Blue Sky Brewery

[2010] ATMO 40

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1239763 (32) - REEF BLONDE COMPOSITE TRADE MARK- in the name of Blue Sky Brewery Pty Ltd.

Delegate:

Bianca Irgang

Representation:

Applicant: Thomas Stevens of O’Reilly Stevens Bovey Lawyers

Decision:

2010 ATMO 40

Ex parte - S33 – section 44 ground for rejection – Marks are deceptively similar – consideration of subsections 44(3)(a) and (b) –no evidence and no other circumstances made out – application rejected.

Background

1.     Blue Sky Brewery Pty Ltd filed application number 1239763 on 12 May 2008 in class 32 of the International Classification of Goods and Services (‘Nice’ classification). Details of the application are set out below.

Trade mark:  

Trade mark registration:             1239763

Priority Date:  12 May 2008

Goods Specification:  Class 32: Alcoholic beers

2. An adverse report was issued to the applicant at the initial examination stage on 1 August 2008. The following trade mark registration no. 830955 was raised as a ground for rejection under section 44 of the Trade Marks Act 1995 (“the Act”) on the ground that it was deceptively similar to the applicant’s trade mark:

Trade mark:  XXXX REEF

Trade mark registration:             830955

Owner:  Castlemaine Perkins Pty Ltd

Priority Date:  6 April 2000

Goods Specification:  Class 32: Beers

3.     A total of two adverse reports were issued to the applicant. The applicant was unable to provide evidence to overcome the objection. The applicant requested a hearing on the matter which I conducted as a delegate of the Registrar of Trade Marks on 19 April 2010 in Canberra. Mr Thomas Stevens of O’Reilly Stevens Bovey Lawyers appeared for the applicant.

The Law

4. Section 33 of the Act provides:

33  Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

Presumption of Registrability

5. Mr Stevens argues that the presumption of registrability which arises under section 33 of the Act is particularly relevant for this case. He has relied on the authority of Registrar of Trade Marks v Woolworths Limited[1] where French J stated:

‘The mandatory language of s 33 and the legislative policy which forms it also suggest that the acceptance state is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.’

[1] (1999) APIC 91-400 at 34

6. The legislation is expressed in terms that make it clear that there is to be a presumption of registrability when an application for registration is being examined by the Registrar. This means that if there is any doubt about whether a trade mark should be registered, that doubt will be resolved in the favour of the applicant, rather than against. Therefore, by virtue of section 33(1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The grounds for rejecting a mark are well established and if the Registrar holds, on balance, that one of these grounds constitutes a reason for rejection, the provisions of subsection 33(3) come into operation.

7. Subsection 33(3) of the Act sets down the provisions for rejecting an application. It prescribes that if the Registrar is satisfied either that the application is not in accordance with the Act, or that there are grounds for rejection, the application must be rejected. This is mandatory language. If subsections 33(3)(a) or (b) apply, the Registrar must reject the trade mark application.

8. Therefore, should I as a delegate of the Registrar decide that a valid section 44(1) ground for rejection exists and the applicant is not able to over the objection under the provisions of 44(3) – I must then reject the application as per subsection 33(3).

Discussion

9. The applicant requested a hearing in order to argue that the section 44 ground for rejection against its trade mark application was not appropriate since the trade marks were not deceptively similar. Section 44 of the Act relevantly provides:

44Identical etc. trade marks

(1)Subject to subsections (3) and (4), and 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)…; 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.

10.   The cited trade mark registration has an earlier priority date than the applicant’s trade mark and its goods are the same as those goods claimed in the earlier registration. The applicant has not argued these points. The key issue to be decided now is whether the applicant’s REEF BLONDE trade mark is substantially identical or deceptively similar to the cited XXXX REEF trade mark.

Comparison of the trade marks

11.   It is obvious the applicant’s REEF BLONDE trade mark is not substantially identical to the cited XXXX REEF trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[2]. The applicant’s trade mark includes a number of additional graphic devices and words which act as clear visual differences from the cited trade mark.

[2] (1963) 109 CLR 407 at 414

12. On the other hand, deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have recalling the cited trade mark, to the impression they would get from the applicant’s trade mark.[3]  The probability of deception must be finite and non-trivial.[4]

[3] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J at 415

[4] Registrar of Trade Marks v Woolworths Limited 45 IPR 411, per French J at [43]

13.   The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415:

‘The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]’

14.   The Court added at 416, that:

‘[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.’

