Boccaccio Pty Ltd v Hardy Wine Company Limited

TRADE MARKS ACT 1995
AUSTRALIAN WINE AND BRANDY CORPORATION ACT 1980
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
IN THE MATTER of Australian Trade Mark Application 1079083 in the name of BOCCACCIO PTY LTD for HODDLES CREEK ESTATE & Device in Class 33 and opposition thereto by HARDY WINE COMPANY LIMITED

Delegate:

Debrett Lyons

Representation:

Opponent: Alistair Donaldson, solicitor, instructed by Collison & Co, Patent & Trade Mark Attorneys

Applicant: Robert Kelson of Callinan Lawrie, Patent & Trade Mark Attorneys

Decision:

2008 ATMO 16

s. 52 opposition: grounds of opposition under sections 41, 42(b), 43, 58, 60 and 61 – non established on the evidence; ss. 42(b) and 61 – geographical indications considered; s. 43 – relationship with s. 41 considered; limitation to scope of registration considered and found unnecessary; opposition fails.

Costs: opponent to pay applicant’s costs

Background

Boccaccio Pty Limited filed an application to register a trade mark, current details of which appear below:
Application number:  1079083
Filing date:  4 October 2005
Goods specification:  Class 33: Wines; still or sparkling red and white wines
Trade mark:
(‘the trade mark’)
The trade mark was accepted for possible registration and advertised for opposition purposes on 9 February 2006. Hardy Wine Company Limited (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark on 1 May 2006.
The parties served and filed evidence in accordance with the Trade Mark Regulations 1995 and as set out more fully below.
The matter was set down before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, for a hearing on 18 September 2007 in Melbourne. The applicant was represented by Robert Kelson, Patent Attorney with Callinan Lawrie. The opponent was represented by Alistair Donaldson, Solicitor, instructed by Collison & Co.
Notice of Opposition
The Notice of Opposition makes no reference to section numbers but can be readily interpreted as relying on grounds of opposition under sections 41, 42(b), 43, 58, 60 and 61 of the Trade Marks Act 1995 (‘the Act’). Each of those grounds was pressed at the hearing.
The Notice of Opposition refers to sections 40C and 40D of the Australian Wine and Brandy Corporation Act 1980 but I will interpret that claim as grounded on section 42(b).
The Evidence
Evidence-in-Support
Statutory Declaration by John James Whelan (the first Whelan declaration) with Exhibits JJW-1 to JJW-20.
Evidence-in-Answer
Statutory Declaration by Antonio D'Anna (the first D'Anna declaration) with Exhibits D'Anna-1 to D'Anna-14.
Evidence-in-Reply
Statutory Declaration by John James Whelan (the second Whelan declaration) with Exhibits JJW-21 to JJW-26.
Further Evidence
Statutory Declaration by Antonio D'Anna (the second D'Anna declaration), with Exhibits D'Anna-15 to D'Anna-17.
Preliminary Observations
From my review of the evidence and from limited enquiries of my own into matters of public record, the following factual background can be drawn.
Hoddles Creek is the name of a locality in the Yarra Valley wine district of Victoria. It is also the name of a water course in that area. It shares its postcode with ten other localities (Beenak, Don Valley, Launching Place, Seville, Seville East, Wandin East, Wandin North, Woori Yallock, Yellingbo, Wandin), the 11 localities having a total population of just over 12,000 people.
Hoddles Creek has a primary school and a telephone exchange but has no post office, police station, fire station or public house.
Yarra Valley is a registered geographical indication for wine on the Register of Protected Names kept under the Australian Wine and Brandy Corporation Act. The government website states:
The Australian Geographical Indication "Yarra Valley" was entered in the Register of Protected Names on 30 October 1996 in response to a direction received by the Registrar from the Presiding Member of the Geographical Indications Committee acting under Section 40Z of the AWBC Act 1980.
Hoddles Creek is not a registered geographical indication.
The applicant’s vineyard is in Hoddles Creek. It is named Hoddles Creek Estate. There is a paucity of evidence as to whether other vineyards are located in Hoddles Creek. An article by James Halliday in The Weekend Australian of 19 February 2005 refers to the Kerr family who began a 33 hectare vineyard at their cattle grazing property, “Tibooburra” in 1996. He writes that Tibooburra “has a section of Hoddles Creek on its northwestern boundaries….Most of the vineyard’s grapes are sold under long-term contract to Oakridge Winery, but in 2002 the Tibooburra Wines label was launched”. The Tibooburra Wines are sold via the website >
Reference to that website confirms most of the Halliday article. Additionally of note are a locality map and one of a number of similar wine reviews, both shown below:

