Brisbane Distillery Pty Ltd ATF the Spirits Trust v Badger and Bandicoot Pty Ltd as trustee for Bill McToosh Clan Trust

[2023] ATMO 114

TRADE MARKS ACT 1995

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

Re:Opposition by Brisbane Distillery Pty Ltd ATF The Spirits Trust to registration of trade mark application number 2214184 NORTH OF EDEN GIN SCHOOL (class 41) – in the name of Badger and Bandicoot Pty Ltd as trustee for Bill McToosh Clan Trust

Delegate:

Tracey Berger

Representation:

Opponent: Ahearn Fox

Applicant: Level Up Legal Pty Ltd

Decision:

2023 ATMO 114

Trade Marks Act 1995 (Cth) – opposition under section 52 – section 62A considered – ground not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Brisbane Distillery Pty Ltd ATF The Spirits Trust (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below in the name of Badger and Bandicoot Pty Ltd as trustee for Bill McToosh Clan Trust (‘Applicant’):

[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2.     Trade Mark Number:	3.              2214184 (‘Application’)
4.     Filing Date:	5.              28 September 2021
6.     Services:	7.              Class 41: education services; entertainment; training
8.              Trade Mark:	9.              NORTH OF EDEN GIN SCHOOL	10.            (‘Trade Mark’)

1. Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 14 March 2022 followed by a Statement of Grounds and Particulars (‘SGP’) on 12 April 2022.  The Applicant filed a Notice of Intention to Defend on 21 June 2022.

2. The following evidence was then filed by the parties:

   ·    Opponent’s Evidence in Support:
   
   Declaration of Jon Phillip Atherton, sole director of the Opponent, made on 21 September 2022 with Exhibits JPA-1 to JPA-22 (‘Atherton Declaration’)

   ·     Applicant’s Evidence in Answer: 
   
   Declaration of Gavin Paul Hughes, co-founder and Director of the Applicant, made on 14 December 2022 with Annexures A to Q (‘Hughes Declaration’); and

   Declaration of Paul McLeay, Chief Executive Officer of the Australian Distillers Association Inc (‘Association’), made on 12 December 2022 (‘McLeay Declaration’)

   ·     Opponent’s Evidence in Reply

   Declaration of Ian Robert Tannahill, attorney of Ahearn Fox Patent & Trade Mark Attorneys, made on 22 February 2023 with Exhibit IRT-1 (‘Tannahill Declaration’)

3. Once the time for filing evidence had ended, the parties were given an opportunity to request a hearing or a decision without hearing.  On 11 May 2023, the Applicant requested the matter be decided without a hearing.  I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me for decision based on the aforementioned materials.

   Grounds of Opposition, Onus and Standard of Proof

   5.     In the SGP, the Opponent particularised a ground of opposition under s 62A. 

   6.     The Opponent bears the onus of establishing the nominated ground of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   7.     The date at which the rights of the parties are to be determined is 28 September 2021 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

   Opponent’s evidence

4. The Opponent was incorporated on 28 February 2019 and claims it owns Brisbane’s first gin distillery.  Since April 2019, the Opponent’s distillery has produced alcoholic beverages using Australian botanicals which have received various awards locally and internationally.

5. Since July 2019, the Opponent has offered gin making workshops at its distillery, under the mark Gin School, to educate consumers about gin and allow them to distil their own gin (‘Opponent’s Services’).  Approximately 15,000 customers annually attend the Opponent’s Gin School workshops.  The Opponent’s Services offered under the mark Gin School are promoted on signage at its distillery, on its Facebook page and on its bus which operates as a mobile bar.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman J).

6. The Opponent owns trade mark registration 2024491 for GIN SCHOOL in class 33 for “alcoholic beverages (except beer); distilled alcoholic beverages” (‘Opponent’s Registration’) and, on 23 December 2021, it filed application 2238972 for registration of GIN SCHOOL as a defensive trade mark for education software and services in classes 9 and 41. 

   11.   In the Atherton Declaration, Mr Atherton declares that the term GIN SCHOOL is not commonly used in connection with gin making experiences and that ‘masterclass’ or ‘workshop’ are more commonly used terms.  Examples of other traders using the terms ‘masterclass’ and ‘workshop’ are provided.

   12.   The remainder of Mr Atherton’s evidence is about the activities of the Applicant.  Mr Atherton claims that the Applicant offers a similar gin making experience to the Opponent’s Services and has adopted the Trade Mark knowing that the Opponent uses GIN SCHOOL for its similar services and to trade off the Opponent’s goodwill.

   13.   The Tannahill Declaration annexes website extracts from companies featured in Annexure L of the Hughes Declaration of businesses posting on Instagram using #ginschool.

   Applicant’s evidence

   14.   In the Hughes Declaration, Mr Hughes attests that he and his partner set up Stony Creek Farm and Distillery after moving to Stony Creek in Bega Valley, New South Wales in mid-2017.  The Applicant has been distilling gin at this distillery since October 2018 and started selling its gin under the mark NORTH OF EDEN in January 2019.

