Bickfords Trading Pty Ltd v BNB Management Pty Ltd

[2022] ATMO 140

TRADE MARKS ACT 1995

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

Re:Oppositions by Bickfords Trading Pty Ltd to registration of trade mark application numbers 1989998 (class 33) – 20 20 Distillery and 2023510 (class 33) – TWENTY TWENTY 20 20 DISTILLERY (figurative) – both in the name of BNB Management Pty Ltd

Delegate:	Nicholas Barbey
Representation:	Opponent: Collison & Co Applicant: Sonia Stewart of counsel instructed by FB Rice Pty Ltd
Decision:	2022 ATMO 140 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 41, 42(b), 44 and 60 pursued – s 41 established in respect of both trade marks – evidence of use insufficient – registration of trade marks refused

Background

1. This decision concerns oppositions brought by Bickfords Trading Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade marks (together ‘Trade Marks’):

   Trade Mark:  20 20 Distillery (‘Word Mark’)       

   Application number:              1989998

   Applicant:  BNB Management Pty Ltd (‘Applicant’)

   Filing Date:  17 February 2019

   Specification:  Class 33: distilled alcoholic beverages; alcohol for drinking; distilled beverages; low alcohol spirits; low alcohol cocktails; liquors (alcoholic beverages); alcoholic beverages containing wine; fermented liquors; alcoholic beverages containing fruit; alcoholic beverages (except beer); fruit extracts (alcoholic); alcoholic extracts of fruits; fruit based alcoholic beverages; alcoholic cocktails

   (‘998 Goods’)

   Trade Mark:  (‘Logo Mark’)           

   Application number:              2023510

   Applicant:  BNB Management Pty Ltd

   Priority Date:  17 July 2019

   Specification:  Class 33: still spirits; malt whisky; still liqueurs; grain spirit produced from wheat; fermented spirit; low alcohol spirits; digesters (liqueurs and spirits); spirit based cocktails (spirits predominating); spirits (beverages); blended whisky; digesters (liqueurs and spirits); fermented spirit; grain spirit produced from wheat; spirit based cocktails (spirits predominating); spirits (beverages); still spirits

   (‘510 Goods’)

2. The acceptance of each trade mark for possible registration was advertised on 27 May 2020. The Opponent filed notices of intention to oppose on 20 July 2020 followed by Statements of Grounds and Particulars (‘SGPs’) on 17 August 2020. The Applicant filed notices of intention to defend on 9 October 2020.

3. Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). An oral hearing was subsequently requested. Submissions were filed by the Opponent on 6 May 2022 (‘Opponent’s Submissions’) and by the Applicant on 12 May 2022 (‘Applicant’s Submissions’).

4. As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 20 May 2022. Anthony Norris of Collison & Co presented submissions on behalf of the Opponent and Sonia Stewart of counsel presented submissions on the Applicant’s behalf.

   Grounds of opposition, onus and standard of proof

5. The SGPs nominated grounds of opposition under ss 41, 42(b), 44 and 60 of the Act. To be successful, the Opponent bears the onus of establishing at least one of these grounds.[1] If a ground of opposition is established in relation to all of the 998 Goods and the 510 Goods, consideration of the remaining grounds is not required.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

6. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] In relation to the Word Mark, the date at which the rights of the parties are to be determined is 17 February 2019, being both the filing and priority date of the application. With respect to the Logo Mark, the relevant date is 17 July 2019 which is the filing and priority date of that application.

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

   Evidence

7. The following declarations were filed in respect of both oppositions:

EIS

• Declaration made on 12 January 2021 by Rebecca Tolhurst (General Counsel of the Opponent) with Exhibits RT1 to RT94 (‘Tolhurst Declaration’).

EIA

• Declaration made on 14 April 2021 by Brian Bedding (Distiller and founder of the Applicant) with Annexures BB-1 to BB-6 (‘Bedding Declaration’).
• Declaration made on 14 April 2021 by Lara Gun (solicitor and trade mark attorney at FB Rice Pty Ltd) with Annexures LG-1 to LG-8 (‘Gun Declaration’).

