Bill McKay v Amberley Estate Pty Ltd

[2001] ATMO 47

TRADE MARKS ACT 1995

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

Re:Opposition by Bill Mckay to registration of trade mark application 826499(33, 35, 42) - A AMBERLEY - filed in the name of Amberley Estate Pty Ltd

Background

Amberley Estate Pty Ltd ("the applicant") filed trade mark application 826499 on 7 March 2000. The application was for the word trade mark A AMBERLEY and covered the statement of goods "wines, spirits and liqueurs" in Class 33, and of services "winery services; retail and wholesale of winery clothing, hats, footwear, glassware, pottery and tablecloths" in Class 35 and "provision of food and drink, restaurant and cafe services" in Class 42. The trade mark is shown below.

Following examination, the Registrar advertised the trade mark as accepted in the Australian Official Journal of Trade Marks on 6 July 2000. Mr Bill McKay ("the opponent") filed notice of opposition to the trade mark's registration on 10 October 2000. That notice listed the grounds of opposition expressed as:

• "Logo are the same "A". Public confusion arising".

The opponent's registered trade mark, number 785636 for classes 35 and 42 is shown below:

No evidence in support of the opposition has been served on the applicant or filed with this office. The opponent was sent an overdue evidence notice 19 January 2001.

The applicant advised that it was not intending to rely on evidence in answer on 14 February 2001.

On 26 February 2001, the parties were notified that it was open for them to request a hearing in this matter and if no response was received within one month of the notice, the Registrar would presume neither party wished to be heard and would proceed to decide the matter by reference to material held in this Office.

Neither party has requested to be heard in this matter. Accordingly, the issue has come to me as a delegate of the Registrar of Trade Marks to decide on the material held in this Office.

Evidence

As discussed above, no evidence in support of the opposition and no evidence in answer were served.

The material on the Office file that I have considered is the clear report from the examiner, the notice of opposition, and the trade marks of the applicant and opponent.

Discussion

Under the Trade Marks Act 1995 ("the Act"), there is a presumption of registrability. Section 55 of the Act requires that "the Registrar must decide ... having regard to the extent (if any) to which any ground on which the application was opposed has been established." It follows that the proponent of the ground of opposition, the opponent, has the onus of establishing those grounds.

The opponent has not placed before me any material that could persuade me to any extent of the points of similarity of the marks or of any confusion amongst members of the public.

However, in light of the public interest concerned with the issue of confusion, I will consider the matter a little further.

Sections 44 provides:

Identical etc. trade marks

44.(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.

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) 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 services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Section 44 has a threshold test of whether the trade marks in question are substantially identical or deceptively similar. If the trade marks in question are neither substantially identical nor deceptively similar, I need not proceed to the other factors specified for consideration in section 44.

In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at 414, Windeyer J states:

In considering whether marks are substantially identical, they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

In considering the applicants’ trade mark alongside the opponent’s registered trade mark, I think that the total impression that emerges is not one of identity.  The device component of the grapes and grape vines is absent from the applicant's trade mark, as is the reference to ABBEY VALE in the Margaret River region.  While it is true that the A of the opponent’s trade mark is thematically linked to the A on the applicants’ trade mark, the A is the only common feature. I think it is quite clear that these marks are not substantially identical.

I have considered the test for deceptively similar in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658 where, Dixon and McTiernan JJ stated:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken descriptions must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.

The respective impression or recollection which is carried away and retained in respect of these two trade marks is, I think, likely to be quite different. True it is that both marks prominently feature a large italicised letter "A". However, apart from that the marks are quite different both in style and content. The applicant's trade mark is simple in its make-up and features the word AMBERLEY. The opponent's trade mark is complex, it is adorned with fruiting vines and urns, and it prominently features the words ABBEY VALE. In the normal course of business I do not think it likely that purchasers will be confused by use of the applicant's trade mark and I find that the marks are not deceptively similar, and that there is no ground for rejection in terms of section 44 of the Act.

Conclusion

I have found that none of the grounds relied upon by the opponent in the notice of opposition have been established. In my capacity as the delegate of the Registrar, I dismiss the opposition. I direct that, subject to any appeal from this decision, this application may proceed to registration on payment of the registration fee.

Jock McDonagh
Hearing Officer

6 June 2001