Bickfords Trading Pty Ltd v Frucor Suntory New Zealand Limited

[2023] ATMO 213

TRADE MARKS ACT 1995

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

ReOpposition by Bickfords Trading Pty Ltd to registration of the trade mark the subject of application 2188050 (32) – THE REAL McCOY (figurative – series) – in the name of Frucor Suntory New Zealand Limited

Delegate:                 Robert Wilson

Representation:       Opponent: Ian Horak KC, instructed by Collison & Co

Applicant: Ed Heerey KC, instructed by Bell Gully

Decision:                   2023 ATMO 213

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered and established – registration refused

Background

1. This decision concerns an opposition to registration of the series of trade marks which is the subject of the application for registration detailed below. The application is in the name of Frucor Suntory New Zealand Limited (‘Applicant’). The opposition was brought by Bickfords Trading Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth).

Trade Marks:

Application Number:

2188050

Filing Date:

21 June 2021

Specification:

Class 32: Fruit drinks and fruit juices including those containing vitamins, minerals or herbs; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; isotonic beverages (non-medicated); energy drinks; all of the aforesaid goods being in this class.

(‘Applicant’s Goods’)

1. For the sake of simplicity, the two trade marks in the series will be referred to collectively as the ‘Applicant’s Trade Mark’.

2. Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

3. Following publication of the application’s acceptance, the Opponent filed a Notice of Intention to Oppose registration of the Applicant’s Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’). The SGP nominated grounds of opposition under ss 42(b), 44, 58 and 60. The Applicant subsequently filed a Notice of Intention to Defend.

   Evidence

4. The Opponent filed Evidence in Support of its opposition, being:

   ·Declaration made on 30 June 2022 by Rebecca Tolhurst, General Counsel of the Opponent, with Exhibits RT01 to RT31 (‘Tolhurst 1’).

5. The Applicant filed Evidence in Answer, being:

   ·Declaration made on 4 October 2022 by James Deysel, the Nutrition and Hydration Director of the Applicant, with Exhibits JD-1 to JD-13 (‘Deysel declaration’).

6. The Opponent filed Evidence in Reply, being:

   ·Declaration made on 7 December 2022 by Rebecca Tolhurst, with Exhibits RT32 to RT34.

7. Once the time allowed for filing evidence had ended both parties requested an oral hearing. 

8. I am a delegate of the Registrar of Trade Marks, and in this capacity, I heard the matter on 18 October 2023. Ian Horak KC, instructed by Collison & Co, appeared on behalf of the Opponent. Ed Heerey KC, instructed by Bell Gully, appeared on behalf of the Applicant. Counsels’ oral submissions were supplemented by written submissions filed prior to the hearing.

   The Opponent

9. The Opponent is the owner of the registered trade marks detailed below (‘Opponent’s Trade Marks’):

Trade Mark Number	Trade Mark	Priority Date	Goods
514161	3 July 1989	Class 33: Bourbon whiskey
514162	REAL McCOY	3 July 1989	Class 33: Bourbon whiskey
522327	2 November 1989	Class 33: Beverages containing bourbon whiskey combined with cola
799487	REAL McCOY	6 July 1999	Class 33: Bourbon whiskey; mixed drinks containing bourbon whiskey combined with cola

1. According to Tolhurst 1:

   The Opponent acquired the above portfolio of trade marks via assignment from Diageo Australia Limited on 8 September 2011. …

   The Real McCoy brand is home to 3 products:

   o700ml Bourbon Whiskey

   o1 litre Bourbon Whiskey

   o440ml American Whiskey and Cola in a can …

   The Opponent has consistently used the marks since they were acquired from Diageo in 2011.

   The Applicant

2. According to the Deysel declaration, the Applicant along with Frucor Suntory Australia Pty Limited are wholly owned subsidiaries of Suntory Beverage and Food Limited, a company incorporated in Japan. Mr Deysel declared:

   In 1989, [the Applicant] commenced the manufacture, distribution and sale of fruit juice under the name MCCOY. In October 2015, the MCCOY brand relaunched under the name, THE REAL MCCOY in New Zealand …

   In New Zealand, THE REAL MCCOY fruit juice is sold in all of the major supermarkets as well as petrol stations, dairies and cafes.

   Grounds of Opposition, Onus and Standard of Proof

3. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60. At the hearing the Opponent did not press the ground under s 58. To successfully oppose registration of the Applicant’s Trade Mark the Opponent need establish only one ground of opposition. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 21 June 2021, being the filing date of the application (‘Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of ss 44 and 60.

   Discussion

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

   [2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

   Section 44

4. Provisions relevant to the s 44 consideration in this matter are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i)    a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)   a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)    the similar goods or closely related services; or

   (ii)   the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

   Section 14 – Definition of similar goods and similar services

   (1)  For the purposes of this Act, goods are similar to other goods:

   (a)  if they are the same as the other goods; or

   (b)  if they are of the same description as that of the other goods.