EIS

1. The Tolhurst Declaration states that the ‘Twenty Third Street Distillery’ was launched on 23 September 2016. The distillery’s name is derived from its location which is ‘on the corner of 23^rd Street & Renmark Avenue in Renmark, South Australia’.[3] Ms Tolhurst declares that the ‘number 23 has been synonymous to the brand’ and is used as a key date for product launches and events.[4] Reference is also made to six Australian trade mark registrations owned by the Opponent which incorporate the words ‘twenty third’ or the numerals ‘23’.[5]

   [3] Tolhurst Declaration, [5.1].

   [4] Ibid [5.2].

   [5] See Australian trade mark registrations 1755126 (‘TWENTY THIRD STREET DISTILLERY’), 1755127 (‘23RD STREET DISTILLERY’), 1841748 (‘23RD STREET DISTILLERY NOT YOUR NANNA'S BRANDY’), 2012951 (‘BATCH23 BY TWENTY THIRD STREET DISTILLERY’), 2036133 (‘TWENTY THIRD STREET’), 2036134 (‘23 TWENTY THIRD STREET DISTILLERY, RENMARK EST. 2016’).

2. Ms Tolhurst explains that the ‘Twenty Third Street Distillery brand is home to 14 products ranging across brandy, gin, rum, vodka and whisky’.[6] Its products are distributed nationally and stockists include Dan Murphy’s and Vintage Cellars. The ‘Twenty Third Street Distillery’ brand is promoted at events across Australia and the Opponent operates a website as well as social media accounts which feature the words ‘Twenty Third Street Distillery’.

   EIA

   [6] Tolhurst Declaration, [5.6].

3. According to the Bedding Declaration, the ‘20 20 Distillery business’ started in 2018 and its distillery is located in Queensland. Mr Bedding states that the Word Mark was devised in  
   

   [7] Bedding Declaration, [8].

   mid-2018 and the Logo Mark was created in June 2019. The expression ‘20 20 distillery’ was adopted because it is a ‘play on the term “20 20 vision” and the desire for the business to adopt a brand which reflects an ethos of being clearly focused on delivering high end spirits made from premium quality local ingredients’.[7]

4. Mr Bedding declares that the Word Mark was ‘first used in June 2019 when the Applicant commenced a brand awareness campaign through social media accounts’[8] and the tasting room at the distillery first opened to the public on 12 December 2020. Annexed to the Bedding Declaration are various articles which refer to the Trade Marks and/or products sold by the Applicant. Mr Bedding explains that Facebook and Instagram accounts featuring the Trade Marks are also used to promote the Applicant’s products. Relevantly, the first post on the Applicant’s Facebook page is dated 8 March 2019 and announces a ‘20 20 Distillery coming soon to Noosa’.[9]

   [8] Ibid [14].

   [9] Ibid [19].

5. Mr Bedding is not aware of any instances of confusion involving any of the Opponent’s trade mark registrations or the Opponent’s business. In Mr Bedding’s view, this is because ‘the marks of the respective parties are very different in terms of sound, appearance and conceptual meaning’.[10]

   [10] Ibid [22].

6. The Gun Declaration details search results obtained from the Australian Register of Trade Marks. Ms Gun declares that a search for ‘registered and accepted trade marks in Classes 32 and 33 which contain a number element, expressed as numerals and/or word elements’ returned 3,680 results.[11] These results revealed the existence of ‘311 trade marks in Classes 32 and Class 33 which contain a number element “20” or “TWENTY”, expressed as numerals and/or word elements and which claim alcoholic beverage products’.[12] Definitions of ‘20 20 vision’, ‘twenty twenty vision’ and ‘twenty-twenty’ from different sources are also supplied.

   Discussion

   [11] Gun Declaration, [8].

   [12] Ibid [10].

   Section 41

7. Section 41 of the Act relevantly provides:

   Trade mark not distinguishing applicant's goods or services
   (1) 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 (the 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.
   (2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
   (3) This subsection applies to a trade mark if:

   (a) 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; and
   (b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4) This subsection applies to a trade mark if:

   (a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
   (b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

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

   (iii) any other circumstances.

   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.

8. Assessing the merits of the s 41 ground of opposition requires consideration be given to the extent, if any, of a trade mark’s inherent adaptation to distinguish the goods. This is assessed:

   [B]y 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.[13]

   [13] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J) (emphasis added).

9. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[14] indicated that the test for distinctiveness under s 41 of the Act involves a
   

   [14] [2014] HCA 48 (‘Cantarella’).

