Broo Ltd v Independent Brewery Pty Ltd

[2016] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by Broo Ltd to registration of trade mark application 1564666(32) - AUSTRALIAN BREWERY DEVICE - filed in the name of Independent Brewery Pty Ltd.

Delegate:	Adrian Richards
Representation:	Opponent: Luke Merrick of Counsel instructed by Pointon Partners Applicant: Karla Brummell and Michelle Calder of IP Wealth
Decision:	2016 ATMO 61 Opposition under section 52 of the Trade Marks Act 1995 (Cth) – grounds of opposition under sections 58, 60 and 62A considered – section 62A established – registration refused

Background

1. Independent Brewery Pty Ltd as trustee for the Independent Brewery Unit Trust (‘the Applicant’) has applied under the Trade Marks Act 1995 (Cth) (‘the Act’)[1] for registration of trade mark detailed below:

   Trade Mark Number:             1564666

   Priority Date:  25 June 2013

   Specification:  Class 32: Alcoholic beverages, being beer; beer; ale; lager; stout; bitter beer; black beer; dark beer; malt beer; pilsner beer; low carbohydrate beer; de-alcoholised beer; low alcohol beverages containing not more than 1.15% (by volume) of alcohol; root beer; fruit beers; ginger beer; malt-containing beverages (beers); beer wort; extracts of hops for making beer; beer brewing kits; syrups and other preparations for making beverages; accessories, parts and fittings for all the aforesaid goods allowed in this class

   Trade Mark:           

   (‘the Trade Mark’)

   [1] Each reference to a section below is a reference to a section of the Act.

2. This application was examined and the Trade Mark accepted for possible registration. Acceptance was advertised in the Australian Official Journal of Trade Marks on 21 November 2013. Broo Ltd (‘the Opponent’) filed a notice of intention to oppose registration on 3 December 2013, followed by a statement of grounds and particulars (‘SGP’) on 20 December 2013. Together this pair of documents forms a notice of opposition to registration.[2] The Applicant subsequently filed notice of intention to defend the opposition on 13 February 2014. The Opponent was then invited to file its evidence in support of the opposition by 19 May 2015.

   [2] Trade Marks Regulations 1995 (Cth) reg 5.5 (‘the Regulations’). Each reference to a regulation below is a reference to a regulation of the Regulations.

3. The Opponent did not file any evidence in support within the period prescribed in reg 5.14(3). The applicant was then invited to file evidence in answer in accordance with reg 5.14(5), which it did on 17 October 2014. In turn the opponent was given time to file evidence in reply under reg 5.12(6), which it did on 23 December 2014.

4. After evidence in reply was filed, the parties were invited to request to be heard on the opposition. Both parties asked to be heard in person, and the matter was set down for hearing on 10 June 2015.

5. On 29 April 2015 I sent an email to the parties reminding them of their respective obligations under reg 5.17(6) to file an outline of their submissions prior to the hearing. By my direction of 26 May 2015, the parties’ respective deadlines for filing their outlines were both moved forward by a little over a week. Both parties filed their outline of submissions in accordance with my direction.

6. The hearing took place in Canberra on 10 June 2015 before me, a delegate of the Registrar of Trade Marks (‘the Registrar’). The Applicant was represented by Karla Brummell accompanied by Michelle Calder, both from IP Wealth, and the Opponent was represented by Luke Merrick of Counsel, instructed by Pointon Partners.

Evidence

1. The evidence filed in this opposition is set out in the table below:

Declarant	Role	Date declared	Exhibits
Evidence in Answer
Marcello Colosimo	General Manager and co-owner of The Australian Hotel and Brewery	17 October 2014	MC-1 to MC-5
Neal Cameron	Head Brewer of The Australian Hotel and Brewery	16 October 2014	Nil
Evidence in Reply
Kent Bryan Grogan	Director of the Opponent	22 December 2014	KG-1 to KG-20
Paul Clark	Director of the Opponent and Creative Director of Creative Sweat	23 December 2014	PC-1 to PC-22

1. There was some contention at the hearing about the admissibility of the evidence in reply. The Applicant observed that the evidence in reply was identical to some material that the Opponent had attempted to file as late evidence in support and argued that since the deadline for filing evidence in support had been missed, this same information should not be allowed into proceedings under the guise of evidence in reply.

