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 the views expressed in his declaration have also been approved by other senior AWBC executives, including the Chief Executive and the Registrar of Protected Names. He explains that the AWBC is the Australian Government statutory authority, established under the Australian Wine and Brandy Corporation Act 1980, (AWBC Act) with responsibility for regulating and developing markets for Australian wine and brandy, and providing wine sector information and analysis. Both Mr Halliday and Mr Hooke are experienced wine writers and judges, and Mr Halliday is also a vigneron and consultant.

9.     The common concern expressed by all the opponent’s declarants is that the word ‘regions’ is primarily descriptive, and therefore not adapted to distinguish any single trader’s wine. They variously emphasise that ‘regions’ is widely used in the wine trade, both as a general description, and also as a ‘term of art’. Some examples of this use are exhibited via photographs of labelled wine bottles[1], examples of wine labels[2], extracts from wine books[3] and the AWBC legislation[4].

[1] Exhibit CJO-3.

[2] Exhibit AWT: 2.

[3] Exhibits CJO-4 to CJO-6, AWT: 3.

[4] Exhibit CJO-2.

10.   In his declaration, Mr Osborne describes the use of ‘region’ or ‘regions’ in this way:

The region from which a wine is derived is very important in the marketing of wines as certain grape varieties are said to be more suited to certain regions and the attributes of a region, such as soil, climate etc are said to be reflected in the wines produced in that region. Wines made from certain grape varieties grown in certain regions may have a certain reputation and winemakers frequently make reference to the region from which the grapes were grown when describing a wine.[5]

[5] Osborne declaration, paragraph 3.

11.   This manner of use is reflected in the exhibits referred to above. For example, the wording in some of the labels illustrated in Exhibit AWT: 2 reads:

2001 AGENA COVE CHARDONNAY

SOUTH AUSTRALIA – NEW SOUTH WALES

…By blending outstanding parcels of fruit from throughout the cool climate wine regions of Australia, we were able to consistently craft a wine that was clearly varietal, whilst matched to a refined elegance.

12.   and:

BIN 99 PINOT NOIR 2004

The Bin Series wines are faithful to Dr Henry Lindeman’s traditional winemaking style of blending grape parcels from the premium wine growing regions of Australia.

13.   Mr Oberin explains in his declaration both the more specific use of ‘region’ as a term of art, and also its relationship with the identifiers known as ‘geographical indications’ for wine:

In particular, I am aware that the word “region” is a term of art widely used in the wine industry and on wine labels. I am also aware that the word “region” is defined under regulation 24 of the Australian Wine and Brandy Corporation Regulations 1981 (Cth)…as an area of land that:

(b)is a single tract of land that is discrete and homogeneous in its grape growing attributes to a degree that:

(i)          is measurable; and

(ii)         is less substantial than in a subregion; and

(c)usually produces at least 500 tonnes of wine grapes in a year; and

(d)        comprises at least 5 wine grape vineyards...

(e)        may reasonably be regarded as a region.

“Geographical indication” is defined by the Australian Wine and Brandy Corporation Act in section 4 as “a word or expression used in the description and presentation of the wine to indicate the country, region or locality in which the wine originated…The definition of the word “region” referred to [above] is therefore an important element in the interpretation of geographical indications. The Australian Wine and Brandy Corporation determines regions and subregions which are geographical indications, and determines the boundaries of those regions and subregions.

Applicant’s evidence

Evidence in Answer

·Statutory declaration of Andrew Walter Harris, with Exhibits AH-a to AH-l, dated 13 June 2007.

14.   In his declaration, Mr Harris provides details of his background. He states that he has been a vigneron and vineyard owner since 1991, and that over this time has built up extensive knowledge of the way the wine industry functions, the way wine is marketed and exported, and in particular the application of the industry’s governing laws in relation to geographical indications. Mr Harris declares that he has had first hand experience with the registration of a geographical indication, having prepared the submission in support of the ‘Mudgee’ region, which was registered on 24 August 2000. He attests that he has been marketing wines since 1 December 1995, and exporting wines since 28 May 1999, and has always labelled his wines according to the Wine Label Law and the Label Integrity Programme.

15.   Referring to the applied-for trade mark Regions, Mr Harris states that he has been using it actively and continually in the market since 10 April 2006, (that date being some four months after the filing date of 1 December 2005). During this time, he declares, he has received no complaints about the trade mark from customers, competitors, retailers or trade mark owners. Copies of invoices at AH-c and AH-d, dated 10 April 2006 and 22 May 2007 respectively, show total sales of 20,000 bottles of wine identified by the word Regions in those two months. Mr Harris submitted at the hearing that many multiples of that number have been sold under the Regions label in the domestic and export markets up until the present. However, annual sales figures were neither provided nor corroborated in his evidence and so his submissions upon that point cannot carry weight here.