As noted previously, Yellingbo, Seville and Hoddles Creek share the one postcode. The reference to a border of Tibooburra defined by Hoddles Creek is a reference to the water course, not the locality. The evidence shows that the water course passes through a number of localities.
The opponent is the owner of two vineyards in the area, one on Beenak Road and the other on Prices Road. The opponent purchased those vineyards in 1987 from the company, Hoddles Creek Vineyards Pty Ltd, and kept the name Hoddles Creek Vineyards for the name of the wine estates. There is no evidence as to the genesis of the name of the former owner.
The evidence indicates generally that the opponent’s vineyards are located some kilometres from the applicant’s vineyard and are not in Hoddles Creek. The “Melways” street directory indicates that Beenak Road is in the locality of Beenak/Gembrook (postcode 3783) and Prices Road is in the locality of MillGrove/Wesburn (postcode 3799).
Use of the name Hoddles Creek in the opponent’s annual company report are references to the name of the vineyards.
Wine produced from the Beenak Road and Prices Road vineyards by the opponent are labelled with YARRA BURN and BASTARD HILL, as shown below. The diminutive words, Hoddles Creek, can be discerned at one of the left-hand bottom corner of the triangle device.

The trade mark comprising the words HODDLES CREEK Estate has been used by the applicant in relation to wines produced on its property since 2000. The frog device featured in the trade mark was introduced in 2004.
The evidence shows that the name Hoddles Creek is used by third parties variously to reference the locality, the applicant’s business or the applicant’s wines. I could not discern any third party use of the name to identify the opponent’s wines which were uniformly referred to as either YARRA BURN or BASTARD HILL.
Submissions and Reasoning
Onus
The opponent bears the onus of establishing its grounds of opposition. The opposition will succeed if one of those grounds is established. The standard of proof is the balance of probabilities (Blount v Registrar of Trade Mark (1998) 83 FCR 50; Rejfek v McElroy (1965) 112 CLR 517 at 521).
Section 41 – the trade mark does not distinguish
Section 41 of the Act provides a scheme for the assessment of the inherent capacity of a trade mark to distinguish the goods of one trade from the similar goods of another trader. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the goods through its use in trade.[1]
[1] Blount Inc v Registrar of Trade Marks [1998] 440 FCA
It is convention to first make an assay of the trade mark against section 41(3) of the Act, which prescribes that:
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
The opponent argues that by reason of the geographical significance of the name Hoddles Creek as an area for the production of wine, coupled with the alleged dominance of the words HODDLES CREEK over both the word ‘Estate’ and frog device, the trade mark is not inherently adapted to distinguish the designated goods from the goods of others.
In reply, the applicant reminded me of what is written in the Trade Marks Office Examination Manual:
“trade marks comprising any combination of words, devices, shapes, sounds, sense and/or colour elements must satisfy the requirement that, when taken as a whole, they are capable of distinguishing designated goods or services in the market place. It could be said, however, that combinations are likely to have a higher capacity to distinguish and are more likely to be prima facie acceptable under Section 41(3).”
What was said long ago by Lawrence J. in the UK case of Diamond T. Motor Co's Appn (1921) 38 RPC 373 (Ch.D.) at 380 remains good law:
“In determining the question of (whether a mark is adapted to distinguish the Applicant's goods from goods of other manufacturers) it is in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves” (at 380)
The applicant acknowledged that the relative proportions of the elements of a trade mark may affect its ability to distinguish, but submitted that the frog device occupies a prominent position above the words.
The frog device is a stylized depiction of a frog. The applicant is the owner of trade mark registration 1109652 for the frog device simpliciter in class 33.
Unaided by the evidence, I would regard the stylised device of a frog as arbitrary and hence distinctive when used in relation to wines. Trade mark registration 1109652 was therefore not a surprise to me. Nevertheless, the opponent challenged the distinctiveness of frogs when applied to wines. It put in evidence the results of a search of the Register for trade marks consisting of, or including, frogs. There are 25 marks once the applicant’s trade marks are subtracted. The search parameters do not appear to be limited to wines since there are trade marks for beer and other alcoholic beverages. The opponent also provided in evidence an article written by Mr James Omond, (introduced to his readers as a specialist in wine law) entitled, “Who Let the Frogs Out?”. He writes that the wine industry is being overrun by frogs.
“Everywhere you look, someone is bringing out a new wine label based around the frog – by name, image or both. Consider the list: Frog’s Pond, Barking Frog, Frog Hollow, Frog Rock, Laughing Frog Wines, Frog Chardonnay, Love the Frog, Who Let the Frogs Out?, Frogmore Creek, Leaping Frog, Fat Frog, Bonking Frog Wines, Wide Mouth Frog, Rocket Frog, Knot of Frogs, Froggy B., Blue Frog, Karatta-Frog Island, Mr Frog, Frog Choir, Sticky Frog, Fizzy Frog, Frog Isle, Bullfrog Flat, Corroboree Frog, Growling Frog, Moaning Frog and Two Frogs”
Mr Omond uses this observation as the opportunity to give some practical advice about the use and selection of trade marks for wine. Those remarks are opinion rather than evidence and so I will not restate them.
