Belvedere v Negro International Pty Ltd

[2004] ATMO 8

TRADE MARKS ACT 1995

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

Re:Opposition by Belvedere to registration of trade mark application 853901(33) - SOBIESKI  - in the name of Negro International Pty Ltd.

Delegate:	Terry Williams
Representation:	Opponent: Trevor Stevens, solicitor, Davies Collison Cave Applicant: Michael Squires, patent attorney Phillips Ormonde and Fitzpatrick
Decision:	S 52 opposition: Applicant has the superior claim to ownership.  Use will not reasonably lead to deception or confusion.  Trade mark to be registered

Background

1. Negro International Pty Ltd (Negro) applied to register the trade mark SOBIESKI on 13 October 2000 in class 33 in respect of "alcoholic beverages other than beers".  The Trade Marks Office advertised the application as having been accepted for possible registration, but this is now opposed by Belvedere, a French Société Anonyme.

2. The opposition has followed the provisions of Part 5 of the Trade Mark Regulations 1995, with both sides relying on evidence to support their positions.  In due course the matter came on for a hearing, which I conducted.  At the hearing Belvedere was represented by Trevor Stevens, a patent attorney, of the patent attorney firm of Davies Collison Cave.  Negro was represented by Michael Squires, a patent attorney of the firm of Phillips Ormonde and Fitzpatrick.  I am now to decide the matter under delegation from the Registrar of Trade Marks.

   Evidence:

3. Belvedere relied for its evidence in support on a single declaration by Jaques Rouvroy.  Mr Rouvroy is an officer of the opponent.  His company designs and manufactures the silk-finish bottles that are said to be a feature of the opponent's "luxury" vodka.  This is distilled in Poland.  The actual distilling company has changed over time, but it was initially a state-owned enterprise.  A second Polish company, one that is owned outright by Belvedere, controls subsequent distribution of the vodka outside Poland.

4. In answer to the opposition, Negro filed and served a copy of a declaration by Marco Negro.  In reply to this, Belvedere relied on a second declaration by Mr Rouvroy and one by Craig Douglas, a commercial investigator.  These latter declarations are critical of certain aspects of Mr Negro's evidence.  Therefore, Mr Negro sought, and I granted, permission to serve further evidence about certain defined matters.  This evidence consists of a further declaration by Mr Negro.  I will deal with the substance of these matters below.

   Evidence considered

5. This is a matter where the evidence itself is not complex.  What of it can be accepted at face value, and what it establishes, determines the matter.  I will therefore review the evidence in some detail, with the benefit of the argument presented to me by the two advocates, Mr Stevens for Belvedere and Mr Squires for Negro.

6. Basically, the first Rouvroy declaration establishes that Belvedere is a French holding company that controls the distribution of, among other things, a Polish vodka sold under the trade mark SOBIESKI.  This vodka has been available outside Poland since 1999, when it entered the U.S. market in November of that year.  It was first produced, according to Mr Rouvroy, on 20 June 1998.  Mr Rouvroy further declares that his company made initial enquiries in search of an Australian distributor in early 2000 and that subsequently:

   On 6 October 2000 Belvedere, through its subsidiary company Belvedere Dystrybucja, was notified by Yanpex Spolka z.o.o. that its commercial agent in Australia was Negro International and that Negro International was willing to import and distribute SOBIESKI vodka in Australia. 

   On 14 November 2000 my company's distributor Belvedere Dystrybucja despatched to Negro International brochures and advertising material featuring SOBIESKI vodka.  Subsequently, on 1 March 2001 my company's distributor Belvedere Dystrybucja despatched to Negro International on a trial basis bottles of Vodka under the SOBIESKI label.

7. Exhibit G of the Rouvroy declaration, said to consist of copies of correspondence which attest to these transactions, reveals a picture that in itself is less than clear and does not entirely match Mr Rouvroy's analysis.  No document bearing a date of 6 October makes any mention of the SOBIESKI trade mark.  The document dated 6 October 2000 is in relation to "Vodka Metropolis", apparently a brand of vodka supplied by Belvedere[1]. 

