Beer Cartel Pty Ltd v Pirate Cartel Distribution Pty Ltd

[2019] ATMO 12

TRADE MARKS ACT 1995

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

Re:Opposition by Beer Cartel Pty Ltd to registration of trade mark application 1797050 (35) - PIRATE CARTEL (Logo) - in the name of Pirate Cartel Distribution Pty Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Spruson & Ferguson

Applicant: Self represented

Decision:

2019 ATMO 12

Trade Marks Act 1995

Section 52 opposition to registration - sections 44, 43, 60, and 62A. Section 44 considered: trade marks not deceptively similar ground not established - no evidence filed in relation to sections 43, 60, and 62A.

Opposition to registration not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Pirate Cartel Distribution Pty Ltd (‘the Applicant’) has made application to register the trade mark which appears below:

Application No: 1797050

Priority Date:  21 Sep 2016

Services:Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Wholesaling of goods (by any means)

(‘the Services’)

Trade Mark:  

(‘the Trade Mark’)

1. The Trade Mark was examined as required by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 16 February 2017.

2. On 1 March 2017, Beer Cartel Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.

3. On 24 March 2017, the Opponent filed a Statement of Grounds and Particulars which, as rectified on 1 May 2017, details grounds under sections 44 (relying on registration 1336808), 58A, 43, 60, and 62A.

4. On 25 May 2017, the Applicant filed a Notice of Intention to Defend.

5. Neither party has filed evidence in relation to these proceedings.  Both parties have been informed of their right to be heard or to make written submissions.  Neither party has requested to be heard and the Applicant has filed written submissions by its attorneys Spruson and Ferguson.

6. Now in order that the Registrar may discharge her obligation under section 55 to decide this matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars 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]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

2. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[2] of the opposed application and I note that where sections 44 and 60 specifies the ‘priority date’ that is here the same as the filing date.

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

Other

1. I note that this matter is related to the proceedings in Beer Cartel Pty Ltd v Pirate Cartel Distribution Pty Ltd[3] (‘the Prior Decision’) in which the Registrar’s delegate found (in relation to the word mark PIRATE CARTEL) that grounds under sections 44, and 43, were not established.

   [3] [2018] ATMO 71.

Section 44

1. In the absence of evidence filed by either party, section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   […]

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

   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.

2. The Opponent relies upon the trade mark registration appearing below:

Registration No:              1336808

Priority Date:  16 December 2009

Goods/Services:              Class 32: Beer, ales and lagers

(‘the Opponent’s Goods’)

Class 33: Alcoholic beverages (except beer)

Class 35: Wholesale and retail of beer, ales, lagers and other alcoholic beverages; wholesale and retail of gift vouchers for beer, ales, lagers and other alcoholic beverages, wholesale and retail of glassware and books relating to beer, wholesale and retail of beer mugs and glasses

Class 41: Beer appreciation events; beer tasting events

(‘the Opponent’s Services’)

Trade Mark:  BEER CARTEL

1. In order to found this ground the Opponent must establish each of the following:

   That the registration upon which it relies has a priority date earlier than that of the Trade Mark; and that

   The Services are similar to the Opponent’s Services or that the Services are closely related to the Opponent’s Goods; and that

   The parties’ trade marks are substantially identical or deceptively similar.

2. I note that the registration has an earlier priority date than the Relevant Date and that, as the wholesale services contained within the Services include the wholesale of beer within the Opponent’s Services, the services of the parties include the same services.

3. It remains to be decided whether the parties’ trade marks might be substantially identical or deceptively similar.

4. Concerning ‘substantial identity’ in the Prior Decision the Registrar’s delegate stated:

   When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [‘Shell’] Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   The Trade Mark and the Opponent’s Trade Mark are set out below:

   [4] [1963] HCA 66; (1963) 109 CLR 407, [12].

   PIRATE CARTEL

   BEER CARTEL

   On a side by side comparison there is a clear difference between the respective trade marks, being the replacement of the word ‘pirate’ (in the Trade Mark) with the word ‘beer’ (in the Opponent’s Trade Mark). The words ‘pirate’ and ‘beer’ are essential features of the respective marks. In particular the word ‘pirate’ is not a descriptive word to be discounted in the comparison. This difference between the respective trade marks is sufficient for me to conclude that the respective trade marks are not substantially identical.

5. I agree with the Prior Decision and, in doing so, note that the differences between the trade marks under consideration here are greater than those involved in the Prior Decision.

6. The trade marks of the parties are not substantially identical.

7. In the Prior Decision, after quoting relevant case law from Shell (at 13) and Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd[5] the delegate concluded:

   I do not find that the respective marks are deceptively similar. While the marks share the word ‘cartel’, the replacement of the word ‘beer’ with the word ‘pirate’ in the Trade Mark results in a visual, aural and conceptual difference between it and the Opponent’s Trade Mark. The word ‘pirate’ is not in any way descriptive of the Applicant’s Services and operates to clearly distinguish the Trade Mark and the Opponent’s Trade Mark.

   I find that as a result of the significant visual, aural and conceptual differences between the marks when considered as a whole, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Opponent’s Trade Mark.