The Omond article, together with the search of the Register, assists the opponent in a limited way. I would put it no higher than saying that the evidence is indicative of a level of diminution of distinctiveness of trade marks based on the word “frog” when used in relation to alcoholic beverages. That said, the fact that so many, different, stylised, frog devices co-exist on the Register is proof itself of the distinctiveness of the applicant’s particular frog device which has already been registered.
The applicant made additional submissions regarding the distinctiveness of the words HODDLES CREEK Estate. I will return later to those submissions. For the purpose only of this section 41 analysis, I will assume that the words are non-distinctive.
The trade mark of this application can not be less distinctive than the registered trade mark unless the device element was somehow subsidiary to the words in size, positioning, or in other ways which significantly compromised the distinctiveness of the overall trade mark. I do not find that the arrangement of the elements of the trade mark has that effect.
I therefore find that the trade mark is properly registrable under section 41(3) and so this ground of opposition is not established.
Section 58 - applicant is not the owner of the trade mark
In short, the opponent claims that the applicant is not the owner of the trade mark because the opponent and its predecessors in title have used the words Hoddles Creek as a trade mark for wine from 1987, being prior to the filing date and first use of the trade mark by the applicant.
To establish a section 58 ground of opposition, the opponent must as a threshold issue show that the trade mark is substantially identical to the opponent’s trade mark (Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495) and has been used in connection with the “same kind of thing” (Hicks's Trade Mark , (1897) 22 VLR 63 6 (at 640)). The proper comparison for substantial identity is a side by side comparison of the trade marks (Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407).
The evidence shows two uses of the words Hoddles Creek by the opponent – one on the opponent’s wine labels, the other being in the name of the opponent’s vineyard. It is very clear to me that the purported trade mark used by the opponent on its wine bottle labels is so far from sharing a substantial identity with the applicant’s trade mark as to merit no further discussion. As for the name, Hoddles Creek Vineyards, the only commonality is the words, Hoddles Creek. If required, I would again decide that there is no substantial identity with the applicant’s trade mark, but in this case that is unnecessary as it could not be considered that the usage was in relation to the same kind of thing. There is no evidence of if, or how, the former owner of the opponent’s vineyards used the words, Hoddles Creek (other than as a corporate name) and the opponent uses it only to name its estate. In the case of Opposition by Leroy SA to registration of trade mark applications 722345 LEFROY VALLEY VINEYARDS and 745869 LEFROY VALLEY and DEVICE (2001) ATMO 9, Hearing Officer Thompson said:
“The closest nexus between the goods in question is 'grapes' on the one hand and 'wines' on the other. … I do not believe that, in the Australian context, grapes and wines are goods of the same description”.
It follows that, a fortiori, grapes and wines are not ‘the same kind of thing’.
Of more fundamental importance is the applicant’s submission that nowhere in the evidence is there any reference to the use of Hoddles Creek by the opponent or its predecessor as a trade mark for wine. The applicant submits that the only use of the words by the opponent is as the name of a geographical area in the Yarra Valley where grapes for the opponent's wines are grown.
In Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495, Gummow J. noted that “[i]n a real sense a claim to proprietorship of the one [trade mark] extends to the other” and in Moorgate Tobacco Co Ltd v. Phillip Morris Ltd (1984) 156 CLR 414 - 432, Deane J. said that:
“the prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of "proprietor" of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person”.
I am in complete accord with the applicant’s submission that the evidence does not show any use by the opponent, from 1987 or otherwise, of the words Hoddles Creek as a trade mark in respect of wines. I suspect that the opponent has not properly understood the true foundation of trade mark proprietorship, a matter which will have further consequences for it in terms of its other grounds of opposition.
I find that the opponent has not established its section 58 ground of opposition.
Section 60 – trade mark with a reputation
Section 60, in its unamended form relevant to this opposition, stated:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had 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.
Note 1:For deceptively similar see section 10.
Note 2:For priority date see section 12.
It is for the opponent to point to a trade mark, whether registered or in common law
use, which:
• is either substantially identical with, or deceptively similar to, the trade mark of the application
• before the priority date, had acquired a reputation in Australia; such that
• use of the applicant’s trade mark would lead to deception or confusion.
The applicant argues that the opponent has not made any use of the name Hoddles Creek as a trade mark for wine and is thus not in a position to establish prior use of a trade mark. The applicant further argues that any reputation enjoyed by the opponent prior to the filing date of the application could only be in the trade marks YARRA BURN or BASTARD HILL. There is no evidence that consumers refer to the opponent’s wines as HODDLES CREEK wines, or that wine writers write about HODDLES CREEK wines when referring to the opponent.