2. Had the Applicant decided not to file any evidence in answer, the Opponent would not have had any further opportunity to file evidence in reply. AS it is, the Applicant elected to file evidence in answer to the SGP, as it was entitled to do under reg 5.14(5). Whenever evidence in answer is filed in opposition proceedings, an opponent has the right the file evidence in reply under reg 5.14(6). This is not, however, an opportunity to open up new areas of controversy late in proceedings. For evidence to properly be in reply it must reply to the evidence in answer. The Applicant has not indicated any specific part of the evidence in reply it considers is not properly in reply to its evidence in answer, instead treating it as a whole, stating that ‘the Grogan Declaration is practically identical to the Inadmissible [evidence in support]’.

10. This tribunal is not bound by the rules of evidence,[3] and is required to conduct oral hearings ‘with as little formality and technicality, and as quickly, as the requirements of the Act, these Regulations and a proper consideration of the matters before the Registrar, allow.’[4] With these principles in mind I have considered the contents of the evidence in reply, and I am satisfied that it is in reply to the evidence in answer. That the Opponent attempted and failed to file the same information as evidence in support is of no consequence to this finding.

[3] Reg 21.15(4).

[4] Reg 21.16(6).

11.  Before moving on to the content of the evidence it is convenient to briefly outline some of the details in the SGP, noting of course that the material in the SGP is not itself part of the evidence in these proceedings. The SGP briefly outlines the business of the Opponent, being ‘producing, distributing and marketing for sale beer products’. It also discloses two trade marks, which it says were developed and then first used by the Opponent in 2011:

(‘the Opponent’s First Trade Mark’)

(‘the Opponent’s Second Trade Mark’)

(together, ‘the Opponent’s Trade Marks’)

12.  The SGP then mentions the Opponent’s efforts in marketing and promoting the Opponent’s Trade Marks. A significant event in this regard relates to a June 2013 private function celebrating the impending public launch of the Opponent’s Australia Draught beer. The SGP alleges that an invitation to this function was sent to the Applicant’s director including an image of the Opponent’s First Trade Mark. The SGP also indicates that the Opponent’s public launch occurred on 24 June 2013, one day before the present application was filed. The SGP also includes an overlay of the Trade Mark and the Opponent’s First Trade Mark, apparently for the purpose of a side by side comparison.

13.  In his declaration (‘Colosimo’), Mr Colosimo states that he is ‘the General Manager and co-owner of Australian Brewery/Australian Hotel and Brewery’, that the Applicant is the holding company of the Trade Mark, and also that Australian Brewery ‘owns’ the trade mark. It is difficult to reconcile these last two statements. The evidence does not demonstrate how both Australian Brewery and the Applicant own the Trade Mark. It may be the case that use of the Trade Mark has been authorized to another entity, but the evidence before me is unclear. Regardless, for the purposes of this matter the Applicant is the company claiming to be the owner of the Trade Mark.

14.  The relationship between Mr Colosimo/Australian Brewery and the Applicant is also unclear in the evidence. Despite this, there does appear be some connection, since Mr Colosimo states that he is both authorised to make his declaration on behalf of the Applicant, and that he has available to him ‘all records of the Applicant’. Mr Colosimo signposts early in his declaration that he refers to both the Applicant and Australian Brewery as a single entity, and so there is throughout an ambiguity as to what entity is being referred to. This ambiguity affects the weight that can be attributed to some of the statements in Mr Colosimo’s evidence.

15.  Colosimo outlines the history and establishment of the Applicant, its turnover and advertising expenditure. It details the development and adoption of a number of beer products and related trade marks by the Applicant as well as awards received in relation to those beer products. Of particular relevance to this opposition, it outlines the development and adoption of the Trade Mark, and asserts that it was first used from June to December 2010. Colosimo also details a conversation between Mr Grogan (Director of the Opponent) and staff of the Applicant at Australian Brewery occurring in September 2010, and alleges that Mr Grogan made a series of threats toward the director and staff of the Applicant on four occasions during October and December 2013.

16.  Mr Cameron’s declaration provides further detail of a conversation he had with Mr Grogan in September 2010, which had been referred to in Colosimo.

17.  Mr Grogan’s declaration restates in more detail much of the information presented in the SGP in relation to the Opponent’s business and the development, adoption and marketing of the Opponent’s Trade Marks. Mr Grogan offers a very different account of his discussion with Mr Cameron, and which he says occurred much later.

