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Bavaria NV v Bayerischer Brauerbund eV

Bavaria NV v Bayerischer Brauerbund eV

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FEDERAL COURT OF AUSTRALIA
Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428
INTELLECTUAL PROPERTY – trade mark – opposition to registration under Trade Marks Act 1995 (Cth) – applicant seeks registration of composite trade mark in respect of beer and other beverages – trade mark includes the word BAVARIA, three references to “Holland” and a number of non-word elements – whether trade mark capable of distinguishing applicant’s goods – whether trade mark inherently adapted to distinguish – whether use of trade mark would be likely to deceive or cause confusion or be contrary to law – evidence that Australian consumers would not draw a link between the word “Bavaria” and the German State as the origin of the beer – evidence that Australian consumers would not think that the applicant’s beer has characteristics attributable to a Bavarian origin – whether trade mark contains or consists of a sign that is a geographical indication – sign must be recognised in country of origin – modes of recognition – whether “Bavaria” equates with recognised signs – whether defence in s 61(2)(c) available – whether there is discretion in s 55 of the Act to refuse registration of a trade mark where no ground of opposition is made out
Commerce (Trade Descriptions) Act 1905 (Cth)
Trade Marks Act 1995 (Cth) ss 6, 41, 42(b), 43, 55, 59, 61, 92(4)(b)
Trade Practices Act 1974 (Cth) s 52, 53(a), 53(c), 53(d), 53(eb)
Angelides v James Stedman Hendersons Sweets Limited (1927) 40 CLR 43 considered
Apand Pty Limited v The Kettle Chip Company Pty Limited (1994) 52 FCR 474 considered
Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 8) (2008) 75 IPR 557 cited
Campomar Sociedad, Limitada v Nike International Limited (2000) 202 CLR 45 cited
Chancellor, Masters and Scholars of the University of Oxford (Trading as Oxford University Press) v Registrar of Trade Marks (1990) 24 FCR 1 referred to
Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 considered
Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 referred to
ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 cited
Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1 considered
Pfizer Products Inc v Karam (2006) 237 ALR 787 cited
Polo Textile Industries Pty Limited v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227 cited
Re The Registered Trade Mark “Yanx”; ex parte Amalgamated Tobacco Corporation Limited (1951) 82 CLR 199 cited
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 cited
Scotch Whisky Association v De Witt (2007) 74 IPR 382 referred to
Sports Cafe Ltd v Registrar of Trade Marks (1998) 42 IPR 552 considered
Davison, Johnston and Kennedy, Shanahan’s Australian Law of Trade Marks & Passing Off (3^rd ed, Lawbook Co, 2003)
Lahore, Patents, Trade Marks & Related Rights (LexisNexis Butterworths, Looseleaf Service)
BAVARIA NV v BAYERISCHER BRAUERBUND eV
NSD 1395 of 2006
BENNETT J
30 APRIL 2009

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2009] FCA 428
Decision Date: 30 April 2009

CaseChat Overview and Summary

The dispute in Bavaria NV v Bayerischer Brauerbund eV involves Bavaria NV, the applicant, and Bayerischer Brauerbund eV (BBA), the opponent. The central issue revolves around the opposition to the registration of the trade mark BAVARIA, specifically concerning the potential for deception or confusion regarding the geographical origin and quality of the beer associated with the trade mark. The case was heard in the Australian Intellectual Property Tribunal, where the Delegate initially ruled in favor of BBA, finding that the trade mark BAVARIA was likely to deceive or cause confusion among a substantial number of Australians who associate Bavaria with beer produced in Bavaria. This association, according to the Delegate, is independent of the actual reputation of Bavaria NV’s beer in the Australian market.