Once more, I find the applicant’s argument wholly convincing and so decide that the opponent has failed to establish its section 60 ground of opposition.
Section 42(b) – use contrary to law
Section 42(b) of the Act states that a trade mark must be rejected if its use would be contrary to law. The opponent submitted that use of the trade mark by the applicant on wines would be conduct that is misleading or deceptive or likely to mislead or deceive contrary to section 52 of the Trade Practices Act 1974; that it would be a misleading description and presentation of wine contrary to section 40E of the AustralianWine and Brandy Corporation Act; and would constitute the tort of passing off. In each case, the opponent bears the onus of proving that the use of the trade mark would be contrary to the other law (Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683).
Trade Practices Act 1974
Section 52 of the Trade Practices Act provides: "A corporation shall not, in trade or in commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive".
In the case of S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 43 IPR 581 the Full Federal Court at 587–588 summarized the principles applied in determining a breach of section 52 in the following words:
Section 52 creates what Fox J in Brown v Jam Factory Pty Limited (1981) 53 FLR 340 at 348 referred to as "a norm of conduct". Where that "norm" is not observed, a cause of action may arise under s 82 of the Act in a person who suffers loss or damage thereby.
Section 52 operates in a variety of situations. It may not be limited to cases where the conduct complained of is a misrepresentation although that is the normal case which presents itself: Henjo Investments Pty Limited v Collins Marrickville Pty Limited (1988) 79 ALR 83 at 93 per Lockhart J.
Where the conduct claimed to be misleading or deceptive involves what is said to be a misrepresentation a number of principles applicable are well established. These were summarised in Equity Access Pty Limited v Westpac Banking Corporation (1990) ATPR 40-994 at 50,950-1 in a passage which has been followed in many cases and which was applied by the learned primary judge. We would restate the applicable principles relevant to the present case as follows:
1. There will be no contravention of s 52 unless the error or misconception which occurs results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 199-200 per Gibbs CJ and at 209-211 per Mason J; Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82 at 91; Tobacco Institute of Australia v Australian Federation of Consumer Organisations (1993) ATPR 41-199 and cf Argy v Blunts & Lane Cove Real Estate Pty Limited (1990) 26 FCR 112 at 132.
2. Conduct will be misleading and deceptive if it leads into error: Parkdale at 198.
3. Conduct will be likely to mislead or deceive if there is a "real or not remote chance or possibility" of misleading or deceiving regardless of whether it is less or more than 50%: Global Sportsman at 87.
4. Conduct causing confusion or uncertainty in the sense that members of the public might have cause to wonder whether the two products or services might have come from the same source is not necessarily misleading and deceptive conduct: Parkdale at 200; Bridge Stockbrokers Ltd v Bridges (1984) 57 ALR 401 at 413 per Lockhart J; Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177.
5. In a case such as the present an applicant must establish that it has acquired the relevant reputation in the name or get-up such that the name or get-up has become distinctive of the applicant's business or products: Sheraton Corporation of America v Sheraton Motels Ltd [1964] RPC 202; BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363.
6. Conduct may be misleading or deceptive or likely to mislead or deceive notwithstanding that the corporation said to engage in that conduct acted honestly and reasonably and did not intend to mislead or deceive: Parkdale at 197 per Gibbs CJ; Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 223 per Stephen J; Global Sportsman at 88. Logically, a finding that conduct had been intentionally engaged upon will be irrelevant in determining whether that conduct is misleading or deceptive. It may perhaps be imagined that conduct engaged upon with the intent to mislead or deceive may fail in its purpose and not be found misleading or deceptive. Nevertheless, where the intention to mislead or deceive is found, it logically would be likely that a court would more easily find that the conduct was misleading or deceptive: cf Australian Home Loans Ltd v Phillips (1998) ATPR 41-626 and New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549 at 558. It is unnecessary in the present case to consider the question whether a finding of intention to mislead or deceive can have relevance in other ways to issues such as remedies.
7. In many cases it will be necessary to consider the class of persons to whom the representation was directed: Parkdale at 199 and Taco Bell at 202. To the extent that it is here necessary so to do that must be the class of persons interested in purchasing magazines concerned with triathlon sport.
8. There is no proposition of law to the effect that intervention from erroneous assumption between conduct and misconception destroys the necessary chain of causation with the consequence that the conduct cannot be regarded as likely to mislead or deceive: Taco at 200; Campomar Sociedad Limitada v Nike International Ltd (1998) 156 ALR 316 at 344-5.
9. The test of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective one for the Court to determine. It is ultimately a question of fact.