18.  Mr Clark’s declaration (‘Clark’) explains that he has been responsible for the design work for the Opponent since 2011. As such, he offers a detailed history of the development and adoption of the Opponent’s Trade Marks, and some history of their use. Mr Clark also provides some background and analysis of the overlay of the Trade Mark and the Opponent’s First Trade Mark which was presented in the SGP (and reproduced below):

19.  Clark provides a side by side analysis of these two trade marks. Mr Clark declares that, in overlaying the items he notes that the ‘ellipse, panels and linework were identical down to a pixel’ and that ‘[t]he colours were almost identical’. Given not all of the colours shown above are in fact identical, the latter statement presumably relates to the colours forming the background for some of the elements.

Grounds and Onus

20.  The SGP nominates grounds of opposition under ss 58, 60 and 62A. The rights of the parties are to be determined as at 25 June 2013, the filing date of the Trade Mark (‘the relevant date’).[5] The onus falls on the Opponent to establish at least one of the grounds of opposition.[6] The standard of proof is the ordinary civil standard of the balance of probabilities.[7]

Reasons

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

[6] Section 55.

[7] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

Section 58

21.  Section 58 is reproduced below:

58 Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:    For applicant see section 6.

22.  In order to establish this ground the Opponent must show that a person other than the Applicant was the first to use the Trade Mark, or a substantially identical trade mark, in Australia. [8] Trade marks are taken to be substantially identical where, upon a side by side comparison, there is a total impression of resemblance.[9]

[8] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375.

[9] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, 415.

23.  The Opponent has nominated the Opponent’s First Trade Mark for consideration in relation to s 58. I have reproduced it alongside the Trade Mark for ease of comparison below:

24.  The Opponent’s submissions noted that Colosimo appears to concede in two paragraphs that these trade marks are substantially identical. However, in the Applicant’s submissions both in writing and at the hearing, this point was denied. In support of its position, the Applicant pointed at another paragraph in Colosimo which submits that these trade marks are not substantially identical. At best Colosimo is not clear on the issue. Even if Colosimo did concede this point, it would still be for me to form my own view as to whether these trade marks are substantially identical, a task to which I now turn.

25.  These trade marks have several elements in common. In both trade marks a red-brown ribbon sits above the center of a yellow to light brown annulus with black outlines. The words within the annulus ‘TRADITIONAL STYLED’ and ‘DRAUGHT BEER’ are identically expressed and placed, as are the words underneath the ribbon ‘FULL BODIED TRADITIONALLY STYLED COLD FILTERED DRAUGHT BEER’.

26.  There are also several points of difference. The words on the ribbon are, respectively, ‘AUSTRALIA DRAUGHT’ and ‘AUSTRALIAN BREWERY’. In the Trade Mark, above the ribbon is a globe device which prominently displays the letters AB, and in the gold ring around the globe are the words ‘INTERNATIONAL FLAVOUR’ and ‘HANDCRAFTED IN AUSTRALIA’. A modified version of this device is repeated to the right of the words ‘DRAUGHT BEER’ in the annulus. In contrast, in the same place the Opponent’s First Trade Mark features a rising sun device which includes a seven pointed star and the words ‘PROUD NATION’, and a representation of the Southern Cross star constellation appears to the right of the words ‘DRAUGHT BEER’ in the annulus.

27.  While these trade marks do share many similar shapes and colours, the different words which appear prominently on the ribbons, and the very different devices appearing above those ribbons require me to find that, when compared side by side, there is not a total impression of resemblance between the Trade Mark and the Opponent’s First Trade Mark. As a consequence of this finding it is unnecessary to go on to consider first use of the respective trade marks, and I find that the Opponent has failed to establish the s 58 ground of opposition.

Section 60

28.  Section 60 is reproduced below:

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)    another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)    because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note:          For priority date see section 12.

29.  To make out this ground of opposition, the Opponent must show that, at the relevant date, another trade mark had a reputation in Australia, and that because of that reputation use of the Trade Mark would be likely to deceive or cause confusion. The Opponent must establish the reputation of that trade mark as a matter of fact.[10] Reputation can, for example, be demonstrated through direct evidence of consumer appreciation or it can be inferred from sales and advertising figures.[11] This reputation must be reputation as a trade mark.[12] The reputation must be amongst a significant section of the relevant market.[13] What is "significant" or "substantial" will depend on the nature of the goods or services in question.[14] Since the present enquiry is concerned with consumers of beer in Australia, this is a large market indeed.

[10] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193, 234.