   [5] [2012] FCA 1022, [38]-[46].

8. I agree with the above and similarly find that the trade marks of the parties are not deceptively similar.

9. The Opponent has not established its ground under section 44 of the Act.

Section 43

1. Section 43 of the Act provides:

   43Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. In its Statement of Grounds and Particulars the Opponent asserts:

   The use of the word "Cartel" by the applicant in its proposed trade mark, in circumstances where the opponent's registered trade mark also contains this prominent term, the opponent operates in the same market and provides the same goods and services as the applicant and the applicant is not only aware of but has done business with the opponent, can only be considered to be used for an improper purpose.

   The use of the applicant's proposed trade mark is likely to deceive or cause confusion because the common use of the term 'Cartel' suggests an association between the two trade marks. Customers are likely to be confused as to the origin of the goods or services provided by the applicant and will be unable to identify that the two trade marks belong to separate businesses.

   The opponent has an existing business which has been operating for over 9 years using the prominent term "Cartel" in its trade mark. The customers of the opponent are highly likely to be confused by the use of the applicant's trade mark and are likely to mistakenly believe that the applicant's business is a new division or branch of the opponent.

   Because of this likely confusion, the opponent's business is likely to be damaged and the applicant is likely to gain an unfair advantage by building a business based upon deceiving and confusing consumers.

3. Implicitly the ground as stated relies upon both a reputation of the trade mark upon which the Opponent relies (of which there is no evidence) and also explicitly involves a comparison of that trade mark with the Trade Mark.  However, as observed by the delegate in the Prior Decision at [25]:

   To establish a ground of opposition under s 43 of the Act, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question ... [6]

   In Winton Shire Council v Lomas Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[7]

   [6] [2006] FCA 1663; (2006) 70 IPR 599, [53].

   [7] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

4. Accordingly, as there is no evidence of a connotation within the Trade Mark itself, the ground is not established.

Section 60

1. 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.

2. In its Statement of Grounds and Particulars the Opponent asserts:

   The registration of the applicant's trade mark in respect of the stated goods or services is opposed on the ground that the opponent's trade mark "Beer Cartel" (registered trade mark no 1336808) has, before the priority date for the registration of the applicant's trade mark, acquired a reputation in Australia.

   The opponent's registered trade mark has been registered and continuously used in relation to the same goods and services as the applicant's proposed mark for over 9 years. The applicant knows of and has done business with the opponent during this time. The growth of the opponent's business under the registered trade mark "Beer Cartel" including increased sales, database, following and exposure is testament to the reputation that has and will continue to be built in Australia by the opponent.

   The opponent states that the use of the applicant's trade mark prior to the priority date has already caused confusion in the market and has the real potential to damage the reputation, goodwill and business of the opponent and to provide to the applicant an unfair advantage by springboarding its own reputation on the basis of the existing goodwill owned by the opponent.

3. However, the reputation of a trade mark is established by evidence of that reputation[8] and the Opponent has not filed evidence in support of the opposition.

   [8] See, for example, McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 per Kenny J at [86]

4. The ground under section 60 is not established.

Section 62A

1. Section 62A of the Act 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.

2. In its Statement of Grounds and Particulars the Opponent asserts:

   The registration of the trade mark is opposed on the ground that the application was made in bad faith.

   For at least 2 years prior to the priority date of the applicant's proposed trade mark, the applicant was aware of Beer Cartel and, in fact, did business with Beer Cartel. The applicant knew the market that the opponent operated in and the types of goods and services delivered by the opponent.

   With full knowledge of the opponent's business and trade mark, on the 14th July 2016 the applicant made an announcement that it intended to create a business to be known as Pirate Cartel.

   On the exact same day Beer Cartel contacted the applicant to inform them that the trade mark was deceptively similar to its own registered trade mark and use of their proposed trade mark could lead to confusion in the market.

   Despite being on notice of the opponent's rights in its registered trade mark and receiving an invitation to develop a different non-infringing name prior to the applicant commencing trade under the infringing name, the applicant ignored the contact made by the opponent and took immediate steps to deceptively gain rights in the infringing name by seeking trade mark registration. One week later (21st July 2016) the trade mark application firstly for Pirate Cartel was lodged (trademark 1784130), and then on 21st September 2016 the trademark for Pirate Cartel Distribution (trademark 1797050) was lodged.

   The applicant had the opportunity to develop any name it desired for its business but chose a name that contains the same prominent feature as a direct competitor in its market. A competitor who has demonstrated growth and built a reputation over more than 9 years of trade.

3. However, the Opponent’s assertions of interactions between the parties prior to the Relevant Date are not supported by evidence of those dealings or what those dealings were.

4. This being so, the ground under section 62A is not established.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has not established its opposition to registration.

3. 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 that the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant has sought its costs in this matter and, as it is the successful party, it is appropriate in terms of section 221 of the Act that I award costs against the Opponent at the official scale set out at Schedule 8 of the Trade Marks Regulations 1995.

Iain Thompson

Hearing Officer

Trade Marks Hearings

31 January 2019