BeerCo Limited

[2022] ATMO 165

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2109854 (Class 32) – BeerCo figurative – in the name of BeerCo Limited.

Delegate:	Blake Knowles
Representation:	Applicant: Andrew Sykes of counsel, instructed by Media Arts Lawyers.
Decision:	2022 ATMO 165 Request to be heard under section 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 not capable of distinguishing – application rejected.

Background

1. This is a decision on examination of trade mark application number 2109854 (‘Application’) filed by Beerco Limited (‘Applicant’). The Application was filed on 6 August 2020 (‘Relevant Date’), for the following trade mark:

   (‘Trade Mark’)

2. Registration is sought for Class 32: Beer (‘Goods’). Prior to the hearing, the Applicant also requested that the Application be subject to the following colour endorsement: ‘The trade mark registration is limited to the colours RED and GREEN as shown in the representation of the trade mark above’ (‘Colour Limitation’).

3. The Trade Mark was examined as required by the Trade Marks Act 1995 (Cth).[1] The examiner raised a ground for rejection under s 41 on the basis that the Trade Mark was to no extent inherently adapted to distinguish the Goods and therefore fell for consideration under s 41(3). The Applicant filed submissions and the examiner maintained the ground for rejection.

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

4. The Applicant requested a hearing by videoconference. The matter was heard before me, as a delegate of the Registrar of Trade Marks, on 5 September 2022. Andrew Sykes of counsel appeared on behalf of the Applicant, instructed by Christopher Cao of Media Arts Lawyers.

   Evidence

5. The Applicant relies on a declaration by Christopher Cao, Trade Marks Attorney for the Applicant, made on 23 August 2022, with Exhibit CC-1.

6. Mr Cao declares that the Trade Mark has been registered in numerous other jurisdictions, namely, New Zealand, Singapore, the Philippines, Indonesia, Japan, and Cambodia (‘Overseas Registrations’). Certificates for the Overseas Registration are annexed to the declaration.  

   Discussion

7. Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Goods of the Applicant from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Goods, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Goods, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that it did not in fact distinguish the Goods based on the extent of its use at the Relevant Date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that due to the combined effect of the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the Relevant Date and/or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Goods (s 41(4)).

8. The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:

   His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, 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. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested 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, that is to say, 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.[2]

   [2] (1964) 111 CLR 511, 514.

9. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[3] The High Court also confirmed that the test does not encompass the desire by other traders to use a sign which in relation to the goods is allusive or metaphorical.[4]

   [3] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

   [4] Ibid, [59].

10. In Aldi Foods Pty Ltd v Moroccanoil Israel Ltd, Perram J (with whom Allsop CJ and Markovic J agreed), said:

    Further, it is not just the desire of traders to use the word which is relevant; it is also their potential desire to use words nearly resembling that word. So here one must examine not just the inherent adaptability to distinguish the Respondent’s goods of MOROCCANOIL but also of MOROCCAN OIL, MOROCCAN-OIL and perhaps, without deciding, OIL OF MOROCCO. The necessity so to reason was referred to by Kitto J in Clark (at 513) and reflects the reality that once registration of a mark is achieved, it will be infringed not only by persons using it without its owner’s permission but also by those using ‘a sign that is substantially identical with, or deceptively similar to, the trade mark’: s 120(1) of the Act. Furthermore, account must be taken of the fact that no attempt has been made in this case to limit the mark by stylistic or device elements; it is purely a word. As Yates J explained in Apple at 517 [18] that matters because it means that if the word proceeds to registration it will give the Respondent a monopoly on the use of the word (or words) in whatever form they may be ultimately rendered. [5]

    [5] [2018] FCAFC 93, [125].

11. The examiner considered that the word CO is an abbreviation for COMPANY, and therefore the Trade Mark as a whole indicates that the Goods are produced by a ‘beer company’.

12. The Applicant concedes that the term BEER COMPANY is not sufficiently inherently adapted to distinguish in relation to the Goods, as it has a direct signification, being beer supplied by a beer company. However, the Applicant contends that the Trade Mark, once the Colour Limitation is applied, is not a sign ‘nearly resembling’ BEER COMPANY and as such it is sufficiently inherently adapted to distinguish. The Applicant submits, and I agree, that the phrase ‘nearly resembling’ in the context of the test to be applied under s 41 means either ‘substantially identical’ or ‘deceptively similar’.

13. The Applicant refers to Bavaria NV v Bayerischer Brauerbund eV (‘Bavaria’),[6] where Bennett J considered the registrability of the following trade mark:

    [6] [2009] FCA 428.