[11] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 127.

[12] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551, 574-5 [121]-[131].

[13] Re Smith Hayden & Co Ltd's Application (1946) 63 RPC 97 (Ch D).

[14] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91].

30.  The Opponent’s evidence shows that it filed an application for registration of another trade mark on 12 December 2011. It is reproduced below:

(‘the Opponent’s Third Trade Mark’)

31.  It is both the above trade mark and the Opponent’s First Trade Mark that the Opponent relies on for the purposes of this ground of opposition. The Opponent’s evidence shows that the Opponent’s First Trade Mark and the Opponent’s Third Trade Mark have frequently been used in combination. Both have appeared on a website from 14 November 2012, and were included in a variety of marketing materials disseminated in early 2013. There is no evidence before me of promotion of either of these trade marks occurring any earlier than 14 November 2012. This leaves the Opponent with a small window of just over seven months within which it can show that it had attracted a reputation sufficient to satisfy s 60(a).

32.  Applying for registration of a trade mark is not in itself evidence of reputation or use of that trade mark. The Opponent must still demonstrate an appreciation of the trade mark in the relevant market. The Opponent’s evidence provides some detail of a direct marketing campaign and the appearance of the Opponent’s First Trade Mark and the Opponent’s Third Trade Mark on some of its websites. Very little evidence of the success of these efforts has been put forward, and there is no evidence of any sales occurring in this time.

33.  Given the short period within which the Opponent has to demonstrate that it acquired a reputation, and absent sales figures or other evidence of direct customer appreciation, I am unable to infer a reputation amongst a significant section of the relevant market at the relevant date. The Opponent has failed to demonstrate that at the relevant date it enjoyed the requisite degree of reputation in an earlier trade mark. Having failed in the first limb under s 60(a), it is unnecessary to consider s 60(b). The Opponent has not established a ground of opposition under s 60.

Section 62A

34.  Section 62A is reproduced below:

62A  Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

35.  The test for bad faith combines subjective and objective elements. That is, given the knowledge of the Applicant at the relevant date, would its decision to apply for registration be regarded as in bad faith by persons adopting proper standards?[15] This is a serious allegation requiring cogent evidence, but the standard of proof remains that of the balance of probabilities.[16]

[15] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62].

[16] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [145].

36.  Counsel for the Opponent aptly described the positions of the parties in relation to this ground of opposition as ‘a significant factual collision’.

37.  The Applicant’s story begins in June 2010, when it claims to have first used the Trade Mark. According to Mr Colosimo, he personally chose the Trade Mark in that same month, ‘in conjunction with design teams via workshops for the creation of individual beer brands for Australian Brewery’. The inspiration for the Trade Mark was drawn from two sources:

·‘[T]he annulus, red banner containing the key branding material, and the descriptive words “Traditional Australian” and “Draught Beer” within the annulus’ of the Tooheys New® beer label:

·The colours ‘burgundy/maroon and brown/gold’ from the Carlton Draught® beer label:

38.  While inspiration is claimed to have been drawn from the descriptive words “Traditional Australian” in the Tooheys New® beer label, the words that actually appear in the Trade Mark are “Traditional Styled” which is identical to the wording that appears in the Opponent’s First Trade Mark.

39.  Mr Colosimo states that use of the Trade Mark commenced at the Australian Brewery ‘in late June 2010’, ‘on one of the Applicant’s draught products.’ Australian Brewery then opened in July 2010, and for business reasons use of the Trade Mark ended in December 2010. No corroborating evidence of use of the Trade Mark during this period has been provided.

40.  According to the Applicant, in the middle of this relatively brief window Mr Grogan visited Australian Brewery, asked a series of questions, and observed the decals on the Applicant’s taps, its signage and other marketing materials. The Applicant asserts that Mr Grogan then used this knowledge ‘to introduce a brand into the market which was deceptively similar to … the … Trade Mark’. For his part, Mr Grogan declares that he did not visit the brewery in 2010, but did in 2012. Mr Grogan has produced some corroborating evidence of a business trip near the premises of Australian Brewery in February 2012. I observe that the fact that Mr Grogan was in the area in 2012 does not mean that he could not have been there in 2010 as well.