16.   Mr Harris disagrees in his declaration with the opponent’s arguments about the importance of the word ‘regions’ in the AWBC Register of Protected Names. He declares his belief that the important elements are the names of the geographical indications themselves, and their boundaries as delineated in the ‘GI Textual Descriptions’. He comments that:

One of the main drivers for this change [to the formal delineation and registration of wine regions as geographical indications] was that the regional identification of wines was so misused in the past, and the term region was misused as well.

17.   Mr Harris describes his development of the trade mark thus:

I have developed this unique Trade Mark and concept which specifically links the word Regions with Registered Geographical Indications from where each wine is grown’, as seen on my ‘Regions’ labels, annexed here as Exhibit AH-e. Along with the unique and striking graphic this provides to the consumer a very clear and accurate message.

18.   Exhibit AH-e contains examples of six front and back wine bottle labels. The labels feature the respective geographical indications of Barossa, Orange Mudgee, Adelaide Hills, Coonawarra and Strathbogie Ranges. Black and white representations of the ‘Orange Mudgee’ labels appear below:

19.   Exhibit AH-i to Mr Harris’s declaration comprises three brief reviews by wine critic Huon Hooke of ‘Andrew Harris’s Regions label’, taken from the Sydney Morning Herald and the Daily Telegraph. Mr Harris states that:

This clearly shows my ‘Regions’ label being distinguished from others and shows that an independent writer understands this unique concept of actually linking the word ‘Regions’ to specific wine regions to give the consumer a very clear understanding of where the wines come from.

20.   As mentioned above, the opponent’s evidence in reply features a declaration by the same Mr Hooke. That declaration endorses the observations made by the opponent’s other declarants, and disputes the claim by Mr Harris to having developed ‘a unique concept’ in wine naming, saying:

I believe many wines would be fully entitled to claim on their labels the word ‘Region’ or Regions’, used in a context as defined in the Australian Wine and Brandy Act or, otherwise, used in a general descriptive sense.

Ground of opposition

21. Just prior to the hearing, the opponent indicated that despite the many grounds of opposition listed in its notice, it now intended to rely only upon the ground under section 41 of the Act. At this point, for completeness, I find that none of the other grounds listed have been made out.

Section 41 - Trade mark not distinguishing applicant’s goods or services

The law

22. Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. This issue lies at the heart of the evidence which has been exchanged between the parties. The section relevantly provides:

(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:For goods of a person and services of a person see section 6.

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)the Registrar is to consider whether, because of the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Note 1:For goods of a person and services of a person see section 6.

Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)  the time of production of goods or of the rendering of services.

Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

Submissions

23.   At the hearing, Mr Heerey drew my attention to the decision of the Full Federal Court in Colorado Group Limited v Strandbags Group Pty Limited[6]. He argued that the decision in that case was highly relevant to the decision facing me in the current opposition. The single notable distinction was, instead of there being just one other known party wanting to use the geographic name ‘Colorado’ on its goods, in this case, there was a whole industry of wine producers using the word ‘Regions’. Mr Heerey continued:

[6] (2007) 164 FCR 506; 243 ALR 127; 74 IPR 246

In [Colorado], the Full Federal Court confirmed that the phrase "inherently adapted to distinguish the designated goods from the goods of other persons" in s 41(3) of the 1995 Act is intended to be understood in light of earlier decisions under the 1955 Act, such as Clark Equipment Co v Registrar of Trade Marks.[7]

[7] (1964) 111 CLR 511.

In Clark Equipment, Kitto J held that the Registrar of Trade Marks was right to refuse to accept an application for registration of the word "Michigan" in respect of earth moving and like equipment, because the word was not adapted to distinguishing these goods from the like goods of others. Kitto J said that the ultimate question:[8]

... is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

After referring to certain well-known statements of Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd,[9] Kitto J concluded:

... the question whether a mark is adapted to distinguish [must] 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 sale 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.

…Their Honours [in Colorado]…took the approach that the enquiry into distinctiveness under s 41(5) and/or (6) [of the Act] was not limited to the consideration of how the mark has or would be used by the trade mark applicant. The use of the mark by other persons, particularly the respondent in that case, was also relevant in determining whether the mark did or would distinguish the trade mark.[10]

In addition to “Michigan” [11] and “Colorado”, [12] examples where Courts have refused or cancelled registration on this basis include the following marks:

"Great Western" in respect of still and sparkling wines produced from grapes grown in the Great Western region of Victoria;[13]

"Oregon" inside an oval device in respect of power tool accessories;[14]

"Oxford" in respect of printed publications;[15]

"Glastonburys" in connection with sheepskin slippers.[16] 

[8] (1964) 111 CLR 511 at 513.