14. Bennett J held:

    The use of the word “Bavaria” by a number of breweries suggests that the word alone is not intended to be used to distinguish the goods or services of any particular brewery. Rather, other traders who wish to use the word “Bavaria” would rely on differentiating features, such as other words, devices and symbols, to distinguish their goods. The features of the trade mark other than BAVARIA cannot simply be dismissed as “window-dressing”.

    This case is not about whether Bavaria NV can register a trade mark for the word “Bavaria”. It is whether the trade mark, which contains BAVARIA, is capable of distinguishing Bavaria NV’s goods from those of other traders, including traders who sell beer from Bavaria. On the assumption that traders of beer from Bavaria may wish to use “Bavaria” on their labels or in their trade marks, the way to distinguish their goods is to create a distinctive trade mark or label by the use of other words and devices. Bavaria NV has utilised the Swinkels family crest and other devices, repeated references to “Holland” and the prominent placing of HOLLAND below BAVARIA to draw attention to the fact that BAVARIA HOLLAND BEER is a specific product, the source of which is Lieshout, Holland.

    Although the matter is not without difficulty, I have come to the view that the trade mark is inherently adapted to distinguish Bavaria NV’s goods. Accordingly, the ground of opposition based on s 41 of the Act is not made out.[7]

    [7] Ibid, [73] to [75].

15. To further emphasise the need to consider the Trade Mark in its entirety, the Applicant also cites REA Group Ltd v Real Estate 1 Ltd, where Bromberg J, in comparing the trade marks and  (for the purposes of determining deceptive similarity) said:

    The realestate.com.au logo has arguably three components: a red house in a button device; the words “realestate”; and the term “.com.au”. No component on its own is an essential feature as no component is sufficiently prominent. The button device is distinctive but subsidiary. The term “.com.au” is also subsidiary for reasons earlier given. The words “realestate” are descriptive and of themselves do not suggest a connection with a source business or brand.[8]

    [8] [2013] FCA 559, [232].

16. The Applicant refers to various other trade mark registrations that include a descriptive word combined with ‘Co’ as examples of stylised or composite trade marks that have been accepted as prima facie registrable by delegates of the Registrar, namely:

17. The Applicant submits that certain elements of the Trade Mark are unique and eye catching, particularly the circular patterns that appear in the letters at the end of the Trade Mark. I also note that the letter B at the start of the Trade Mark has some stylisation. These elements are indicated below:

18. I agree with the Applicant’s submission that the Trade Mark must be considered in its entirety, and that traders in alcoholic beverages may use descriptive terms as significant elements in stylised or logo trade marks that are intended to distinguish based on their composition as a whole. However, each case must be judged according to its own merits.

19. In Bavaria, the trade mark in question contained numerous word and device elements which together created a significant visual impact far beyond that created by the word ‘Bavaria’ alone. Even considering the multiple other distinctive elements in that trade mark, Bennett J’s conclusion that the trade mark was inherently adapted to distinguish was reached ‘not without some difficulty’.

20. In this case, the colour combination and elements of stylisation are not nearly so prominent as the other elements in Bavaria. The colours red and green, while aesthetically pleasing, are not particularly unusual in the context of the Goods. Further, the elements of stylisation are subtle and not likely to be remembered either for their own sake, or for the sake of any distinctiveness they impart on the Trade Mark as a whole.  

21. I have also considered the Overseas Registrations, and the registration of other ‘Co’ marks in Australia cited by the Applicant. While such precedent can be a useful guide, it does not dictate a particular outcome in this case. Assessing the present Trade Mark, I consider that the relevant tests under Australian law lead me to an obvious conclusion.

22. On balance, I am satisfied that the Trade Mark has only some inherent adaptation to distinguish, and that it so nearly resembles the descriptive term ‘Beer Company’ such that other traders, without improper motive, would desire to use it in relation to the Goods. To put it another way, I consider that use of the term ‘Beer Company’ as a trade mark by another trader would likely infringe the present Trade Mark (even if subject to the Colour Limitation).

23. For these reasons, and noting that the Applicant has not filed any evidence of use or intended use, I am satisfied that the Trade Mark is not capable of distinguishing, having regard to the matters set out under s 41(4).

    Decision

24. Under s 33(3)(b), if I am satisfied that there is a ground for rejection and the Applicant has been given an opportunity to be heard, then I must reject the Application.

25. Therefore, I reject the Application.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    23 September 2022