   [15] Ibid [71] (French CJ, Hayne, Crennan and Kiefel JJ).

   two-step process. First, the ordinary signification of the trade mark in Australia to persons who will purchase, consume or trade in the goods must be ascertained.[15] Second, once the ordinary signification is established, consideration must turn to whether other traders might legitimately desire to use the trade mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of the same or similar goods.

10. The Opponent contends that the Word Mark has no inherent capacity to distinguish the 988 Goods and asserts that ‘20 20’ is a presentation of simple numerals being a direct reference to a date, namely the year 2020 or a date of production.[16] It posits that the insertion of a space between ‘20’ and ‘20’ would ‘not lead a consumer to conclude the mark is anything more than a reference to a date’.[17] Similarly, the Opponent submits that the Logo Mark, at its highest, has limited capacity to distinguish the 510 Goods. In the Opponent’s view, the presentation of ‘20 20’ in both numeral and words spelling out the numerals does little to assist its capacity to distinguish.[18] The Opponent rejects the proposition that ‘20 20’ would be perceived as a reference to ‘20 20 vision’ and points out that this concept is normally presented in the form of a fraction (i.e., ‘20/20’).[19]

    [16] Opponent’s Submissions, [20].

    [17] Ibid [25].

    [18] Ibid [19]–[22]. Reference was also made to Part 22.22 of the Australian Trade Marks Manual of Practice and Procedures which states that ‘A word spelling out the number or numerals will normally be treated in the same manner as the numeral representation of the number’.

    [19] Opponent’s Submissions, [24]–[27].

11. Conversely, the Applicant asserts that the Trade Marks are prima facie capable of distinguishing the relevant goods. It contends that the space between ‘20’ and ‘20’ in the Word Mark dispels this element from being understood as signifying a date.[20] The Applicant claims that ‘20 20’ alludes to ‘20 20 vision’ and ordinary consumers would be cognisant of this concept.[21] This alleged connection between ‘20 20’ and ‘20 20 vision’ is even more pronounced in the Logo Mark which, in the Applicant’s opinion, ‘bears some resemblance to the centre of an open eye’.[22] The Applicant submits that the words in the Trade Marks ‘take on a new meaning’ and, as a whole, are capable of operating as a badge of origin.[23]

    Ordinary signification

    [20] Applicant’s Submissions, [26].

    [21] Ibid [45].

    [22] Ibid [26].

    [23] Ibid [47].

12. The Word Mark is comprised of two elements depicted in plain typeface, namely the numerals ‘20 20’ combined with the word ‘distillery’. In the context of alcoholic beverages, ‘20 20’ would be readily understood as signifying a date. Numerals are commonly used in the alcoholic beverage industry to describe, for example, the year in which a producer was established or a product’s bottling date. Meanwhile, ‘distillery’ may be defined as ‘a place or establishment where distilling, especially the distilling of alcoholic spirits, is carried on’.[24] In other words, it is a direct reference to the provider of alcoholic beverages claimed in class 33. Taken together, ‘20 20 Distillery’ has an ordinary signification which describes the establishment year and nature of the provider. That is, the Word Mark’s ordinary signification is that the goods are manufactured by a distillery that was established in 2020.

    [24] Macquarie Dictionary (online at 10 August 2022) ‘distillery’ (def 1).

13. The Applicant’s contention that the space between ‘20’ and ‘20’ signifies the concept of ‘20 20 vision’ is not persuasive. Conceivably, ‘20 20’ may allude to this concept if used in relation to optical goods.[25] However, the meaning of a trade mark must be considered in the context of the goods claimed.[26] Here the claimed goods are alcoholic beverages and numerals are routinely used in this industry to signify a date. Aurally, ‘20 20’ is indistinguishable from the year 2020 given consumers frequently articulate the latter as ‘twenty twenty’. The visual presentation of ‘20 20’ also directly precedes the word ‘distillery’ and this reinforces its signification as a date notwithstanding the space. Tellingly, this signification is borne out by the Applicant’s evidence which contains articles clarifying that the ‘20 20 Distillery’ is named ‘after the “vision” and not the year’[27] and other articles which assume that the name takes ‘inspiration from the year to be – 2020’.[28] Accordingly, the space between ‘20 20’ does not alter its signification as a date.

    [25] Gun Declaration, Annexure LG-3 contains a search for the words ‘twenty-twenty’ in the online Macquarie Dictionary which returned a result pertaining to ‘20/20 vision’ which is defined as ‘perfect vision in both eyes’.