The opponent has, as previously seen, no reputation in the words Hoddles Creek and so its argument that the applicant’s use of the trade mark would be likely to mislead or confuse consumers into thinking that there exists a connection between the parties’ goods is bound for failure. I reject that argument.
The opponent argues that use of the trade mark is conduct that is likely to mislead or deceive since the goods for which registration is sought are not limited to wines originating in Hoddles Creek. Ignoring the question of whether the same objection might be levelled against the opponent’s wines, I return to the fact that the opponent must show that use of the trade mark would, rather than might, offend against section 52 of the TPA. It has not done so. The argument is rejected.
I regard the opponent’s argument of passing off as undeveloped and unsustainable in view of my earlier finding that it has no reputation or goodwill in relation to the words Hoddles Creek. The argument is rejected.
Australian Wine and Brandy Corporation Act 1980
The Notice of Opposition refers to sections 40C and 40D of the Australian Wine and Brandy Corporation Act. In its written and oral submissions, the opponent referred to section 40E. I will consider each section as necessary.
Section 40C states:
Sale, export or import of wine with a false description and presentation
(1) A person must not, in trade or commerce, intentionally sell wine with a false description and presentation.
Section 40D states:
Meaning of false description and presentation
(1) This section has effect for the purposes of section 40C.
(2) Subject to this section, the description and presentation of wine is false if:
(a) it includes the name of a country, or any other indication that the wine originated in a particular country, and the wine did not originate in that country; or
(b) it includes a registered geographical indication and the wine did not originate in a country, region or locality in relation to which the geographical indication is registered; or
(c) it includes a registered traditional expression and the wine did not originate in a country, region or locality in relation to which the expression is registered; or
(d) it includes a registered ancillary protected expression and the wine did not originate in a country, region or locality in relation to which the expression is registered; or
(e) it is not in accordance with such provisions (if any) relating to the description and presentation of wine as are prescribed for the purposes of this paragraph.
(3) Subsection (2) does not limit what, apart from that subsection, is a false description and presentation of wine.
(4) For the purposes of subsection (2), a registered geographical indication, a registered traditional expression or a registered ancillary protected expression is taken to be included in the description and presentation of wine even if the indication or expression is accompanied by another word or expression such as "kind", "type", "style", "imitation" or "method", or any similar word or expression.
(5) If:
(a) the description and presentation of wine includes a word or expression that is a registered geographical indication, a registered traditional expression, or a registered ancillary protected expression, in relation to a country, region or locality; and
(b) the wine originated in that country, region or locality; and
(c) the description and presentation indicates that the wine originated in that country, region or locality;
the description and presentation is not false merely because the word or expression included in the description and presentation is also a registered geographical indication, a registered traditional expression, or a registered ancillary protected expression, in relation to another country, region or locality.
(6) The description and presentation of wine is not false merely because it includes:
(a) the name of an individual who manufactured, sold, exported or imported the wine; or
(b) if an individual who manufactured, sold, exported or imported the wine lawfully carries on business under the name of another individual who previously carried on the business--the name of that other individual; or
(c) the address of the winery at which the wine was manufactured.
I have already indicated that the only relevant registered geographical indication is Yarra Valley. There is no false description or presentation caused through use of the words Hoddles Creek. There is no sustainable argument that there is a false description or presentation simply because Hoddles Creek is a subregion of the Yarra Valley and the latter is a registered geographical indication.
Section 40E states:
Sale, export or import of wine with a misleading description and presentation
(1) A person must not, in trade or commerce, intentionally sell wine with a misleading description and presentation.
(2) A person must not, in trade or commerce, intentionally export wine with a misleading description and presentation.
(3) A person must not, in trade or commerce, intentionally import wine with a misleading description and presentation.
Section 40F states:
Meaning of misleading description and presentation
(1) This section has effect for the purposes of section 40E.
(2) Subject to subsection (7), the description and presentation of wine is misleading if:
(a) it includes a registered geographical indication, a registered traditional expression or a registered ancillary protected expression; and
(b) the indication or expression is used in such a way in the description and presentation as to be likely to mislead as to the country, region or locality in which the wine originated.
(3) Subject to subsection (7), the description and presentation of wine is misleading if:
(a) it includes a translation of a registered geographical indication, of a registered traditional expression or of a registered ancillary protected expression; and
(b) the inclusion of the translation is likely to mislead as to the country, region or locality in which the wine originated.
(4) Subject to subsection (7), the description and presentation of wine is misleading if:
(a) it includes a word or expression that so resembles a registered geographical indication, a registered traditional expression or a registered ancillary protected expression as to be likely to be mistaken for the registered geographical indication, the registered traditional expression or the registered ancillary protected expression, as the case may be; and
(b) the wine did not originate in the country, region or locality in relation to which the indication or expression is registered.
(5) The description and presentation of wine is misleading if:
(a) it includes:
(i) the name of an individual who manufactured, sold, exported or imported the wine; or
(ii) if an individual who manufactured, sold, exported or imported the wine lawfully carried on business under the name of another individual who previously carried on the business--the name of that other individual; or
(iii) the name or address of the winery at which the wine was manufactured; and
(b) the name or address, as the case may be, is used in such a way in the description and presentation as to be likely to mislead as to the country, region or locality in which the wine originated.
(5A) The description and presentation of wine is misleading if it is not in accordance with such provisions (if any) relating to the description and presentation of wine as are prescribed for the purposes of this subsection.
(6) Subsections (2), (3), (4), (5) and (5A) do not limit what, apart from those subsections, is a misleading description and presentation of wine.
(7) If:
(a) the description and presentation of wine includes a word or expression that:
(i) is a registered geographical indication, a registered traditional expression, or a registered ancillary protected expression, in relation to a country, region or locality; or
(ii) is a translation of an indication or expression referred to in subparagraph (i); or
(iii) resembles an indication or expression referred to in subparagraph (i); and
(b) the wine originated in that country, region or locality; and
(c) the description and presentation indicates that the wine originated in that country, region or locality;
the description and presentation is not misleading merely because the indication or expression referred to in subparagraph (a)(i) is also registered in relation to another country, region or locality.
Simply to underscore the distinction, sections 40C and 40D are concerned with false descriptions or presentations, whilst sections 40E and 40F deal with misleading descriptions or presentations. Exposed in full, the opponent’s argument is that the use by the applicant of the trade mark in the description or presentation of wine would be misleading and contrary to section 40E because “the wine may be taken to be wine of Hardy’s originating from the Hoddles Creek vineyards of Hardy’s; or if the wine of the Applicant does not originate in the Hoddles Creek region, consumers may be misled to believe that the wine does originate from the Hoddles Creek area”.
That argument again ignores the focus of sections 40C – 40F which are each concerned with the application of false or misleading registered indicia.
To the extent that the opponent’s arguments might somehow be brought within an interpretation of section 40F(6), I take added note of sections 5C and 5D[2], but for reasons laid out above reject the argument that there is any likelihood that the applicant’s wines would be taken for those of the opponent by reason of the use of the trade mark. I also refuse to find that there would be a breach of section 40E of the AWBCA through application of the trade mark to wines produced from grapes not grown in Hoddles Creek.
[2] Section 5C states:
Meaning of description and presentation
In this Act, a reference to the description and presentation with which wine is sold,       exported or imported is a reference to all names (including business names) or other descriptions, references (including addresses), signs, designs and trade marks used to distinguish the wine and appearing:
(a) on the container (including on the device used to seal the container or on a label   affixed to the container), on any tag attached to the container or, if the container is a   bottle, on the sheathing covering the neck of the bottle; or
(b) on protective wrappings (such as papers and straw envelopes of all kinds), cartons and                    cases used in the packaging of the wine or the transport of the wine; or
(c) in documents relating to the transport of the wine or in other commercial documents   (for example, invoices or delivery notes) relating to the sale or transport of the wine;   or
(d) in advertisements relating to the wine.
Section 5D states:
Where wine originates
For the purposes of this Act:
(a) a wine is taken to have originated in a foreign country or Australia only if the wine is   made from grapes grown within the territory of that country or of Australia, as the   case may be; and
(b) a wine is taken to have originated in a particular region or locality of a foreign country   or of Australia only if the wine is made from grapes grown in that region or locality.
The opponent has failed to establish any of its section 42(b) grounds of opposition.
Section 61 – false geographical indication
It is convenient to turn to the similar provisions of section 61 of the Act[3]. The opponent’s submission is that the trade mark contains a sign HODDLES CREEK that is a geographical indication for wine originating in the Hoddles Creek subregion of the Yarra Valley, which is a registered geographical indication for wine pursuant to the AWBCA. Goods on which the trade mark may be used are not limited to wines originating from Hoddles Creek and use of the trade mark for wines originating from grapes of another area would be likely to deceive or cause confusion.
[3]Trade mark containing or consisting of a false geographical indication
Hoddles Creek is not a recognised geographical indication and so section 61 has no application to the facts of this case.
Section 43 – Trade mark likely to deceive or cause confusion
Section 43 of the Act states:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The opponent’s submission is that:
