Cantine Ceci S.p.A. v Tasmanian Vintners Pty Ltd

[2020] ATMO 52

TRADE MARKS ACT 1995

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

Re:Opposition by Cantine Ceci S.p.A. to registration of trade mark application number 1846111 (class 33) – TERRE VERDE - in the name of Tasmanian Vintners Pty. Ltd.

Delegate:

M. Cooper

Representation:

Opponent: A.P.T. Patent and Trade Mark Attorneys

Applicant: Page Seager Lawyers

Decision:

2020 ATMO 52

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 ground pressed – not established – trade mark to proceed to registration.

Background

1. This matter concerns an opposition by Cantine Ceci S.p.A. (‘Opponent’), under s 52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark detailed below in the name of Tasmanian Vintners Pty. Ltd. (‘Applicant’):

   Application Number: 1846111

   Trade Mark: TERRE VERDE (‘Trade Mark’)

   Filing Date: 19 May 2017

   Goods: Class 33: Wine; Cider (‘Goods’)

2. The Trade Mark was examined and advertised as accepted for possible registration on 12 October 2017 in the Australian Official Journal of Trade Marks.

3. On 7 December 2017, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 8 January 2018, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under ss 42(b), 44, 60 and 62A of the Act. The Applicant’s predecessor[1] filed a Notice of Intention to Defend on 24 January 2018.

   [1] The Trade Mark was assigned from Winemaking Australia Pty. Ltd. to Tasmanian Vintners Pty. Ltd. on 24 July 2019.

Evidence

1. On 30 April 2018 the Opponent filed its evidence in support which comprised the declaration of the Opponent’s attorney, Paul Wyk, with annexures CC-1 to CC-6 (‘Wyk declaration’). That declaration described the Opponent as an Italian wine producer which began selling wine in 1938. He annexed various documents outlining the Opponent’s history, its incorporation and indicating that it predominantly produces Lambrusco wine. Many of the documents were in Italian and not translated[2]. Sales records for 2008 and 2010 to 2014 were also annexed which were said to demonstrate sales to Australia and which highlighted the wines purported to bear the Opponent’s Australian registered trade mark 1500167 (‘Opponent’s mark’). Website screenshots showing bottles with labelling bearing the Opponent’s mark were also exhibited. No further evidence was filed.

   [2] Contrary to reg. 21.18 of the Trade Marks Regulations 1995 (Cth).

2. As neither party requested a hearing, IP Australia wrote to the parties on 18 December 2018 advising that a decision would be made on the written record and provided a period within which submissions should be filed. Neither party filed submissions within the period required, the Applicant filing them on 26 February 2019, the Opponent on 2 August 2019. Neither party requested an extension of time to file submissions however, given the dearth of evidence in this opposition, and in the interests of giving the matter the fullest possible consideration, I have had regard to them (reg 21.15(4) of the Trade Marks Regulations 1995 (Cth)).

3. As a delegate of the Registrar, I have proceeded to decide the matter on the filed material.

Grounds of Opposition and Onus

1. The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[3]

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].

2. As noted above, the opposition grounds claimed in the SGP are those under ss 42(b), 44, 60 and 62A of the Act. The Opponent advised in its written submissions that it no longer pursued its s 42(b), s 60 and s 62A grounds.

3. The time at which a s 44 ground of opposition must be established is the priority date. In this case that date is 19 May 2017 (‘the relevant date’). 

Consideration and reasons

Section 44

1. Section 44 relevantly provides as follows:

44. Identical etc. trade marks

(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.

Note 1: For deceptively similar see section 10.

Note 2:       For similar goods see subsection 14(1).

Note 3:       For priority date see section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. To establish the s 44 ground of opposition under subsection 44(1), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark:

   ·     issubstantially identicalwith or deceptively similar to the Opponent’s mark as nominated in its SGP and

   ·     is in respect of similar goods or closely related services (s 44(1)(a)(i)) and

   ·     has a priority date not earlier than that of the Opponent’s mark (s 44(1)(b)).

2. The Opponent particularised this ground in the SGP as follows:

   The Opponent is the owner of the following Australian Trade Mark registration:

   1500167 in class 33.

   The Opponent's registered Trade Marks [sic] are substantially identical or deceptively similar to the Applicant's Trade Mark, have an earlier priority date and cover similar or closely related goods of the opposed Trade Mark application.

