Bradley John Woodland and Atcheson Holdings Pty Ltd

[1999] ATMO 94

TRADE MARKS ACT 1995

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

Re:Application 743740 by Bradley John Woodland and Atcheson Holdings Pty Ltd

On 12 September 1997, Bradley John Woodland and Atcheson Holdings Pty Ltd (the applicants) filed application to register the trade mark appearing below in Class 32 for the goods "beers, mineral and aerated waters, fruit drinks".

 

During the course of examination, the applicant's goods were restricted to "beers". The examiner also stated grounds for rejection in terms of section 44 of the Trade Marks Act 1995, citing registration 627422, which is registered for services in Class 42 in respect of "Hotel and motel services, provision of food, drink and accommodation, caravan park services, tourist services in this class, including retailing of souvenirs".  The trade mark appears below:

 

The applicants made submissions seeking to have the objection withdrawn, however the examiner maintained that the ground for rejection remained.  The applicants then sought the services of a trade mark attorney who made further submissions on their behalf.  The examiner maintained the objections over three further reports and subsequently the attorney requested that the issue be heard.

The hearing was before me, a delegate of the Registrar, by telephone in Canberra on 10 August 1999.  The applicants were represented by Mr Tony Mizzi of Griffith Hack, patent and trade mark attorneys of Perth. 

Evidence

Immediately prior to the hearing, the applicants sent me a facsimile transmission being a statutory declaration by Malcolm Birch of Atcheson Holdings Pty Ltd, one of the joint applicants.  The declaration attests to the existence of a third entity, Blue Heeler Brand Australia Pty Ltd - and a business, Blue Heeler Brand Australia - jointly owned or directed by Atcheson Holdings Pty Ltd and Bradley John Woodland.  The declaration attests to the lodgement of application 538527 by Bradley John Woodland to register the trade mark appearing below in respect of "beer" in Class 32:

I will note now that, while there are obvious similarities to the instant trade mark, the trade marks are very obviously not the same and the owner is obviously different too.  This trade mark lapsed on citation of another trade mark.  Mail was returned to this Office when the applicant, apparently, did not inform us of a change in his address.

The declaration attests the lodgment and subsequent registration of application 619794 for the trade mark THE ORIGINAL AUSTRALIAN HEROES; BLUE HEELER BRAND; RED HEELER BRAND in Class 25 for "Clothing, footwear, headgear".

On 15 March 1995 the present owners made application 655837 for registration of the trade mark BLUE HEELER (words) in class 32 in respect of "Beers, mineral & aerated waters".  I note that the applicant apparently refers to the wrong trade mark and number in its declaration.  I further observe that the application lapsed on citation of trade marks including that which is currently cited as a ground for rejection.

The declaration goes on to state that it is the intention of the applicants to manufacture or arrange for the manufacture of beer under the trade mark.  To this end, the applicants have been talking with various manufacturers about the manufacture of beer to the applicants' specifications.  It is my understanding from the submissions and evidence that the costs involved in this are daunting.

In order to promote interest in their projected beer sales, the applicants have been selling clothing, which I gather to be t-shirts, bearing the trade mark, identical to the trade mark now applied for.  It does not appear that the applicants have actually registered, or applied to register this trade mark for clothing.

The applicants go on to claim in its statutory declaration that this use of the trade mark in question on clothing is predominantly a use in relation to beer.  There is no evidence lodged that shows the basis for this claim, although there is a t-shirt carrying the trade mark in evidence.  The claim appears to have no basis in fact or law and I do not accept it.

The declaration goes on to outline part of the history of the application that is now cited against this one.  Apparently, after acceptance of the cited application, withdrawal of acceptance was proposed on the basis of one of the applicants' accepted trade mark applications - 619794 for the trade mark THE ORIGINAL AUSTRALIAN HEROES; BLUE HEELER BRAND; RED HEELER BRAND which I detail, above.  The present joint applicants allege that they provided some form of a consent to the registration of the present citation in order to overcome the impasse.

Finally, the declaration makes argument about whether it is normal for a hotel or pub to produce its own beer - the point being, I gather, that if hotels or pubs do not normally produce their own beer, the applicants consider the objection is ill-founded and should be withdrawn.  I note that the applicants do not produce beer and accordingly have little expertise in this area.  I take the applicants' comments into account, of course, but as they are argument and are not supported, I weight them accordingly.

Reasons
The submissions
At the hearing, Mr Mizzi's argument was centred around the differences in the trade marks, which he argued are neither substantially identical or deceptively similar, and he further argued that the goods and services involved are not closely related.  For the sake of brevity and clarity, I will address his specific points in my reasons, below.

Section 44(1) of the Act allows:

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.

Given that it is accepted that the priority date of the cited application is earlier than that of this application, what I must decide is whether the goods of the applicant are closely related to the services nominated on the cited registration and, if they are, whether the trade marks are deceptively similar.