“by reason of some connotation that the Opposed Mark has, wines for which the Opposed Mark is used will be taken to originate from the Hoddles Creek area by consumers and others, and use of the Opposed Mark in relation to wines that do not originate from the Hoddles Creek area would be likely to deceive or cause confusion. Further, by reason of the continuous use of the Hardy’s Marks by Hardy’s prior to any use of the Opposed Mark by the Applicant, the use of the Opposed Mark by the Applicant in relation to wine would be likely to deceive or cause confusion
By reason of the word elements of the Opposed Mark, the Opposed Mark has the connotations that wine for which the Opposed Mark is used originates in the Hoddles Creek area. As the class of goods for which the Opposed Mark has applied for is not limited to wine originating from the Hoddles Creek area, use in relation to wine originating other than in the Hoddles Creek area would be likely to deceive or cause confusion.
By reason of the word elements of the Opposed Mark, the Opposed Mark has the connotation that the vineyard or proprietor of the mark is a vineyard named HODDLES CREEK VINEYARD. The use of the Opposed Mark for wine is accordingly likely to deceive or cause confusion by reason of the prior use and reputation of the Hardy’s Marks (HODDLES CREEK VINEYARD and HODDLES CREEK VINEYARDS) for wine”.
Section 43 has been read by the Courts as confined to the situation where the connotation, direct or implicit, arises from the trade mark itself. In the case of TGI Friday's Australia Pty Ltd v. TGI Friday's Inc. [2000] FCA 720, Wilcox, Kiefel & Emmett JJ observed:
"The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by section 43.
Understood in that way, the similarity of the trade mark to the name of the opponent's vineyard is immaterial, even if one puts to the side my earlier finding that the opponent has no reputation in the name Hoddles Creek. On the other hand, the opponent’s now familiar refrain that use of the trade mark in relation to wines not produced from grapes grown in Hoddles Creek would be likely to deceive or cause confusion, finds some resonance under section 43.
I can see no reason to refuse the application under section 43 when the applicant is in fact making wines from grapes grown on its estate and might continue to do precisely that (and for that reason I reject the opponent’s ground of opposition), however the question arises as to whether the application should be limited by adding some form of restriction to the goods specification.
Geographical limitation to the specification
Hoddles Creek is a very small population centre in the Yarra Valley. To call it a town or village overstates the fact. Although not a typically apt description of Australian demography, it might be best described as a hamlet[4].
[4] “A small village; a little cluster of houses in the country; a village without a church of its own but belonging to another parish” (Macquarie Dictionary) ; see also Redbank Long Paddock Pty Ltd [2007] ATMO 37, where it was observed in a similar fact case that:
“The word ‘Redbank’ is the name of a small population centre in the Pyrenees wine district of Victoria, northwest of Ballarat. Redbank has a long history associated with gold mining in the area – but this was probably the glory days of Redbank. I note that Redbank is now a very small population centre: it seemingly does not have a post office or sub-post office – the nearest post offices are in Navarre, Landsborough, Avoca, Bealiba, or Elmhurst. Redbank ceased to have a police station in 1902, presumably with diminishment of the population after the gold working ran down. There is, however, a hotel, the Shamrock & Thistle, which offers accommodation. Redbank has a population of about 150 people although this, apparently, is in decline[9] to the extent that the local football club has been disbanded.
Redbank is thus a large hamlet, or a small village, and the expressions ‘town’ or ‘township’ used in the examiner’s reports (and the submissions of Madderns and counsel) are probably exaggerations”.
With the one uncertain example of “Tibooburra”, which could be in Hoddles Creek but is described as being in Yellingbo, there is no evidence of vineyards in Hoddles Creek other than the applicant’s estate.
The applicant’s submission (the merits of which I deliberately postponed under the section 41 discussion) is that whatever geographical significance is carried by the words Hoddles Creek, the evidence shows that the words Hoddles Creek are well known by the wine industry and by the purchasing public, such that they have developed a secondary significance as denoting the wines of the applicant.
In my assessment, there is ample evidence in the form of wine industry accolades and reviews that the wines of the applicant are known and recognised by the names Hoddles Creek and Hoddles Creek Estate to support that claim. In the face of that evidence, I am cautious about the imposition of limitations on the use of the trade mark. If a trade mark is truly functioning as such, it need not be geographically limited. Properly functioning, a trade mark indicates the link between the maker and the goods, not the place and the goods. I am mindful of what was said by Hearing Officer Thompson in the case of Redbank Long Paddock Pty Ltd [2007] ATMO 37:
"Section 43 is the obverse side of the section 41 coin. If a word is descriptive of the origin of the goods, it follows that the word is misdescriptive when used in relation to goods that do not originate in that place and thus its use would deceive or cause confusion. However, where a trade mark has acquired capacity to distinguish goods or services, it has acquired a secondary meaning-as connoting the goods, rather than the geographical origin of the goods. Thus as the applicant has shown that the trade mark is in fact distinctive in relation to the goods, it appears to me that, in doing so, it has also addressed concerns that arise under section 43".
For the reasons already given, it is not necessary for me to come to a fully considered view on the level of acquired distinctiveness in the name Hoddles Creek which the applicant has garnered to itself. I am instead directed by the words of Kitto J in Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 514:
"[T]he question whether a mark is adapted to distinguish [is to] be tested by 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."