    [26] Cantarella (n 14) [71].

    [27] Sara Weckerle, ‘Bottoms up – 20 20 Distillery opens its tasting room in Cooroy’ (14 January 2021) The Weekend Edition (emphasis added). See also Ioana Dragnef, ‘Get Booking, A High-End Gin And Whisky Distillery Just Opened In The Noosa Hinterland’ (7 January 2021) Urban List which states ‘The 20 20 Distillery—referring to 20/20 vision and not the year 2020 …’ (emphasis added).

    [28] Georgia Brooker, ‘20 20 Distillery – Opening Soon’ (29 October 2019) The Weekend Edition.

14. Turning to the Logo Mark, it differs to the Word Mark in three key aspects. First, the element ‘20 20’ is replaced by a combination of the word ‘TWENTY’ paired with the numeral expression of this word (i.e., ‘TWENTY 20’). Second, ‘TWENTY 20’ is repeated in the Logo Mark. Third, the Logo Mark’s elements are presented within an annulus device and the word ‘distillery’ is positioned centrally. However, for the reasons which follow, the cumulative nature of these differences does not overwhelm the Logo Mark’s primary feature – namely, the words ‘TWENTY 20 DISTILLERY’.

15. Simply combining ‘TWENTY’ with its numeral form ‘20’ to produce ‘TWENTY 20’ does not materially alter its ordinary signification as a date. This is particularly so given it has previously been held that a number, whether expressed as a numeral or a word, is not distinctive.[29] As noted at [20] of this decision, consumers often articulate the year 2020 as ‘twenty twenty’ and this holds true irrespective of ‘TWENTY’ being depicted as numerals, in words or a combination thereof. Equally, the repetition of ‘TWENTY 20’ goes no further than to emphasise this element within the Logo Mark.

    [29] 2000 TWO THOUSAND trade mark [1992] 4 RPC 65, 67.

16. As regards to the Logo Mark’s presentation, the observations of Kitto J in Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft (‘Bayer’)[30] are instructive. In Bayer, the trade mark under consideration was ‘a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter "Y" is common to both, the whole being enclosed within a circle’.[31] In finding that the trade mark was not inherently adapted to distinguish the designated goods, Kitto J observed:

    [the cross device] merely provides a fancy method of presenting the name "Bayer", and it has no greater aptitude than has the name itself for distinguishing the proprietor's goods from those of other people who happen to be known as "Bayer". It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which … "would strike the eye and fix in the recollection". The dominant impression which the device gives is not adequately described as that of a cross formed by printing; it is an impression of the name "Bayer", arranged indeed in a particular way so that it appears twice yet with compactness and definition, but predominantly the name "Bayer". … Throughout this case, the device has been referred to, by witnesses and counsel alike, as a "Bayer" Cross. That is exactly what it is: … it is in essence the word "Bayer", presented in the form of a cross.[32]

    [30] [1965] HCA 71 (‘Bayer’).

    [31] Ibid [1] (Kitto J).

    [32] Ibid [13] (emphasis added). The observations of Kitto J were subsequently quoted with approval by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440.

17. In my assessment, the annulus device in the Logo Mark is akin to the cross device insofar as it too ‘merely provides a fancy method of presenting’ the words ‘TWENTY 20 DISTILLERY’. To this end, the inverting of ‘TWENTY 20’ within the Logo Mark was implemented to ensure that it could be read when ‘a bottle is upside down at a bar or being poured’.[33] It follows that even when the Logo Mark is considered as a ‘total composition’,[34] it nevertheless conveys the same ordinary signification as the Word Mark.

    Other traders

    [33] Bedding Declaration, Annexure BB-2.

    [34] See, eg, Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [61] (Dodds-Streeton J).

1. Pursuant to Cantarella, consideration must now be given to whether other traders would legitimately desire to use the Trade Marks, or some mark nearly resembling either of them, for the sake of their ordinary signification in respect of their own similar goods and/or services.

2. In relation to the Word Mark, it is comprised of a date followed by the name of a place where the 998 Goods are manufactured. There is nothing skilful or covert about its construction or depiction. As such, I have no hesitation in finding that other traders would legitimately desire to use the Word Mark or, at a minimum, some mark nearly resembling it (i.e., ‘2020 Distillery’) in respect of their own similar goods.