Closely related goods and services
There are not many decided cases that deal with the question of what constitute 'closely related goods and services'.  In the recent case of Registrar Of Trade Marks v Woolworths [1999] FCA 1020 (paras 29 and 96) (the METRO case), the Full Bench of the Federal Court found that particular goods and the service of the retail of those goods, are closely related.

In Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co (1983) 48 ALR 511, the service of the hire of, and the goods, 'earth moving machinery' were found to be closely related.

In Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, Needham J found that, as the applicant's (defendant's) "baked, fried and frozen rolls with various stuffings, bread, biscuits, cakes, pastry and sweet pastry," were of the same description as the “confectionery including toffee, chocolate and chewing gum included in Class 30” of the opponent (plaintiff), it must follow that the applicant's retail services performed in relation to those goods were closely related to the opponent's goods.

In Aussat Pty Ltd’s Application (1993) 27 IPR 309, I said of the assessment of what constitute closely related goods and services:

I believe that the tests must lie in the adoption of criteria similar to those oft quoted from Re John Crowther & Sons (Milnsbridge) Ltd’s Appn (1948) 65 RPC 369 at 372 adopted by the High Court in Reckitt and Colman (Aust) Ltd v Boden (1945) 70 CLR 84 at 94. I believe that these criteria should include:

• are the services performed directly upon or by means of the goods? if so,
• are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry?

In consideration of the latter point some guide-lines might be suggested and I stress that these are not in any particular order of priority:

• are the goods and services of matching technical complexity?

• is the technical training of the people who make the goods or provide the services the same?

• do the people who make the goods or provide the services belong to the same unions or associations?

• are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services? (For example, in “vehicle hire services” and the goods “cars”, there are the ancillary personnel common to both, such as car detailers, mechanics, salespersons, credit checkers, and so on which give both the same flavour).

• do the goods usually have this service as a related service agreement or package? For instance, it would be most unusual for a person buying a very expensive piece of machinery not to enter some sort of service agreement. Conversely, are the goods usually offered as part of a service agreement?

• is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source? (Such as “transportation services” and “vehicles” ; or, “vehicle hire services” and “vehicles” ; or “restaurant and take-away food services” and “food”).

• does the service consist of altering, matching and/or installing the goods to a customer’s or client’s requirements? (Such as “curtains and furnishings” and “the sewing of furnishings”). It must be observed that the person doing the service of sewing the furnishings is also exercising the same or very similar skills as were involved in mailing the curtains. Also, the installers of domestic and industrial equipment are often employed either directly or indirectly by the manufacturer.

• are the goods and services commonly offered by the one company or organisation? (For example, “retail sales” and the equivalent “goods” ; or, “telephone communication services” and “telephones”).

• are the goods a necessary adjunct to a particular service or the only tangible result of it? (For example, “advertising services” and “directories”, or “publications” ; or, “travel agency services” and “publications” ; or “telephone services” and “directories”).

This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be. However, taken as a general guide these criteria build up a picture of the total of the considerations involved in assessing what are closely related goods and services.

The goods and services involved here are, on the one hand "beer" and, on the other, "Hotel and motel services, provision of food [and] drink … ".  What I am to consider here is what the owner of the cited trade mark can do if he uses his registration to its full extent.  I am also to consider the issue on the basis that the trade mark that has been cited is in use throughout Australia.  However, the decision in the METRO case, supra, (page 20 at para 45) dictates that the test in Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101 (making suitable adjustments for context) should now be read as:

… assuming user by the owners of the cited trade mark in a normal and fair manner for any of the services covered by the registration of their mark (and including particularly any closely related services covered by the proposed registration), is the hearing officer satisfied that there will be a likelihood of deception or confusion among a substantial number of persons if the applicants also use their trade mark normally and fairly in respect of any goods covered by their proposed registration.

The specification "Hotel and motel services, provision of food [and] drink" covers services as diverse as bar, restaurant and cafeteria services, catering, bottleshop, takeaway food, room-service, cocktail lounge services.  Moreover, if the specification of services is read at it widest, that is, that the "provision of food and drink" is not qualified by the expression "Hotel and motel services", the specification is much broader. 

While the above list is not exhaustive, the services of public bar, bottleshop and ancillary services are most relevant to these reasons.  Public bars generally serve a range of beers 'on tap' from behind the bar.  Pubs and bars also sell a range of bottled beer from refrigerators behind the counter.  Not infrequently, the beers that are sold in bars and pubs are brewed on the premises in so-called 'boutique breweries'.  While the brewing services, if they be such, would fall into a class other than 42 within the International Classification of goods and services, the public bar services performed in relation to those beers will occur in Class 42 as part of the services nominated on the cited registration.

Further, there is a significant trend for hotel, motel or public bar services to be franchised or to be a part of a major chain of such establishments.  While Mr Mizzi argued at the hearing that it would not be expected that one hotel or motel would make or bottle its own beer, I think that such reservations could not be expressed about a franchised pub or hotel.