[9] [1913] AC 624, at 634-635.

[10] Per Kenny J at [30], Gyles J at [41], Allsop J at [132], [136].

[11] (1964) 111 CLR 511.

[12] (2007) 164 FCR 506; 243 ALR 127; 74 IPR 246, per Kenny J at [29], Allsop J at [125].

[13] Thomson v B Seppelt & Sons Limited (1925) 37 CLR 305.

[14] Blount v Registrar of Trade Marks (1998) 83 FCR 50, 40 IPR 498 (the Oregon case).

[15] Oxford University Press v Registrar of Trade Marks (1990) 24 FCR 1.

[16] A Baily and Company Limited v Clark, Son and Morland [1938] AC 557.

24.   Mr Heerey concluded his hearing submissions by emphasising that the opponent did not actually seek to prevent Mr Harris from labelling his wines as he has been doing. Rather, the opponent simply wished to prevent the word ‘regions’, which it considered should be preserved as part of the ‘great common’ of the English language, from becoming the sole trade mark property of any single trader.

25.   Mr Harris’s counter arguments relied upon a reiteration of the points made in his statutory declaration, emphasising that he had experienced no confusion, complaints or objections in the marketplace during the three years wine had been sold under the applied-for trade mark in Australia and overseas. He observed that confusion and inconsistencies were apparent within the opponent’s evidence, around whether declarants believed the word ‘regions’ was used exclusively in the wine trade as a ‘term of art’ with a ‘very specific meaning’, or was also used ‘in any dictionary sense’. Mr Harris argued that the very existence of these inconsistencies was fatal to the opponent’s case. He rightly pointed out that all the cases cited by the opponent dealt with geographical names, and Regions was not such a name. He concluded:

This opposition is not based on fact but on a marketing opportunity missed by a large and powerful Company.

Discussion

26.   This opposition case is quite unusual in being finally reduced to a single ground of opposition which, by virtue of the provisions of section 57 (‘Registration may be opposed on same grounds as for rejection’), could have been raised as a ground for rejection when the trade mark was examined, but was not. Shanahan’s 4th edition[17] discusses the interesting interplay between the presumption of registrability and the onus upon an opponent in cases such as this:

It is difficult to establish any ground for opposition without evidence and where the ground for opposition is a ground for rejection, which was not sufficient to prevent acceptance of the application, the difficulty is compounded. The opponent must by evidence or other means displace the presumption of registrability. The absence of evidence may of itself tell against an opponent. In Re Le Vi SpA v Carter Holt Harvey Ltd[18]  [Fresh Linen for air fresheners] the Registrar's delegate observed that the opponent had provided no evidence in support of a contention that other traders would honestly wish to use the words of the applicant's trade mark and that "[g]iven its intimate knowledge of the relevant trade, this seems a relatively telling oversight. The opponent should be in the most favourable of positions to obtain persuasive evidence that traders in its field have real and proper motives to use the words".

[17] Shanahan’s Australian Law of Trade Marks and Passing Off 4^th ed, 2008 at [50.2005]

[18] RE.LE.VI. SpA v Carter Holt Harvey Limited [2002] 56 IPR 105 at 111 (Reg)

27. Subsections 41(5) and (6) of the Act focus upon evidence of trade mark use. However, if a trade mark is determined to be inherently adapted to distinguish an applicant’s goods or services, then it is acceptable for registration under subsection 41(3), without reference to the later subsections of section 41. The manner in which section 41 operates to facilitate a decision of a delegate of the Registrar upon the registrability of a trade mark was examined closely by Branson J in the Oregon case.[19] In considering that analysis, the Trade Marks Office Manual of Practice and Procedure comments:

If the Registrar is able to decide, on the basis of its inherent qualities, that the trade mark is capable of distinguishing the goods or services of the applicant from those of other persons, the matter is resolved in favour of the applicant. This does not mean the Registrar must be in no doubt about the trade mark's capacity to distinguish. The Registrar may have some reservations in the matter but still decide that the trade mark is capable of distinguishing.[20]

[19] Blount v Registrar of Trade Marks, supra.

[20] Trade Marks Office Manual of Practice and Procedure, Part 22, paragraph 3.2.