3. As for the Logo Mark, I accept that other traders do not need to use the Logo Mark in the exact form that it has been applied for. However, I am satisfied that other traders would need to use a trade mark nearly resembling the Logo Mark in relation to their own similar goods. It is true that the Logo Mark’s annulus device and repetition of ‘TWENTY 20’ import visual points of difference from the plain words ‘TWENTY 20 DISTILLERY’. However, neither aspect of the Logo Mark is particularly distinctive and, even when combined, they do not overshadow the descriptiveness of the Logo Mark.

4. Bearing the above in mind, I consider that the Trade Marks are to some extent, but not sufficiently, inherently adapted to distinguish the 998 Goods and 510 Goods. Normally, whether a trade mark falls for consideration under s 41(3) or s 41(4) of the Act is significant because this affects the type of evidence which may be considered. However, in the present circumstances, nothing turns on this distinction due to the nature of the evidence filed.

   Evidence of use

5. The Applicant submits that the EIA demonstrates that the Trade Marks will distinguish the relevant goods as being those of the Applicant. Reliance is placed on the ‘extensive use and promotion of the Applicant’s two trade marks to the industry and to the Australian public’.[35] Further, attention is drawn to ‘third-party articles and media mentions relating to the Applicant and its products’ which the Applicant says reflects the fact that the Trade Marks already distinguish its goods from those of other traders.[36]

   [35] Applicant’s Submissions, [51].

   [36] Ibid [52].

6. Unsurprisingly, the Opponent’s position is that the EIA does not support the acceptance of the Trade Marks under the provisions of s 41(4) of the Act. Specifically, the EIA reveals minimal use of the Trade Marks before their respective filing dates and, more importantly, it fails to disclose any information pertaining to the sales of goods bearing either of the Trade Marks. As such, the Opponent submits that there is no basis to ‘make any reasonable assessment of use after the [filing] date, or of intended future use’.[37]   

   [37] Opponent’s Submissions, [41].

7. Having reviewed the EIA, I agree that it falls short of establishing that the Trade Marks do or will distinguish the 998 Goods and 510 Goods. As rightly identified by the Opponent, no turnover figures have been disclosed nor have any projected turnover figures been provided. Likewise, the EIA does not particularise what, if any, expenditure the Applicant has incurred in promoting the Trade Marks nor does it supply any forecasted expenditure relating to same. At the hearing, Ms Stewart sought to address these omissions by pointing out that the Act does not expressly require the production of such figures. It is true that the Act does not mandate the disclosure of such metrics. However, these figures are highly relevant to assessing the likely market exposure of the Trade Marks. They are particularly crucial in the current matter given the Applicant has only traded for a short duration of time[38] and the Logo Mark was only created a month before the filing date of the application.

   [38] Bedding Declaration, Annexure BB-4 contains a ‘Gin Advice’ article which states that the Applicant’s ‘first three gin products launched in September 2020’.

8. With respect to the evidence filed, the screenshots of the Applicant’s website[39] have limited probative value because the EIA does not specify how long this website has been operational or the volume of traffic it receives. Similarly, the printouts of the Applicant’s social media accounts featuring the Trade Marks indicate each account has only a modest number of followers.[40] Meanwhile, the ‘third-party articles and media mentions’, for the most part, simply refer to the opening of and existence of the ‘20 20 Distillery’ as opposed to illustrating the alleged distinctiveness of the Trade Marks in relation to the claimed goods.

   [39] Bedding Declaration, Annexures BB-1, BB-3.

   [40] Ibid Annexures BB-4, BB-5.

9. Having regard to the evidence before me together with the extent that the Trade Marks are inherently adapted to distinguish the claimed goods, the combined effect is not sufficient to satisfy me that the Trade Marks do or will distinguish the 998 and 510 Goods as being those of the Applicant.

10. Accordingly, the s 41 ground of opposition has been established.

    Decision

11. Section 55 of the Act relevantly provides:

    Decision
    (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.

12. The Opponent has established the s 41 ground of opposition in respect of both Trade Marks. As such, I refuse to register trade mark application numbers 1989998 and 2023510.

    Costs

13. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, in respect of trade mark application number 1989998, I award costs against the Applicant per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth). In respect of trade mark application number 2023510, I award reduced costs against the Applicant in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[41]

    [41] [2001] ATMO 78.

    Nicholas Barbey
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    18 August 2022

    
    

and Edelman JJ).