"The provision of food and drink" is, I consider, somewhat analogous to the retail services mentioned in METRO, supra, and in AUSSAT, supra.  It is difficult to imagine how the service of providing beer in a pub or bottleshop could be distinguished from the beer itself. Mr Mizzi gave me the example of the CROWN CASINO or CROWNE PLAZA and claimed that patrons of those establishments would not be likely to be confused or deceived as to the origin of CROWN lager served in those establishments.  However, I believe that this is because of the notoriety of the trade marks of both of those establishments and of the CROWN lager served therein.  In the METRO decision, supra, Wilcox J said:

Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name "Woolworths" cannot be assessed without a recognition of its notorious familiarity to consumers.

In this instance, however, there is no notoriety of which I may take notice - the trade marks do not appear to be widely used, in fact, it is conceded that the applicants' trade mark has not been used at all on the goods in question.  I do not accept the applicant's proposition that the use of the trade mark on t-shirts is a use in relation to beer.  What I am therefore to consider is the notional use of the trade marks in relation to all of the goods and services for which the trade marks are registered or for which registration is sought.

It would seem to me that bar services and bottleshop services are not readily separable in the minds of the public from the beer that is served or sold there.  In the absence of any notoriety of the trade marks in question, it is difficult to see how, in respect of identical, or deceptively similar, trade marks, some connection in the course of trade between the owners of the trade marks could not be likely to be concluded.

I think that it must necessarily follow that, if the cited owner and applicant use the trade marks to the fullest extent of their specifications the goods and services are closely related.

Deceptively similar
The tests of whether trade marks are deceptively similar are the familiar ones quoted from Windeyer J's judgement in the Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 and that of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658. The principles they described are that the matter is not to be decided by comparing the marks side by side but rather that:

“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 the 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, their 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.” (Per Dixon and McTiernan,  JJ, supra.)”,

As I have inferred above, the question of whether the trade marks are deceptively similar is not readily separable from the goods or services (and the context of the trade) in respect of which the trade marks are, or are proposed to be used.  In re Application by Pianotist Company Ltd 1A IPR 379 Parker J stated the rules of comparison thus:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or rather you must refuse the registration in that case.

Ordering beer over a bar, or in a bottle shop where one does not alight from a car, the beer is invariably requested by reference to the word or words that form part of a trade mark - not by reference to the device components that may be a part of the trade mark.  Thus in relation to goods or services ordered in this manner, the words within a trade mark are of primary importance in assessing whether trade marks are similar or not.

Similarly, when referring to a hotel or motel, or the pub or restaurant therein, the public refers to them by the words within a trade mark - not by reference to the device components of the trade mark.

Mr Mizzi, at the hearing, stated that one does not order beer in a bar by reference to the name of the pub that one is in, and I agree.  However, that does not address the awareness of the putative customer that he or she is in THE BLUE HEELER pub or bar and that there is BLUE HEELER beer on tap or sold in bottles from behind the bar (or potentially brewed in a boutique brewery on the premises).  Mr Mizzi gives the example of a hotel called the 'Grosvenor' and submits that one would not normally go into the hotel and ask for a glass of 'Grosvenor VB'.  However, this is not analogous to the situation that I am here considering - to pursue the analogy, what I am considering would be put more in terms of a customer going into the VB hotel and asking for a glass of VB or going into the Grosvenor Hotel or pub and asking for a glass of Grosvenor.

Both the cited trade mark and the applicant's trade mark contain the words BLUE HEELER.  The blue heeler is, of course, well known and recollected by the Australian public as a breed of cattle dog.  Within both trade marks in question, there is a picture of a cattle dog which can only go to reinforce this recollection.  Also in common between the trade marks is the pictorial element of a glass of beer.

It is most likely, therefore, that the trade marks, in the normal course of the trade within which they will notionally be used, would be frequently used orally and be virtually indistinguishable from each other.  The visual elements in common go to reinforcing the similarity of the trade marks.  Thus, while the trade marks are not substantially identical, they must be viewed as being deceptively similar.

At the hearing, Mr Mizzi said that during the course of examination, the examiner had stated in the second report that the trade mark would be accepted for registration if the applicant provided a letter of consent from the owner of the cited trade mark.  In the third report, the examiner retracted this offer.  During the hearing I advised the applicant that, to my knowledge, a letter of consent would not be of any assistance to the applicant in instances of 'triple identity' - that is where the trade marks, the goods and the market are all identical.  This was not the case, I stated, here.  Following the hearing, I received further correspondence from Mr Mizzi stating that both my remarks and the examiner's offer and retraction are an indication that there is doubt as to whether the trade marks are deceptively similar.  In fact both the examiner's offer and my comment are predicated on the fact that the trade marks are deceptively similar and not substantially identical - (but, not that the goods are services aren't closely related).

Decision
I therefore decide that the trade marks are deceptively similar and the goods and services are closely related.  Accordingly, subject to any appeal from my decision, I reject this application.

Ian Thompson
A/Hearing Officer

15 September 1999