   [1] I think it is beyond coincidence that this, too, is a trade mark that Negro applied to register.

8. I then come to Mr Negro's evidence.  His company sells food products such as olive oils and alcoholic beverages including vodka.  About 30% of the business is under brands created by Negro.  Apparently, it was at a family brainstorming session that the trade mark SOBIESKI came up.  Mr Negro has declared that these brainstorming sessions are done after members of his family conduct "a lot of research".  Mr Negro understands that SOBIESKI is the name of a Polish king from the 17^th century.  He recalls:  "My brother Danny came up with this name after speaking to a friend of his".  He does not declare just who the friend was, or what he knew about Polish history or Polish vodkas but, if I take his declaration at face value, the brainstorming happened in early to mid 1998.  SOBIESKI was not in use by Belvedere prior to June of that year.

9. The name was adopted by Negro and labels commissioned.  His company was invoiced for these in May 1998.  Mr Negro goes on to say that it was only subsequently that he encountered Belvedere, indirectly.  Apparently Negro uses the services of Overseas Intertrading to import alcoholic beverages from Europe, particularly Poland.  Mr Negro has declared that this was how he first became aware that the brand SOBIESKI was in existence outside Australia and was being produced by another manufacturer.  He became concerned that they too might claim a right in the trade mark that he asserts belongs to his company. 

10. Mr Negro exhibits to his declaration an invoice dated 7 May 1998 for the labels that his company had commissioned.  (This is before any dealings are alleged to have occurred between his company and Belvedere and its agents.)  There is also some preliminary artwork.  Finally, there is a document headed Tax Invoice, for 60 bottles of such vodka to be delivered to Anderson Cellars.

11. There are various loose ends about this evidence, which Mr Rouvroy and Mr Douglas attempt to tease out in order to unravel the evidence in its entirety.  Mr Rouvroy points out, in his second declaration, that the date of the Tax Invoice was well before the introduction of the Goods and Services Tax in Australia.  He therefore implies, I think, that the document was not prepared at the time that is indicated.

12. Mr Douglas, for his part, attempts to discredit the invoice on another basis.  He provides a photograph of the Anderson Cellars, and interviews one of the principals of that business.  That person, a Mr Leong, was apparently of the view that "that document is wrong, I will go to court to say so".  Regrettably, Mr Leong has not had the courage of his convictions and there is no declaration from him about what, precisely, is wrong with the invoice.  Mr Douglas attributes to Mr Leong "a statement to the effect that because the business known as Anderson Cellars was very small he would never have ordered sixty bottles of any spirit at any one time, let alone sixty bottles of vodka".

13. At the end of the evidence in reply stage, Mr Squires, as attorney on behalf of Negro, applied for permission to bring in further evidence.  He had received from the applicant copies of three further invoices relating to sales of, amongst other things, SOBIESKI vodka.  He had been informed that Mr Negro was searching for the "original signed copies" of such invoices, and that independent evidence corroborating such sales would be available.  I granted him permission to bring in evidence that establishes that there were court proceedings between his company and Mr Leong over the lease of the Anderson Cellars business.  I did not grant him permission to bring in further invoices.  I remain of the view that these documents are not immune to question[2].  Allowing more from the same source will not remedy this.

    [2] At the hearing, I pointed out to Mr Squires that what Mr Negro initially said was the "original file copy" of the Tax Invoice now in evidence is in fact a signed document, not a copy.  Mr Squires was not able to explain why this would be, when an invoice, by its nature, is a document sent to the customer and of which only a simple copy is usually retained.

14. I gave the parties the opportunity to make representations by phone before giving my final direction on the extent of the evidence.  Mr Squires did not take up this opportunity.  This is disappointing, because there emerged at the hearing, when it was finally set down, a new and last-minute discovery:  it may be, said Mr Squires, that his client uses a New Zealand accounting package, wherein the heading Tax Invoice is a standard and unalterable feature.  Why this was not mentioned earlier is beyond me.