28.   The examiner considered the existence of numerous (over 14 million) Google™ internet ‘hits’ for ‘regions wine’ found as part of the examination search, as well as several definitions in the Macquarie Dictionary which included: ‘3. a district without respect to boundaries or extent’.[21] Their conclusion was, however, that the word in isolation was vague and non-specific, and that Regions was therefore a trade mark capable of distinguishing the applicant’s goods under subsection 41(3) of the Act, without there being any need to make further enquiry about it in terms of subsections 41(4), (5) or (6).

[21] The Macquarie Dictionary Online © 2009 Macquarie Dictionary Publishers Pty Ltd.

29.   The examiner’s view reflects decisions of delegates of the Registrar such as Southcorp Limited v Barwick Wines Pty Ltd[22] (Crush for wine) and Fortuity Pty Limited v Ereneos (Renos) Savvides[23] (Trim For Life for food supplements and books). In the latter decision, Hearing Officer Thompson remarked:

I do not see any problem with the trade mark in terms of subsection 41(3) of the Act. It is certainly strongly suggestive, but, to my mind, there is an indefiniteness of meaning when an analysis of the trade mark is attempted. Such indefiniteness, and the lack of any real evidence from Fortuity, leave me satisfied that other traders have no real need to use the words in the normal course of trade. I am very conscious of the reasoning adopted by the Registrar's delegate in Ciba-Geigy Australia Ltd v Eli Lilly and Co (1983) 2 IPR 353: the desirability of some trade marks arises after they have been coined on the realisation, by others, that the trade mark is very effective. One must exercise caution not to reason one's way back from this perception to the conclusion that, because of this effectiveness, other traders have a need to use the words in the normal course of trade.

30.   Mr Harris would almost certainly agree with the caution expressed above. However, the delegate’s comment about the ‘lack of any real evidence’ from the opponent is highly relevant. Here, the situation is quite different from the opposition discussed by Mr Thompson, and also that quoted by Shanahan, above. The opponent in this case has drawn on its position, in the manner found wanting in the Fresh Linen case. It has provided me with persuasive evidence which has succeeded in displacing my own earliest impressions of the applied-for trade mark’s capacity to distinguish. In addition, the applicant’s declaration, and exhibits demonstrating how the word ‘Regions’ is actually used on his wine labels, clearly show that, from his perspective, the word’s effectiveness would evaporate if it was not always shown in close proximity with the name of a specific wine region. The examples all relate to regions which are registered geographical indications,[24] but I imagine the labelling could be equally applied in relation to wine from more loosely defined wine regions, such as the ‘cool climate wine regions’ referred to in the competitor’s labels featured in Exhibit AWT: 2, (and shown above). Mr Harris’s name also appears in dominant position at the top of both front and back bottle labels.

[24] As Mr Harris declared, and I quoted above, his marketing concept ‘specifically links the word Regions with Registered Geographical Indications’.

31. The combined effect of the evidence put on by both sides has enabled me to properly see the operation of what Mr Harris sees as his ‘unique trade mark concept’ in three dimensions, as it were. This is a perspective which was, of course, unavailable to the examiner at the time the trade mark application was examined. I now see that the word ‘regions’ is not inherently capable of operating as a trade mark, as envisaged by subsection 41(3) of the Act. Instead, it is a word about which, being now unable to decide outright the question of its capacity to distinguish in terms of subsection 41(3), I must follow the instruction of 41(4), and decide whether I can instead be satisfied in accordance with the provisions of subsections 41(5) or (6).

32.   It is convenient to deal with these provisions in reverse numerical order. Subsection 41(6) provides exclusively for those trade marks found by a delegate of the Registrar to be ‘not to any extent’ inherently adapted to distinguish an applicant’s goods or services. Note 1. to the provision clarifies that such trade marks are mostly signs that are ‘ordinarily used to indicate’ some characteristic of the goods or services to which they are applied. Mr Heerey argued that I should find ‘regions’ to be such a sign. In that case, he observed correctly, the evidence of use provided by Mr Harris was insufficient for a finding in terms of paragraph 41(6)(a) that, at the date of filing, the applied-for mark had in fact become distinctive of his wines through extensive use. As Mr Harris declared in evidence, his use of Regions on wine labels did not commence until four months after he filed his application.