The legal issues the court had to address included whether the prominent word "BAVARIA" in the trade mark creates an inescapable connotation that the beer originates from Bavaria and whether this connotation would likely deceive or cause confusion among consumers. BBA argued that the use of "BAVARIA" in the trade mark inherently misrepresents the origin of the beer, given that it is not produced in Bavaria. Additionally, BBA submitted that the word "BAVARIA" connotes a high standard or quality of brewing, similar to that associated with Bavarian beer, thereby reinforcing the misrepresentation of origin.

The court, while acknowledging the evidence presented by BBA regarding the reputation of Bavaria for beer and the presence of establishments in Australia that promote Bavarian themes and beer, found that the Delegate's decision was sound. The court held that the connotation of the trade mark BAVARIA, which implies that the beer originates from Bavaria, was established and that this connotation was likely to deceive or cause confusion among consumers. The secondary meaning inherent in the mark, as required by s 43 of the Act, was found to be present and sufficient to ground the opposition.

The final orders of the court included standing the matter over to 12 May 2009 for the making of further orders and for submissions on the question of costs. This decision reinforces the importance of ensuring that trade marks do not mislead consumers regarding the origin or quality of the goods they represent.

Orders

Orders of the court

1. The matter be stood over to 12 May 2009 for the making of orders and for submissions on the question of costs.

Note:

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

BENNETT J

While BBA continues to press both alleged connotations in respect of the grounds of opposition based on ss 43 and 42(b) of the Act, the submissions of both parties focussed on the first of these connotations.The Delegate’s decision The Delegate was of the view that, for a substantial number of Australians, as a matter of “common knowledge”, Bavaria means more than just the name of a German State and that ‘a substantial number of Australians will associate Bavaria with beer, both the brewing and drinking thereof’’. In the absence of evidence of the knowledge in the Australian marketplace of Bavaria NV’s beer prior to 22 August 2000, the priority date of the application, the Delegate was unable to take account of the asserted reputation of that beer or whether consumers would take BAVARIA as an indication of trade source and not of geographical origin. She concluded that the prominent word BAVARIA was not qualified by the words HOLLAND or HOLLAND BEER. BAVARIA, she found, connotes that the beer is from Bavaria. Accordingly, she found that the trade mark is likely to deceive and/or cause confusion and that the s 43 ground of opposition was made out.The connotations BBA submits that the prominent word BAVARIA in and of itself contains the inescapable connotation that the beer sold under the trade mark comes from Bavaria when it does not or is made in Bavaria which it is not. Thus, BBA submits, there is a clear misrepresentation of origin inherent in the mark. BBA says that this primary connotation arises from the use of a place name, with or without emblems, but that the banner, shield and crest devices (as well as the barley) reinforce this connotation. The second connotation which is said to arise from the use of the word BAVARIA is that Bavaria NV’s beer is of a high standard or quality of brewing consistent with beer made in Bavaria. BBA says that, even if people were unaware that Bavaria is a place well-known for beer, the use of the word BAVARIA still connotes that the beer comes from Bavaria. The evidence that Bavaria has a reputation for beer and had such a reputation as at the priority date is said by BBA to make the connotation stronger. BBA has established that tourist guides refer to Bavaria’s reputation for beer and refer, for example, to the Oktoberfest beer festival held there. BBA has led evidence of the percentage of Australians born in Europe, the number of Australians who have visited Europe between 1986 and 1995, the estimated number of Australians who have visited Bavaria between 1995 and 2006 and the number of Australians who live in Bavaria. There are also establishments in Australia that promote a Bavarian theme and Bavarian beer. As Bavaria NV emphasises, s 43 of the Act requires not only that the connotation of the trade mark be established but also that, because of the connotation, the use of the trade mark in relation to the goods will be likely to deceive or cause confusion. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself (Pfizer Products Inc v Karam (2006) 237 ALR 787 at [53] per Gyles J). The underlying purpose of s 43 is to prevent the public being deceived or confused as to the nature of the goods by reason of the secondary meaning connoted by the mark in question (Pfizer at [53]).

Ratio Decidendi

Legal Principle Established

Established by: BENNETT J

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