15. Mr Squires, however, was more successful in countering the investigations of Mr Douglas.  Mr Douglas had made some preliminary and unfinished investigations into the ordering by Negro of labels from the printer.  It seems that the printer in question does exist, and has branches in both Adelaide and Melbourne.  The firm's Adelaide-based accountant, when viewing the invoice, indicated that some documents from 1998 are misplaced and others have been destroyed.  The art director of the printing company was overseas and Mr Douglas ended up speaking to Ms Miskinis, an officer in Melbourne, who was able to confirm only that the writing on the invoice was not hers and that she had not seen "invoices written like this before".  It appears that she was not employed by the printers in 1998 and I have no way of knowing whether she was able to hold a competent opinion about documents from that year, particularly one that is (apparently) of a type that would normally go via the Adelaide office.

16. There is also some evidence about the proportion of shelf space given over by Anderson Cellars to alcoholic products.  The evidence of Mr Douglas suggests that, surprisingly, in view of its name, it does not devote a great deal of space to alcoholic products, which occupy only 10-15% of the shelf space on the premises.  However, as Mr Squires pointed out at the hearing, this is more or less immaterial:  from a photo that is in evidence, at least some of the alcohol is sold from stacks or pallet-loads put directly on the floor.  From the photograph, the business appears to be just what the name suggests, a liquor store.

17. At the hearing, there was some detailed discussion of the evidence of communications between Belvedere and its affiliates and Negro. Mr Negro does not dispute the essence of the claimed dealings to which Mr Rouvroy has already declared.  This would ordinarily be a factor that carried great weight but, because of reasons that I will set out below, I do not find the detail of Mr Rouvroy's evidence to be clear and cogent in the first place. 

18. I accept that, on 14 November 2000, Belvedere supplied brochures and advertising material to Negro.  Then, on 1 March 2001, Belvedere supplied, on a trial basis, "bottles of vodka under the SOBIESKI label". 

19. There is some discrepancy between what Mr Rouvroy describes the trade marks to be and the actual faxes supporting his claims.  The November 2000 fax appears to relate to "Vodka Jan III Sobieski", but the fax confirming the dealings in March 2001 refers to "Sobieski Vodka "Blue", "Red" and so forth.  Exhibit B somewhat resolves this, in that it shows a bottle that most people would take to be branded SOBIESKI.  The words and numeral JAN III are above this, in much smaller script.  Were the matter to remain in doubt, I would reduce the weight I give to Mr Rouvroy's assertions.  His ability to give first-hand, detailed evidence about events and conversations in Poland is, in my view, open to question and his claims about what is established by the documents dated October 6 and now in evidence do not appear to be correct.  Exhibit G mentions phone conversations with the intermediary company representing Negro.  Given the evidence in the faxes that make up exhibit G, I can only assume that Mr Rouvroy's analysis of these matters is based heavily on the say-so of other people.  For this reason, I cannot give full credence to his assertion that in October 2000 Negro stood ready to import, specifically, SOBIESKI vodka.  There is therefore no evidence of an offer to trade in goods under that trade mark at that time.

20. I fully accept that, on the other side of the scales, there are some problems with the applicant's evidence in answer.  The way was open to Mr Negro to bring in his independent corroboration, but he did not take it up.  The way was open to him to recall, earlier in the process, that he is perhaps using New Zealand software that will head a document Tax Invoice while still calculating the sales tax that was applicable at the correct rate for 1998.  He did not do so.  It may be that Mr Rouvroy remains of the apparent view that the evidence of first use by Negro is false, supported by documentation that has been tampered with or is bogus.  However, I find the unsworn, second-hand comments of Mr Leong, and the unfinished and inconclusive investigations of Mr Douglas do not have enough weight to counter the seriousness of the provisions of the Declarations Act of Victoria, under which Mr Negro has given evidence.

21. I note Mr Stevens relied on case law about the extent of the responsibility to establish use, where a single instance is relied on:  re NODOZ trade mark (1962) RPC 1.

