Bilyara Vinyards Pty Ltd v Guorong Xu

[2014] ATMO 56

TRADE MARKS ACT 1995

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

Re:Opposition by Bilyara Vineyards Pty Ltd to registration of trade mark applications 1413082(33): - KENSINGTON & EAGLE device and 1413094(33):- K AND EAGLE device - filed in the name of Guorong Xu.

Delegate:

Hearing Officer: Jock McDonagh

Representation:

Opponent: Peter Wallis of counsel instructed by Allens Arthur Robinson Patent and Trade Mark Attorneys

Applicant: Guorong and Kandy Xo

Decision:

2014 ATMO 56

Section 52 opposition: sections 42(b) 44 and 60 pressed – s 60 ground of opposition established - no requirement to consider other grounds.

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed Guorong Xu (‘the Applicant’) details of which appear below:

Application Nos:	1413082 & 1413094
Priority Date:	8 March 2011
Goods:	Class 33: Beverages containing wine (alcohol content 1.15% or more by volume); beverages containing wine (wine predominating); blended wine; dessert wine; drinks containing wine (wine predominating); dry fortified wine; dry red wine; dry sparkling wines; dry white wine; dry wine; fortified wines; non-sparkling wines; red wine; sparkling fruit wines; sparkling wines; still wines; sweet fortified wine; sweet red wine; sweet sparkling wine; sweet white wine; sweet wine; vintage wines; white wine; wine
Trade Mark:	1413082  1413094

1. The applications were examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 30 June 2011.

2. On 7 October 2011, Bilyara Vineyards Pty Ltd (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notices are couched in broad terms and include most grounds of opposition provided for by the Act. However, only the sections 42(b), 44 and 60 grounds were pressed by the Opponent at the hearing of the matter. For the sake of completeness I find that the grounds other than those relied upon by the Opponent at the hearing have been abandoned and note that any ground may be relied upon should my decision be appealed to the relevant Court where the matter will be considered de novo.

3. The Opponent bears the onus of establishing a ground of opposition on the balance of probabilities.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

4. The date at which a ground of opposition must be established is the date of filing of the applications for registration, in this matter that date is 8 March 2011: see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

5. The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 20 March 2014.  Peter Wallis of counsel, instructed by Allens Arthur Robinson Patent and Trade Mark Attorneys, represented the Opponent.  The Applicant and Kandy Xu appeared in person.

6. The Opponent filed the following evidence in support of the opposition. The Applicant has not filed any evidence:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Sandra Elizabeth Forman (“Forman”)	Trade Mark Attorney, Allens Arthur Robinson Patent and Trade Mark Attorneys	29.12.11	SEF-1 & SEF-2
Owen John Malone (“Malone”)	Director Intellectual Property, Treasury Wine Estates	9.04.13	OJM-1 to OJM-12

Discussion - Section 60 ground of opposition

1. Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

1. To satisfy section 60 the Opponent must establish:

• that another trade mark had, before 8 March 2011, acquired a reputation in Australia in respect of particular goods; and

• because of the reputation of that other trade mark, the use of the Trade Mark would be likely to deceive or cause confusion.

1. The Opponent relies upon the reputation of its ‘family’ of perched eagle trade marks, examples of which were given for the purposes of the section 44 ground:

Registration No.	Priority Date	Trade Mark
437173	29.11.85
481838	19.02.88
673219	20.09.95
833047	26.04.00
866727	20.02.01
879214	14.06.01

1. While it is not a requirement under section 60 for the trade marks to be deceptively similar, it is one factor affecting the likelihood of confusion and the principles relevant to the assessment of the likelihood of deception or confusion, were set out by French J in Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 at [50]:

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc :

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

1. It is for me to determine therefore whether the Opponent has established that before 8 March 2011 its trade marks were recognized by the public generally, or at least by a significant number of persons in the wine market, and whether because of that reputation the use by the Applicant of its Trade Marks on the designated goods would be likely to deceive or cause the public confusion.

2. In relation to reputation Kenny J states in McCormick & Co Inc. v McCormick (2000) 51 IPR 102, at 128:

   In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

1. At 129 Kenny J continues:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

2. Malone details the history and operations of the Opponent (which was established in 1969 by Mr Wolfgang Blass, known as Wolf Blass), a wholly owned subsidiary of Treasury Wine Estates Ltd, in the Australian wine industry. Mr Blass established his winery in Bilyara Road, Tanunda, in South Australia’s Barossa Valley. Mr Blass discovered that ‘Bilyara’ was an aboriginal word for ‘Eaglehawk’. Mr Blass was German-born, and the eagle is the German national emblem, so he adopted an eagle device that would reflect both his German roots and his local venture.[2]

   [2] Malone paragraphs 9 and 10

3. Malone also exhibits a wide collection of the Opponent’s wine labels, all of which feature a version of the perched eagle device, with or without the words WOLF BLASS. In particular, trade mark registrations 833047, 866727 and 879214 are representative of the Opponent’s demonstrated trade mark use as at the priority date.

4. Malone, paragraphs 15 to 25, details the promotion of the Opponent’s goods especially using an eagle as a central theme. The Opponent’s wine is the second ranked still bottled wine brand in Australia by value, with gross sales in Australia in the eight years prior to the priority date of some $100,000,000. Promotion and advertising in Australia has increased from more than $6 million in 2005 to over $10 million in 2012.

5. I am satisfied that the Opponent has established a substantial reputation in Australia for its wines bearing the perched eagle device.

6. While there is no longer a requirement that the application be at least deceptively similar to the trade mark identified by the Opponent, I consider that aspects of visual similarity between the trade marks feed into the likelihood of deception or confusion occurring. 

7. While the Opponent’s device is often accompanied by the words WOLF BLASS, the wine labels also often contain other words, such as ‘Limited Release’, ‘President’s Selection’, “Eaglehawk, and ‘Red Sash’, along with other design features particular to each label. The common element, however, is invariably the eagle, which is especially prominent in the Opponent’s promotional material as well on wine bottle labels.

8. It can be seen from depictions of the Opponent’s and Applicant’s trade marks above, the similar stance of both birds in the  respective trade marks (outstretched wings, head turned to the right and clasping a border or banner in its talons).

9. I also note that the eagle in each of the Opponent’s and Applicant’s trade marks seems very ‘Germanic’, and suggests a martial air, similar to the eagle standards of the Roman Empire, symbols of the United States military, and the German military. While the Applicant’s trade marks might not possess similarity that would offend under section 44 of the Act, I am satisfied that the eagle in the Applicant’s applications is very similar to Opponent’s perched eagle device.

10. I consider that the presence of the word ‘Kensington’ in Application No 1413082 or the letter’K’ in Application 1413094 do nothing to displace the strength of recognition of the perched eagle and its association with the opponent. Such elements would simply indicate to the wine-consuming public a ‘sub-brand extension’ to the Opponent’s suite of brands that include the well-known perched eagle device.

11. The reputation of the Opponent’s goods is such that I am satisfied that the wine-consuming public would associate images of a perched eagle with its wings outstretched with the Opponent’s wines.

12. I am satisfied that there is a real likelihood that the average consumer will wonder or be left in doubt about whether the Applicant’s wines bearing the eagle element of either of its trade marks are associated with the Opponent.

13. Therefore, the Opponent has established the ground of opposition under the provisions of section 60 of the Act. Having found in favour of the Opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

1. Section 55 of the Act, as applicable to these proceedings, provides:

   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.

1. I find that the Opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark applications 1413082 and 1413094.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant in terms of Schedule 8 of the Regulations.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

13 June 2014