5. In the SGP, the Opponent nominated the Opponent’s Trade Marks to support its ground of opposition under s 44.

6. As a starting point, to successfully oppose registration pursuant to s 44 the Opponent must establish that at least one of the Opponent’s Trade Marks:

   ·     has a priority date which is earlier than the Relevant Date (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the second requirement’); and

   ·     is registered in respect of at least some goods which are similar to at least some of the Applicant’s Goods (‘the third requirement’).

   The first requirement

7. The Opponent’s Trade Marks each has a priority date which is earlier than the Relevant Date, thus satisfying the first requirement.

   The second requirement

8. The Opponent asserted, and the Applicant conceded, that the trade mark the subject of the Opponent’s registrations 514162 and 799487—both being for the plain words REAL McCOY—is substantially identical to the Applicant’s Trade Mark. I proceed on this basis. The second requirement is, therefore, satisfied in respect of those trade marks.  It is unnecessary that the remaining two of the Opponent’s Registrations are considered further as nothing turns on the comparison of those trade marks with the Applicant’s Trade Mark.

   The third requirement

9. The parties submissions focussed on the similarity, or otherwise, of the relevant goods. In summary, the Opponent asserted that all of the Applicant’s Goods are similar to the goods for which the Opponent’s Trade Marks are registered, whereas the Applicant asserted none are similar. The respective goods are listed below for ease of reference.

The Applicant’s Goods	The 514162 Goods	The 799487 Goods
Class 32: Fruit drinks and fruit juices including those containing vitamins, minerals or herbs; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; isotonic beverages (non-medicated); energy drinks; all of the aforesaid goods being in this class.	Class 33: Bourbon whiskey	Class 33: Bourbon whiskey; mixed drinks containing bourbon whiskey combined with cola

1. The 799487 Goods have a broader scope than the 514162 Goods. Because of this, the Applicant submitted that the 799487 registration is the ‘high-water mark of the Opponent’s case’ and that it ‘is convenient for the present analysis to focus on that trade mark’. I agree with this submission and proceed on this basis.

   Scope of the claims

2. It is prudent in this matter that the comparison of goods begins with a consideration of the scopes of the relevant claims. The Applicant’s Goods are registered in Class 32 and the 799487 Goods in Class 33. It is an accepted principle that the class in which goods are registered does not, of itself, determine the scope of the claim. As stated in the Trade Marks Office Manual of Practice and Procedure:

   IP Australia uses the International Classification of Goods and Services, in which goods and services are allocated between 45 classes, each class covering a different category of related goods or services. This system was agreed to at the Nice Diplomatic Conference, and is referred to as NICE classification in this Manual. The system is primarily an administrative tool which simplifies searching for trade marks used or intended to be used on the same or related goods and/or services.

3. A consequence of the above approach is that an unqualified claim for ‘beverages’ in Class 32 would be taken to encompass the many beverages which appear in Class 33. This accords with the principles of construction discussed by Wilcox J in Nikken Wellness Pty Ltd v van Voorst.[4] That said, the Applicant’s Goods includes the qualification ‘all of the aforesaid goods being in this class’—the scope of the specification must be interpreted accordingly. Therefore, the claim for ‘other preparations for making beverages’ must be construed to encompass only such goods as appear in Class 32, and not to encompass, for example, ‘alcoholic preparations for making beverages’ which appear in Class 33. It is noted that all alcoholic beverages, except beer, are in Class 33—beer is in Class 32.

   [4] [2003] FCA 816, [40]–[45].

   The similarity of the goods

4. The Applicant stressed the importance of bearing in mind that the 799487 Goods are not a broad registration for ‘alcoholic beverages’ but for a very narrow specification, and that in assessing whether the respective goods are similar the assessment must not be whether the Applicant’s Goods are similar to alcoholic beverages in general, but only whether they are similar to the specific goods forming the 799487 Goods. At its simplest, this submission is accepted; however, beyond the recognition that bourbon whiskey is a spirit there is nothing before me that satisfies me that the 799487 Goods are a special case. The result of assessment of whether alcoholic spirits in general are similar to the Applicant’s goods applies to the 799487 Goods. Therefore, in making an assessment of the similarity of the goods it is sufficient to consider, at least at times, the general case.

5. Section 14 states that goods are similar to other goods, ‘if they are the same as the other goods’ or ‘if they are of the same description as that of other goods’. Accepted authority on the assessment of whether goods are similar provides a number of factors which can be considered.[5] The factors are the nature and composition of the goods; the respective uses and functions of the goods; and the trade channels through which the goods are marketed or sold. The consideration of these factors is sometimes referred to as the ‘NUT test’ (being for nature, use, and trade channels).

