at all, but it seems to have arisen because Ms Klintworth herself used the word ochre. However, it was clarified by her third and final declaration (not seen by the examiner) that the inspiration for the Trade Mark was the soils of Red Hill in Victoria. I accept this evidence and find, taking everything into account, that the Trade Mark is inherently adapted to distinguish in relation to brandy.

    Decision

14. Under s 33(1), I am not satisfied that there are grounds for rejection and so I accept the Application.

    Debrett Lyons

    Hearing Officer
    Delegate of the Registrar of Trade Marks
    26 August 2022