There is no evidence of how the opponent’s predecessor in title to its vineyards came to use the words Hoddles Creek. The vineyards are not in what might be termed, modern day, Hoddles Creek. Perhaps there was a time when Hoddles Creek was the nearest population centre to the land which is now the opponent’s vineyards, but that is speculation. Aside from the 33 hectare planting by the Kerrs on their essentially cattle property, Tibooburra, there is no evidence of another vineyard in Hoddles Creek. There is no evidence of any third party wine growers using the name Hoddles Creek. Bearing in mind the development of wine growing in Australia, these facts bear a familiar resemblance to the circumstances described by Hearing Officer Thompson in the Redbank case:
“There is no conclusive information before me as to whether the area around the village of Redbank takes its name from the village and the name REDBANK thus applies to a district or locality within which wines are grown. The information from the Robbs, albeit second-hand, is that they selected the name because it was that of the nearest village. In a sense, then, the selection of the word to use in relation to their wines could be viewed as being arbitrary. The information supplied by Mr Collings in his declaration would tend to support this view – other vineyards in the same area as the Redbank Winery do not have Redbank as a part of their address and seemingly look to Moonambel as the source of their address. Presumably, if these wineries felt the need to identify their location, they would use the word Moonambel. Conversely, the applicant does have the word ‘Redbank’ as a part of its address and it is, from the maps in evidence, not within the village of Redbank. This latter point is probably the most telling as the Robbs’ winery is (on the maps in evidence) the closest to the village of Redbank. Other present or future wineries which are as close, or closer, might (the effects of the applicant’s use of the trade mark put to one side) innocently have a legitimate need to use the name Redbank to honestly describe the origin of their goods.
… …
The word ‘Redbank’ has, because of doubts over its true geographical significance, some slight degree of inherent capacity to distinguish as a trade mark but also doubts over its capacity to function as such. The evidence shows that the extent to which the applicant or its predecessors in business have used the word as a trade mark is significant and the trade mark has acquired the capacity to distinguish the goods of the applicant. Whatever the geographical significance of the word REDBANK, I believe that the evidence shows that it is widely known within the industry and amongst the public such that it has developed a secondary significance as denoting the wines of the applicant.”
What can be said is that the words Hoddles Creek are indicative of the wines grown by the applicant in a way which usurps the slight geographical significance they carry. The use of the words by the applicant is as a trade mark and there is industry appreciation of them as a trade mark. In those circumstances I can find no reason to limit the trade mark by the imposition of a condition of registration that the applicant’s goods only be produced from grapes grown in Hoddles Creek.
In summary, the opponent has not made out any of its grounds of opposition to my satisfaction and I am not minded for other reasons to impose any restrictions on the use of the trade mark.
Decision
The opposition fails since no ground of opposition has been established. I therefore direct that the application be registered one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.
Costs
I order that the opponent pay the applicant’s costs according to the official scale.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
29 February 2008

(1) The registration of a trade mark in respect of particular goods ( relevant goods ) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods ( designated goods ) originating in:
(a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or
(b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;
if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.
(2) An opposition on a ground referred to in subsection (1) fails if the applicant establishes that:
(a) the relevant goods originated in the country, region or locality identified by the geographical indication; or
(b) the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or
(c) the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:
(i) 1 January 1996; or
(ii) the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;
whichever is the later; or
(d) if the registration of the trade mark is being sought in respect of wine or spirits ( relevant wine or spirits )--the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.
(3) An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:
(a) although the sign is a geographical indication for the designated goods, it is also a geographical indication for the relevant goods; and
(b) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.
Note 1: For applicant , predecessor in title and geographical indication see section 6.
Note 2: For originate (in relation to wine only) see section 15.
Section 6 states:
"geographical indication" , in relation to goods originating in a particular country or in a region or locality of that country, means a sign recognised in that country as a sign indicating that the goods:
(a) originated in that country, region or locality; and
(b) have a quality, reputation or other characteristic attributable to their geographical origin.

[2008] ATMO 16

29 February 2008