15.   The principles laid out in these tests have not been challenged.

16.   Mr Stevens discussed at length his claim that the trade marks in question were not deceptively similar, drawing on the established authorities for the comparison. The issue of substantial identity was not touched on. Whilst I agree that there are clearly differences between the trade marks I cannot agree that they are not deceptively similar.

17.   I consider that the essential feature of 1239763 is the word REEF, and that of 830955 is the word REEF. The four letter word REEF is the most striking as well as being an identical element of both marks. While the applicant’s mark contains additional device elements and words and the cited mark contains the addition XXXX element, these are not enough to sufficiently differentiate the marks from each other. REEF is the most striking word in the marks since it does not have any obvious descriptive association with beer.

18.   Mr Stevens’ has argued that the word BLONDE is a striking and prominent feature of the applicant’s mark and that it is not descriptive of alcoholic beers since the word BLONDE describes light coloured hair. I agree with Mr Stevens that BLONDE does describe light coloured hair but I cannot agree that BLONDE has no meaning when applied to beer. Internet research on various sites including Wikipedia indicates the word BLONDE has taken on a very particular meaning within the beer industry. Blonde beer (or ale) is a particular type of beer which is described as ranging in colour from that of straw to golden blonde. These blonde beverages are explained as being clear, crisp and dry with low-to-medium bitterness usually with aroma from hops and some sweetness from malt. A number of BLONDE beers are sold commercially in Australia and internationally.

19.   Taking the all of the above facts into consideration, it becomes clear that the addition of the word BLONDE and the expressions LOW CARBOHYDRATE LAGER, HAND CRAFTED and NO PRESERVATIVES to the applicant’s mark adds little since these elements are descriptive when applied to the applicant’s goods. Therefore, the significance of these elements in the mark is slight since the mark is very unlikely to be remembered or referred to by these descriptive elements by consumers in the marketplace. The BLUE SKY BREWERY element in the mark is depicted in very small font and it is unlikely to be overly obvious to consumers. In this case, it is more likely that consumers would pay more attention to the larger elements in the mark.

20.   I note that the word BLONDE is depicted in large cursive script in the mark but looking at the applicant’s mark I believe that the most obvious and clearly read word in the mark is the word REEF. REEF is the second largest word in the mark and depicted in a plain font. The positioning of the word REEF and its ease of readability in the mark all contribute to the distinctiveness of the term.

21.   Mr Stevens’ has also submitted that the reputation Castlemaine Perkins Pty Ltd (the cited proprietor) has in the XXXX element of the cited mark is so great that consumers are likely to identify beers labeled with the cited mark by the XXXX element alone. These submissions do not persuade me that the consumers would discount the REEF element in favour of the XXXX element in the cited mark. I believe that it is likely that the beers would be remembered and referred to by the word REEF.

22.   I agree that it is necessary to consider ‘notional use’ in assessing the circumstances under which the two trade marks may be used. Considering notional usage for goods of this nature, I would expect that they may be purchased through bottle shops, supermarkets, licensed convenience stores and the like. In addition to self service, where the visual aspects of the marks may be more noticeable, these goods may also be purchased over the counter by request or even online. In such circumstances, the visual differences between the trade marks would not necessarily be apparent. Generally, when considering the circumstances of use, the visual differences are not of such significance that the overall impression of similarity, as discussed above, will be removed.

23. I am satisfied the trade marks are deceptively similar for the purposes of section 44. However, subsections 44(3)(a) or (b) of the Act make provision for the applicant to overcome a section 44 ground for rejection on the basis of prior use, honest concurrent use or other circumstances.

24.   The applicant has not been able to provide any evidence of use before the filing date so the provisions of 44(3)(a) are not applicable. Nor am I satisfied that the current circumstances make it proper to accept this trade mark for registration. The applicant has simply not provided sufficient reasons for the present application to be accepted under the provisions of subsection 44(3)(b). Accordingly, I do not find it proper in the circumstances to apply the provisions of subsection 44(3)(b) to the applicant’s trade mark in this matter.

Decision

25.   A valid ground for rejection of the application exists under subsection 44(1). The applicant has not been able to overcome this ground for rejection under subsection 44(3).

26.   Therefore, I reject trade mark application no. 1239763.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

31 May 2010