   [5] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808 (Burley J); McCormick & Company Inc v McCormick [2000] FCA 1335 (Kenny J).

6. Important to the consideration of similarity of goods in this matter, is whether there are non-alcoholic versions of the Opponent’s Goods. The evidence indicates that there is a large and growing presence in the marketplace of non-alcohol versions of what are traditionally alcoholic beverages; these include non-alcoholic beers, wines and spirits (including whiskeys). The importance of this, is that the Applicant’s broad claims for other non-alcoholic drinks and other preparations for making beverages encompasses non-alcoholic bourbon whiskey and non-alcoholic mixed drinks containing non-alcoholic bourbon whiskey combined with cola (as well as many other beverages).

7. Non-alcoholic versions of beverages that are traditionally alcoholic appear in Class 32. For example, non-alcoholic beverages, grain based non-alcoholic beverages and non-alcoholic spirits are goods which appear in Class 32 of the Nice classification. Spirits, such as bourbon whiskey, are common ingredients in mixed beverages, such as the mixed drinks containing bourbon whiskey combined with cola which appears in the 799487 Goods. When used as part of a mixed drink bourbon whiskey is a preparation for making a beverage; therefore; the Applicant’s other preparations for making beverages encompasses non-alcoholic bourbon whiskey. Similarly, the Applicant’s other non-alcoholic drinks encompasses non-alcoholic bourbon whiskey.

8. In applying the NUT test, I will commence with the ‘nature’ of the goods. Other than the absence of alcohol in non-alcoholic spirits, the nature and composition of the goods is the same.

9. In respect of the ‘use’ of such beverages, it is not doubted that alcoholic beverages are often consumed for the physiological and/or psychological effects of the alcohol contained within them. Nevertheless, in many instances alcoholic beverages are not consumed solely for this reason; indeed, this may not be a reason at all. It is also not doubted that many consumers base their choice of alcoholic beverages on their taste preferences. In the case of alcoholic beverages used as mixers their use would seem to be to create a resulting beverage that is pleasing to the individual taste of the consumer; as is the case with non-alcoholic mixers (cola being an example). A further use of beverages, both alcoholic and non-alcoholic, is as a means of quenching thirst; as examples, a cold beer, a cider, a gin and tonic, a bourbon and cola, plain orange juice, and water are all likely to be consumed on a hot day for this purpose. I am of the view that the use of alcoholic beverages generally is similar, and in many cases the same, as non-alcoholic beverages.

10. Turning to the ‘trade channels’, it is declared in the Deysel declaration that, ‘The alcoholic and non-alcoholic beverage markets have always been very distinct’. This contrasts with the statement in the Tolhurst declaration that, ‘Non-alcoholic beverages are commonly sold in outlets which sell alcoholic beverages’. Exhibit RT-34 to the Tolhurst declaration contains a number of examples of non-alcoholic versions of what are traditionally alcoholic beverages being sold—on online shopping websites—under the trade marks of well-known alcoholic beverage producers (including beers and wines). The exhibit includes examples of non-alcoholic rums, gins, and ‘Highland Malt Non-Alcoholic Spirit’.

11. I am satisfied, that alcoholic beverages, their non-alcoholic counterparts, and other non-alcoholic beverages such as cola and juices, are sold in the same trade channels; this is no different for bourbon whiskey and its non-alcoholic counterpart.

12. The result of carrying out the NUT Test indicates that: the nature and composition of the respective goods is the same or similar; the uses are the same or similar; and they are sold via the same trade channels. Consequently, I am satisfied that at least some of the Applicant’s Goods are similar to the 799487 Goods. The third requirement is therefore satisfied in respect of those goods.

13. All three requirements of s 44(1) are satisfied in respect of at least some of the Applicant’s Goods. In Phone Directories Company Australia Pty Ltd v Telstra Corporation Ltd, Murphy J stated:

    I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.

    Neither party here has identified a principled basis upon which the Registrar could approach the task of cutting down the breadth of the Applicant’s Goods to overcome the conflict between the respective goods. I therefore proceed on the basis that the requirements of s 41(1) are satisfied in respect of the whole application.

14. The Applicant has made no submissions that in these circumstances the provisions of either s 44(3) or s 44(4) should be considered, and for completeness I am not satisfied that there is an evidentiary basis before me to apply either of those provisions. Consequently, the Opponent has established this ground of opposition.

    Decision

15. Section 55 relevantly provides:

    (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.

    Note:For limitations see section 6.

1. I have found the Opponent has established the ground of opposition it raised pursuant to s 44. As a delegate of the Registrar, I accordingly refuse to register the Applicant’s Trade Mark.

   Costs

2. The Opponent sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

   Robert Wilson
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   21 December 2023