    It may well be, of course, that in a suitable case one single act of user of the trade mark may be sufficient; I am not saying for a moment that that is not so; but in a case where one single act is relied on it does seem to me that that single act ought to be established by, if not conclusive proof, at any rate overwhelmingly convincing proof.  It seems to me that the fewer the acts relied on the more solidly ought they to be established.

22. Here, there is more.  There is a declaration supported by details of the ordering of labels bearing the trade mark in question.  There is also an invoice for a sale of goods under the trade mark, details of the recipient of the goods and a conspicuous lack of first-hand evidence about the alleged wrongness of the invoice in question.

23. There are other matters arising from the evidence, but I will deal with them at the appropriate times under the relevant headings.

    Issues Considered

24. Mr Stevens, for Belvedere, pursued only four grounds of opposition:

    ·    ownership (s 58),

    ·    misdescriptive and thus contrary to law (s 42),

    ·    connotation likely to deceive or cause confusion (s 43), and

    ·    conflicting trade mark with a prior reputation likely to cause deception or confusion at the priority date (s 60).

    Ownership (s 58)

25. Mr Stevens opened his attack by noting that the claim to ownership of an unused trade mark is to be assessed at the filing date of the application.  He argued that the present mark had not been used by the applicant and that his client, Belvedere, had therefore a superior title by right of prior use.  He said that Negro could not rely on such use as it had made in relation to vodka because the label as so used was not substantially identical to the mark applied for. 

26. Mr Squires was dismissive of this argument.  Firstly, as he noted, comparisons with the usual case, where the allegedly different marks are used by different parties, may not be an appropriate standard.  Here, what is at issue is a mark used, and an application made, by the same party.  Secondly, as he noted from cases such as Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, drawing in turn from earlier law[3]: points of difference must, when the marks are viewed side-by-side, be weighed against points of similarity.  Per Gummow J in Carnival, supra, "It requires a total impression of similarity to emerge from a comparison between the two marks.  In a real sense a claim to proprietorship of the one extends to the other".

    [3] Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414.

27. Here, the label used by Negro is manifestly a SOBIESKI label, applied to a bottle of vodka.  True, that word appears with other features including an eagle in a heraldic form that appears to be a symbol of Poland, and the mark is used in the traditional Polish colours, red and white, with the descriptive words Premium Vodka.  However, this is clearly separable from ownership of the trade mark SOBIESKI.  To lose track of this because that word is used with other trade marks or signs would be undesirable.  To paraphrase Gummow J in Carnival Cruises, supra, a claim to ownership of the SOBIESKI mark by Negro would clearly extend to use by it in this manner.  In any case, were I to take the argument to the level urged by Mr Stevens, I would have to find that his client, too, has failed to show use of SOBIESKI wherever there is the simultaneous use of the element JAN III.

28. Finally, Mr Squires noted that exhibit MN4, the Tax Invoice, refers quite plainly to the word mark.  However, I refuse to make the distinction that Mr Stevens attempted to draw.  The use relied on by Negro, in the invoice and in the labels, relates to the subject trade mark and Negro has the superior claim to ownership in respect of vodka, in Australia, by right of first use.

29. Even if I had taken the step of discounting Mr Negro's evidence as being unreliable, I would still find that Belvedere has not established this ground of opposition.  The uncertainties and contradictions in Mr Rouvroy's evidence mean that I take the first use of a relevant trade mark by Belvedere in the Australian market to be in November 2000, just subsequent to the filing date of the opposed application.  It therefore does not give rise to a superior right.

30. To the extent that neither party has shown use on anything other than vodka, the filing of the application is determinative of the remaining goods.  There, too, ownership accrues to Negro.

31. In reaching these conclusions, I do not consider the internet site usages to which Mr Rouvroy has referred in his evidence are at all relevant.  Without more, they do not give rise to a right in Australia.  I note that the SOBIESKI goods of Belvedere were the subject of a promotion, in Polish on a Polish website, just prior to the 2000 Olympics, wherein a trip to the Sydney Olympics was to be awarded to a purchaser of SOBIESKI vodka who sent an entry form to an address in Poland.  This does not establish use of the opponent's mark in Australia.  Similarly, an examiner of trade marks, when examining Negro's application, found relevant hits from US websites, and recorded these on 19 April 2001.  This is not commercial use in Australia and was in any case subsequent to the application date.