   15.   As a rural boutique distillery, the Applicant planned to diversify its income stream “to capitalise on a highly seasonal influx of tourists to the region” by having a cellar door and ‘gin school’.  The Applicant first conceived the idea of having a gin school after Mr Hughes and his partner attended an educational event at ‘45 Gin School’ in the United Kingdom in mid-2017. 

   16.   The Applicant’s plans to have a gin school at its distillery have been in the public domain since March 2019 when an article about the Applicant mentioned this intention in the Region Media’s ‘About Regional’ publication. 

   17.   The Applicant started to accept bookings for its gin educational experience on 9 December 2019, offering weekly classes from January 2020 although these classes were temporarily interrupted by bushfires and again by the pandemic. 

   18.   The Applicant claims that it was unaware of the Opponent, its distillery or gin school until it received a letter of demand from the Opponent’s attorneys in September 2021 (‘Demand Letter’).     

   19.   Mr Hughes attests that the term ‘gin school’ is a very common term in the distilling industry in Australia and overseas.  In support of this contention, the Hughes Declaration annexes an Instagram page showing almost 12,000 posts using #ginschool and the results of a Google search for ‘gin school’ referencing Manly Spirits Gin School, Earp Distilling Gin School, Gin Lane Gin School and Woodchoppers Inn Gin School.  

   20.   In the McLeay Declaration, Mr McLeay declares that the Association is the peak industry body representing the interests of Australian craft distillers and their supply chains.  According to Mr McLeay, the Association firmly believes that the terms ‘gin school’ and ‘masterclass’ are commonly and widely used in the distilling industry to describe gin making classes and gin education experiences.

   Discussion

   21.   Section 62A provides that registration of a trade mark may be opposed on the ground that the application was made in bad faith. 

   22.   The Opponent bears the onus of establishing that the filing of the Application was in bad faith and it will not be easily established given the serious nature of the allegation.[4]

   [4] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer D. Nancarrow).

   23. Bad faith is not defined in the Act, but the decided cases establish that assessing whether an application was filed in bad faith is a two-step test with a subjective and an objective element. The subjective element requires findings as to what the Applicant knew at the Relevant Date. The objective element involves a consideration of whether “in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards”.[5]

   [5] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [167] (Dodds-Streeton J).

   24.   In its SGP, the Opponent claims that the Application was filed in bad faith because the Opponent has operated a ‘gin school’ attached to its distillery since 2019, registered Gin School in class 33 and applied to register that mark in class 41, and the Application was lodged shortly after the Applicant received the Demand Letter from the Opponent’s attorneys.

   25.   The Opponent’s application to register GIN SCHOOL in classes 9 and 41 is after the Relevant Date and is therefore not relevant.

   26.   The Applicant’s evidence establishes that the Applicant adopted the Trade Mark around two years before receiving the Demand Letter or filing the Application.  Mr Hughes acknowledges that the Applicant decided to apply for registration of the Trade Mark after receiving the Demand Letter.  Accordingly, the Applicant was aware of the Opponent at the time of filing the Application.  However, the Applicant’s knowledge of the Opponent and filing of the Application in response to receiving the Demand Letter does not equate to bad faith.  Mere awareness of, or prior dealings with, the Opponent do not on their own indicate that the application for the Trade Mark was made in bad faith. 

   27.   Mr Hughes declares in his evidence that upon receiving the Demand Letter, he checked the details of the Opponent’s Registration and determined that it covered alcoholic beverages in class 33 and ascertained that the Opponent did not have a registration or application for GIN SCHOOL for educational services or other services in class 41.  Mr Hughes did not regard the Opponent’s Registration as problematic for the Applicant’s use of its Trade Mark given the registration covers goods.  Moreover, Mr Hughes was of the opinion that the Opponent could not claim a monopoly in the term ‘gin school’ for educational services because the term is descriptive and commonly used.  For these reasons and given the distance between the respective operations of the Opponent and Applicant, Mr Hughes concluded that there was no likelihood of confusion with the Opponent’s Services.  Having assessed the validity of the Opponent’s claims outlined in the Demand Letter, the Applicant made a commercial decision to file the Application. 

   28.   It is apparent from the Applicant’s evidence that a number of other Australian traders use the term ‘gin school’ in relation to the same or similar services to those claimed in the Application and that use of this term is not unique to the Opponent.  In the circumstances, I am not satisfied that the Applicant’s decision to file the Application amounts to conduct which falls short of the standards of acceptable commercial behaviour.

   29.   Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register the Trade Mark was a decision made in bad faith.  The s 62A ground of opposition is unsuccessful.

   Decision

   30.   Section 55 provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, 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.

   31.   The Opponent has not established the ground of opposition under s 62A.  Accordingly, trade mark application 2214184 may proceed to registration one month from the date of this decision.

   32.   If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the Application should otherwise be in accordance with the Court’s order or direction.

   33. The Applicant has sought an award of costs. As costs generally follow the event, I award costs against the Opponent in accordance with s 221 in the amounts set out in Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   10 August 2023