33.   I decline to find the word ‘regions’ entirely devoid of any capacity to distinguish the applicant’s goods. It is not quite in the ‘ordinarily used to indicate’, ‘soap for soap’ category described in the explanatory note to subsection 41(6), and envisaged by Jacob J in British Sugar PLC v James Robertson & Sons Ltd:

The phrase [‘devoid of any distinctive character’] requires consideration of the mark on its own assuming no use. It is the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark.[25]

[25] [1996] RPC 281 at 306 in relation to s. 3 (1) (b) of the Trade Marks Act 1994 (U.K).

34.   A simple means of identifying a word ordinarily used to indicate goods is to consider whether a completely unambiguous request such as ‘please pass the wine’, or ‘please pass the red wine’ would be equally well understood if either the ordinary noun or adjective in the sentence was replaced with the word being tested. A request to ‘please pass the regions’, or even ‘please pass the regions wine’ plainly does not convey the same unambiguous kind of information to be expected from the substitution of a word with not even one dreg of capacity to distinguish hidden at the bottom of it. The negative result from this test leads me to the conclusion that the applied-for trade mark does have the faintest hint of an inherent capacity to distinguish the applicant’s goods. In which case, I must look not to the provisions of subsection 41(6), but to those of subsection 41(5) to decide the question of whether ‘regions’ does or will distinguish the applicant’s goods.

35.   The provisions of subsection 41(5) have been reproduced above. The Trade Mark Examiner’s Manual puts the tests succinctly thus:

Overall, section 41(5) of the Act requires the Registrar to consider a balance of the shortfall of inherent adaptation against the:

extent of use (in time, area, volume or market share terms) - a quantitative question

manner of use - a qualitative question

any other circumstances.[26]

[26] Part 22, section 5.

36.   Here, as I have already discussed, the opponent’s evidence has persuaded me that the shortfall in inherent adaptation, if not complete, is nevertheless considerable. Balanced against this significant shortfall, the extent of the (post filing) use documented in evidence by Mr Harris, while by no means insignificant, is not, I believe, sufficient of itself to tip the scales in his favour.

37.   To move on to consideration of ‘manner of use’; as described above, the manner in which the applied-for trade mark is used does not assist the applicant’s case at all. Instead, it serves simply to underline that, however strikingly the word Regions may be portrayed on the wine labels, it still appears merely in a ‘limping’ role. The essential premise behind Mr Harris’s marketing technique is that purchasers will immediately understand that they are purchasing an ‘Andrew Harris’, ‘limited release’ selection of wine from one of many available wine ‘regions’, as then specifically identified on each individual label.

38.   The words of Justice Jacob are again relevant here:

It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of one particular trader. This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.[27]

[27] British Sugar Plc v. James Robertson & Sons Ltd, supra, at 295.

39.   And, in Philips Electronics BV v Remington Consumer Products, he said:

…what we have here is a kind of "limping mark", always used with what is obviously a proper trade mark. The same was true of Treat which was always used with "Silver Spoon". [Supra.] Neither sign was ever used by the proprietor on its own. And this was evidence of a lack of capacity to distinguish. I do not of course say that you cannot have two trade marks used for the same goods, or that part of a sign - a "sub-sign" - cannot also be a trade mark: both Ford and Fiesta are obviously valid marks. But there are these other cases, where a sign proffered as a valid mark cannot really stand up on its own.[28]

[28] [1998] RPC 283, at 312.

40.   The final leg of the subsection 41(5) tripod rests upon the existence of ‘any other circumstances’. Such circumstances that a delegate might find persuasive or at least relevant in terms of a trade mark’s capacity to distinguish could include the existence of overseas registrations of a subject trade mark, or evidence of the imminent launch of a major marketing campaign likely to significantly boost the recognition of an already well-established mark. I have no such examples to consider in support of this trade mark application.

41.   I am not satisfied that the applied-for trade mark Regions either ‘does or will so distinguish the designated goods’. Consequently, I find, in terms of paragraph 41(5)(c), that it is not capable of distinguishing those goods. If the trade mark was under examination, it would therefore be liable for rejection in terms of the initial requirement of subsection 41(2). However, by virtue of section 57, this translates in the present circumstances to the opponent having successfully made out its section 41 ground of opposition.

Decision

42. Subsection 55(1) of the Act provides:

(1)      Unless the proceedings are discontinued or dismissed, 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.

43.   The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[29] I find that the opponent has met the onus upon it, in terms of the single ground of opposition under section 41 argued at the hearing. Accordingly, I refuse to register trade mark application number 1088609.

[29] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599

Costs

44. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant, Mr Andrew Harris.

Claudia Murray

Hearing Officer

Trade Marks Hearings

9 July 2009

[22] [2006] ATMO 68 (28 July 2006)

[23] [2000] ATMO 89 (16 August 2000)