    Use contrary to law (s 42) and misleading (s 43)

32. These grounds of opposition have a common hinge and I will deal with them jointly.  Mr Stevens argued that Negro, in selling Australian-made vodka under the labels shown in the evidence, ran foul of s 52 and/or s 53 of the Trade Practices Act and s 43 of the Trade Marks Act.  These provisions deal with conduct that will, on the one hand, mislead or deceive or, on the other, lead to deception or confusion.

33. The words "Made in Australia" are a small element of the label that Negro has printed and used.  Mr Stevens argued strongly that those words were simply overwhelmed by the strength of the representation that the goods were Polish vodka, with a label in the Polish national colours and sporting the heraldic Polish eagle.  The rear label, also in evidence, makes it quite clear that the goods are a "Polish style" vodka.  Moreover, Jan Sobieski was famous as a king of Poland, thus reinforcing the Polish connection.  Mr Stevens stressed that the front label brought into evidence by Negro is part of, and entirely indicative of, the only way it has been shown to use the mark.  Such use was, he said, misleading.  However, the salient point is that the merit or otherwise of this argument cannot show that the use of the trade mark applied for, the word SOBIESKI alone, would[4] be contrary to law, or would be confusing for the purposes of s 43. 

    1.     [4] See Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24

    Deception or confusion arising because of conflicting prior reputation (s 60)

1. I will leave aside the threshold test here: there is no argument that Belvedere was using - overseas - a deceptively similar trade mark at the time that Negro filed the now-opposed application.  Can it be said that, in terms of s 60, use of the trade mark by Negro would be likely to deceive or cause confusion because of the reputation of Belvedere's trade mark in Australia at the date of filing?  With all respect to the arguments advanced by Mr Stevens, there is barely any evidence that such a reputation as Belvedere might have enjoyed in Poland or the USA had spread to Australia at 13 October 2000.

2. Mr Stevens relied on the oft-quoted principle[5] that::

   [R]eputation within the jurisdiction may be provided by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.  It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …

   [5] from Conagra Inc v McCain Foods (Aust) (1992) 23 IPR 193

3. He argued that I should be prepared to take all of Belvedere's evidence together: worldwide registrations of the trade mark[6], use of the trade mark via the Internet, overseas publications, 2000 Olympic Games competition, negotiations with a middle-man in Australia, publicity/promotional material, and the applicant's knowledge of Opponent's SOBIESKI vodka before the date of its trade mark application.  I am prepared to do so but the quantum of reputation suggested by these things is far from extensive.

   [6] These are listed in the evidence. They are consistent with the first use in June 1998, and the earliest of them is a French registration, sought on 27 January 1998.

4. I cannot give much weight to Mr Stevens' further argument that vodka drinkers may be a specialist market in which a small reputation may spread rapidly.  There is simply no evidence, and nothing of which I am aware, to suggest that vodka drinkers are any more informed or discerning than any other buyers of spirits.

5. The picture that emerges, overall, is that Belvedere's trade mark enjoyed very little reputation in Australia at the relevant date.  There is no dispute that Negro was aware of the Belvedere usage but for all I can see that company may have been almost alone in this respect.  There is no reasonable basis for me to assume that any of the factors to which Mr Stevens has pointed had spread to the attention of anyone in Australia much beyond the handful of people connected with Negro or the opponent.  Others may have had such knowledge but the onus to establish a reputation is not met by pointing to low-level possibilities.

6. As Mr Stevens argued, the question whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense.  It is a "jury question" in which the decision maker is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion.  I am far from convinced that a ground of opposition is established under s 60.

   Conclusion

7. The opponent has not established any of the four grounds on which it relied.  Accordingly, the trade mark application may 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.  I order Belvedere to pay the costs of Negro up to the limit set out in the regulations.

   Terry Williams
   Hearing Officer
   Trade Marks Hearings
   4 February 2004