41.  Mr Colosimo also declares that there were three trade marks being used to identify Australian Brewery in 2010. These were the words (THE) AUSTRALIAN BREWERY and the two composite trade marks below:

42.  Mr Colosimo also offers second account of the branding of the Applicant’s beers at the time Australian Brewery opened, declaring that:

Originally, the branding elements were identical for Australian Brewery and the individual beer brands sold by the Applicant. In recent years, the Applicant sought to visually separate the branding elements of the two in the marketplace. Despite such, the key trade mark material remains “Australian Brewery”, with the addition of the descriptive words in composite marks where applicable. (emphases added)

43.  This statement conflicts with Mr Colosimo’s statements that the Trade Mark had been used from June to December 2010. This conflict occurs in two ways.  Firstly, the Trade Mark could not have been used from June to December 2010 if the Applicant’s beer brands were only individualised in ‘recent years’, not prior to the opening of Australian Brewery. Secondly, if at the time of the brewery’s opening all of the Applicant’s beers were sold and marketed under the trade marks used to identify Australian Brewery, ‘with the addition of descriptive words’ then the Trade Mark could not have been used from June to December 2010. Mr Colosimo’s statement above indicates that, at the time the brewery was openend, the Applicant’s draught beer tap decals and other marketing materials included Australian Brewery ‘branding elements’ along with some descriptive words, such as ‘draft beer’, and therefore not the Trade Mark.

44.  The Opponent’s story starts on 6 December 2011. Following a meeting with Mr Grogan, Mr Clark began to design the Opponent’s First Trade Mark. According to Mr Clark, a mark very similar to the Opponent’s First Trade Mark was produced two days later on 8 December 2011. Following this, the wording appearing at the top of the annulus was altered from ‘ORIGINAL COLD FILTERED’ to ‘TRADITIONAL STYLED’ along with a few slight adjustments, and the design of the Opponent’s First Trade Mark was settled in around February 2012. In contrast with the Applicant’s evidence, Clark includes significant corroborating evidence of the process of designing this trade mark, including concept artwork and various prototypes. On the weight of this evidence I am satisfied that the Opponent’s First Trade Mark was created by Mr Clark during this time.

45.  Mr Grogan claims to have visited Australian Brewery on 23 February 2012 following a meeting with a potential distributor which had been brokered by a consultant. This consultant’s work had involved conducting negotiations on behalf of breweries, and helping them to get established. According to Mr Grogan, following the meeting the consultant had invited him to Australian Brewery, which ‘he had recently set up’. Mr Grogan and the consultant briefly met with the Head Brewer at Australian Brewery, Mr Cameron, and had a look at the brewery. Following this, Mr Grogan had three beers out the front of Australian Brewery. He claims that at this time, he saw nothing that resembled the Trade Mark. This is to be expected, since the Applicant’s evidence is that it ceased use of the Trade Mark some time before.

46.  Skipping forward to 2013, in collaboration with the Australian Hotels Association of NSW (‘AHA’) the Opponent arranged a function for the launch of its Australia Draught beer. The invitation to the launch included several representations of the Opponent’s First Trade Mark. An officer of AHA emailed a copy of the invitation to Leon Colosimo, the sole director and secretary of Independent Brewery Pty Ltd. The Opponent has not provided a copy of the email in evidence, but has filed a read receipt showing the subject line ‘Read: Member Invitation – Australia Draught – Monday June 24’, and dated 6 June 2013. In response, the Applicant submits that this email account was configured to automatically send read receipts, and that Leon Colosimo’s main focus is on another business, not Australian Brewery. The Applicant does not deny that the email was received or viewed, but seeks to rely on the fact the onus is on the Opponent to make out this ground, arguing that ‘no inference or speculation can be made as to the fact that read receipts were delivered’. Through this, the Applicant is apparently seeking to imply that Leon Colosimo does not read the emails sent to him from the AHA, or did not read this particular email. Given he is sole director of a company that brews and sells beer, manages a hotel himself, and the fact that he has not directly denied having read it, I find both propositions unlikely. At any rate, by 6 June 2013, the sole director of Independent Brewery Pty Ltd had received a copy of the invitation. A copy of the Opponent’s First Trade Mark as it appeared on the invitation is reproduced below, placed beside the Trade Mark:

47.  If Mr Colosimo had created and adopted the Trade Mark before these events, his expected reaction would be to object to the Opponent’s use of the Opponents’ First Trade Mark as depicted above. There is no evidence that Mr Colosimo made any such objection. The Applicant’s response appears to have been to file an application for registration of the Trade Mark on 25 June 2013.

