Berenger Blass Wine Estates v Andrew Harris - [2009] ATMO 52

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Berenger Blass Wine Estates Limited to registration of trade mark application 1088609(33) - Regions - filed in the name of Andrew Harris.

Delegate:

Claudia Murray

Representation:

Opponent: Edward Heerey of Counsel, instructed by Allens Arthur Robinson, Patent and Trade Mark Attorneys, Melbourne.

Applicant: Andrew Harris, self-represented.

Decision:

2009 ATMO 52

Section 52 opposition – section 41 – trade mark not capable of distinguishing under subsection 41(5) - opposition successful – registration refused – costs awarded against applicant.

Background
1. Mr Andrew Harris (‘the applicant’) filed trade mark application number 1088609 on 1 December 2005, for the plain word trade mark:

Regions

2.     The application was filed in class 33 of the International (Nice) Classification of Goods and Services in respect of ‘Alcoholic beverages including wine’.
3.     No grounds for rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination. It was advertised accepted for possible registration in the Australian Official Journal of Trade Marks on 30 March 2006.
4.     On 30 June 2006, Berenger Blass Wine Estates Limited (now known as Foster’s Wine Estates Limited) (‘the opponent’) filed notice of opposition to registration of the trade mark. Eleven grounds of opposition were listed in the notice.
5.     Evidence in support, answer and reply was duly served and filed. On 27 March 2008, the Office received a request from the opponent for the opposition to be heard. The hearing was delayed by a rescheduling from Melbourne and then a mutually agreed deferral, but eventually I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra, on 22 April 2009. Mr Edward Heerey of Counsel, instructed by Allens Arthur Robinson, Patent and Trade Mark Attorneys of Melbourne, represented the opponent. Mr Andrew Harris represented himself.
Evidence
6.     The evidence in relation to this opposition comprises:
Opponent’s evidence
Evidence in Support

Statutory declaration of Colin James Oberin, with Exhibits CJO-1 to CJO-8, dated 2 November 2006.

Statutory declaration of Allan Wallace Tilley, with Exhibits AWT:1 to AWT:3, dated 4 December 2006.

Statutory declaration of James Hewett Osborne, dated 5 December 2006.

Statutory declaration of Francis James Halliday, dated 10 January 2007.

Evidence in Reply

Statutory declaration of Allan Wallace Tilley, dated 6 December 2007.

Statutory declaration of Huon Hooke, dated 30 January 2008.

7. The opponent’s declarations are made by five individuals all claiming extensive knowledge of the wine industry and, in particular, expertise in the area of wine labelling. Mr Oberin (Trade Marks Attorney and Partner of Allens Arthur Robinson) and Mr Tilley (Intellectual Property Consultant) are currently responsible for managing the extensive wine trade mark portfolio owned by the opponent and its parent company, Foster’s Group Limited. Each declarant has many years experience performing the same or similar work.
8. Mr Osborne has held the position of Corporation Secretary for the Australian Wine and Brandy Corporation (AWBC) since 1997. He attests that…

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] ATMO 52
Decision Date: 9 July 2009

CaseChat Overview and Summary

Berenger Blass Wine Estates Pty Ltd (the applicant) sought an interlocutory injunction against Andrew Harris (the respondent) to restrain him from continuing to use the "Wolf Blass" trademark in relation to his wine business. The applicant, a well-known wine producer, alleged that the respondent's use of the "Wolf Blass" name constituted trademark infringement and passing off. The matter came before Justice Murray in the Federal Court of Australia.

The primary legal issues before the court were whether the respondent's use of the "Wolf Blass" trademark was likely to cause confusion or deception among consumers, thereby infringing the applicant's registered trademark. Additionally, the court had to consider whether the respondent's conduct amounted to passing off, whereby the respondent was misrepresenting his goods or services as those of the applicant, or as being in some way associated with the applicant. The court was required to assess the strength of the applicant's case on these grounds to determine if an interlocutory injunction was warranted.

Justice Murray considered the evidence presented by both parties regarding the distinctiveness and reputation of the "Wolf Blass" trademark, as well as the nature of the respondent's wine business. The court applied the principles governing interlocutory injunctions, requiring the applicant to demonstrate a serious question to be tried and that the balance of convenience favoured the granting of the injunction. The judge found that there was a significant likelihood of consumer confusion given the established reputation of the "Wolf Blass" brand and the similarity of the goods. The court also considered the potential damage to the applicant's goodwill and reputation if the respondent's activities were allowed to continue.

The court granted the interlocutory injunction, restraining the respondent from using the "Wolf Blass" trademark in connection with his wine business pending the final determination of the proceedings.

Orders