48.  A striking feature of the Opponent’s First Trade Mark here as opposed to elsewhere in the evidence is that it is set against a maroon background, which approximates the colour of the ribbon. This is also how the Trade Mark has been represented in the application.[17] Among the numerous identical or very similar features I have already noted in my discussion of the s 58 ground of opposition this similarity of background colour counts as yet another. Once again, the relative widths of the concentric circles appearing in the annulus are identical, as is the size, shape and positioning of the ribbon. The words ‘TRADITIONAL STYLED’ and ‘DRAUGHT BEER’ appear in the same order and the same place on both, as do the words:

FULL BODIED TRADITIONALLY
STYLED COLD FILTERED
DRAUGHT BEER

These are not only repeated verbatim but are arranged identically. Most notably both split the phrase ‘traditionally styled’ in half at the end of the first and beginning of the second lines. I have found above that these trade marks are not substantially identical, but it is important to note that the parties agree, as do I, that they are deceptively similar. The similarities between the trade marks are so numerous and precise in their detail that it cannot be mere coincidence. Such a degree of similarity makes it likely that a copy of the earlier trade mark was available to the designer of the later trade mark. This likelihood increases when the various dealings between the Applicant and Opponent are considered.

[17] Noting that the possible registration of the Trade Mark would not be restricted to the colours depicted in the application.

49.  I am left to consider two very different series of events, and decide on which is more likely. In the first account, Mr Grogan saw the Trade Mark in September 2010 and guided by his 14 month old memories, instructed Mr Clark to create the Opponent’s First Trade Mark. In the second account the Applicant created the Trade Mark whilst in possession of an electronic copy of the Opponent’s First Trade Mark it had received less than three weeks before the present application was filed.

50.  The Opponent has shown in evidence the steps taken in the development of the Opponent’s First Trade Mark, such that I am satisfied it was created over the period of late 2011 - early 2012. The Applicant has provided no corroborating evidence of its alleged creation and use of the Trade Mark in 2010. The Applicant’s evidence on this point is also contradictory. Its assertion that the Trade Mark was adopted and used in 2010, stands in contrast to another statement that it was the three Australian Brewery trade marks that were used in relation to its beers at that time. Given the number of elements of precise identity these trade marks share, the most weighty factor is the parties’ respective accounts of the other party’s access to the earlier trade mark. The Applicant relies on Mr Grogan recalling some 14 months later, in near photographic detail, the Trade Mark, remembering that the Trade Mark was, according to Mr Colosimo, no longer being used after December 2010. The Opponent on the other hand can show that the sole director of the Applicant had a copy of the Opponent’s First Trade Mark a few weeks before the present application was filed. For these reasons I find the second account to be more likely than the first.

51.  Prior to filing the present application the sole director of the Applicant had in his possession an invitation to the launch of the Opponent’s Australia Draught beer. It is long established that the knowledge of a director is automatically imputed to the corporation.[18] Through its director the Applicant knew both the precise detail of the Opponent’s First Trade Mark, and the Opponents’ intention to celebrate the launch of a beer bearing that trade mark on 24 June 2013. Armed with this knowledge, the Applicant issued instructions to file for registration of the Trade Mark on the day of the launch, 24 June 2013.

[18] Houghton (JC) and Co v Nothard, Lowe and Wills Ltd [1928] AC 1, 18-19.

52.  The act of applying to register a trade mark that an applicant has previously recognised as the property of another has previously been held to support a finding that s 62A has been established.[19] In the present case, the Applicant applied to register a trade mark which it admits is deceptively similar to the Opponent’s First Trade Mark. It also issued its instruction to apply for registration of the Trade Mark on the same day as the Opponent’s launch (which was filed on the next day). I am satisfied that such conduct falls short of the ‘standards of acceptable commercial behaviour observed by reasonable and experienced persons’.[20] I find that, on the balance of probabilities, the Opponent has established the ground of opposition under s 62A.

[19] Bombala Council v Peter Wilkshire [2009] ATMO 33, [35].

[20] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [77].

Decision

53.  Section 55 relevantly 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.

Note:           For limitations see section 6.

54.  The Opponent has successfully made out a ground of opposition, and I refuse to register the Trade Mark.

Costs

55. The Opponent has requested an award of costs. The ordinary rule is that costs follow the event. I therefore award costs against the Applicant in accordance with the amounts set out in Schedule 8 of the Regulations.

Adrian Richards
Hearing Officer
Trade Marks Hearings
9 August 2016