Opponent’s submissions

1. The Opponent noted that the Opponent’s mark ‘comprises two integers: i) the word integer TERRE VERDIANA [sic] and ii) a graphic integer, being the graphic of a ‘bearded man’s bust’. It contended that a purchaser is more likely to order by reference to the words than to the graphic and will not know that that the ‘bearded man’s bust’ is of Giuseppe Verdi ‘and are therefore unlikely to distinguish the graphic [from] several similar graphics of bearded men alone.’ Referring to the Applicant’s observation that several other Australian trade marks include the words ‘Terre’ or ‘Terra’, the Opponent noted that in fact the first 9 letters of both marks were identical and the Applicant had not shown that these were commonly used. It further noted that a ‘considerable’ number of Register entries were also retrieved for the ‘bearded man’ image in class 33, thereby increasing the likelihood of deception or confusion. Contending that ‘a significant number’ of the purchasing public would not know the meaning of the words but may be aware that they are foreign language or Italian, the Opponent referred to Cantarella Bros Pty Ltd v Modena Trading Pty Ltd noting the High Court comment that ‘it is not the meaning of a foreign word as translated which is critical, although it might be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods’.[4] The Opponent submitted that because of ‘the imperfect understanding’ of the words by the purchasing public, it would be inappropriate to dissect them. It further submitted that the first part of a mark should be given most weight and that TERRE VERDE is likely to imperfectly recollected as TERRE VERDIANE by the purchasing public. In the alternative the Opponent asserted that brand variations are not uncommon and that ‘the purchasing public would regard TERRA VERDE [sic] as a variant of TERRE VERDIANA [sic] because of the commonality of the first word and the first part of the second word.’

   [4] [2014] HCA 48 [48].

Applicant’s submissions

1. In relation to s 44 the Applicant did not dispute that the Opponent’s mark had an earlier priority date than the Trade Mark and is for similar goods. It maintained however that the marks were not substantially identical because on a side by side comparison ‘there are two obvious differences’ being the male figure and that the word ‘VERDIANE’ is quite different to the word ‘VERDE’. In relation to deceptive similarity, relying on the Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd[5], it submitted that the words ‘Terre Verdiane’ did not constitute an essential element of the Opponent’s mark and, given the significant points of dissimilarity with the other features, it should be weighted accordingly in determining a consumer’s ‘imperfect recollection’. It submitted that the words ‘VERDE’ and ‘VERDIANE’ ‘create aural, visual and conceptual differences which, in combination, are significant and sufficiently memorable such that deception or confusion are highly unlikely’.

   [5] [2004] FCAFC 196 [102-103].

Consideration

1. The evidence demonstrates that the Trade Mark’s priority date (19 May 2017) is later than that of the Opponent’s mark (10 May 2012) and both trade marks designate the same goods, that is, ‘wine’ (s 44(1)(a)(i) and s 44(1)(b)).

Substantially identical

1. As noted above, the Opponent has not submitted that the respective trade marks are substantially identical. For the sake of completeness however I have given this limb consideration.

The Trade Mark is simply the words ‘Terre Verde’. The Opponent’s mark is a composite mark, the dominant features of which are the face of a bearded man (Giuseppe Verdi) and the words ‘Terre Verdiane’ in a stylised format below it.

TRADE MARK

OPPONENT’S MARK

1500167

TERRE VERDE

1. On a side by side comparison, there are obvious points of difference and I am not satisfied a total impression of resemblance emerges between the Trade Mark and the Opponent’s mark such that they might be regarded as being substantially identical.[6]

   [6] Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd. [1963] HCA 66 [12]; (1963) 109 CLR 407 [415].

Deceptive similarity

1. Section 10 of the Act defines deceptive similarity as follows:

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. In assessing trade marks for deceptive similarity, Windeyer J said in Shell Co. of Australia v Esso Standard Oil (Aust.) Ltd. (‘Shell’):

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. [7]

   [7] Op cit [13]; [416]

3. That is, a determination of ‘deceptive similarity’requires an assessment of the likelihood of deception or confusion arising from a recollection or impression of the relevant mark by potential consumers of the goods and/or services[8]. This is to be assessed by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class/es of goods are sold or services provided.[9] A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.[10] A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods] come from the same source.’[11] The use to be considered is notional use.[12]

   [8] Ibid.

   [9] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641 [658].

   [10] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020.

   [11] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [50(ii)].

   [12] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353 at 362; [1973] HCA 43; 1 ALR 443 at [450].

4. While acknowledging that the marks are to be considered as wholes, in estimating the effect or impression produced on the mind of potential customers, I note the comment in Clarke v Sharp in relation to the appropriate comparison in the circumstances:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing results of such matters, but by judging the effect of the respective wholes.[13]

   [13] Clark v Sharp (1898) 15 RPC 141 at [146].

5. Visually I consider the marks strikingly different. The image of the bearded man is dominant in the Opponent’s mark in contrast to the Trade Mark which comprises words only. To the extent there are common elements between the Trade Mark and the Opponent’s mark, insofar as both use similar words, the visual representation of the words in the Opponent’s mark is different, being in relatively small print underneath the larger dominant image and preceded by a horizontal line which contains a flourish or ‘curl’ in the middle.

6. In relation to the aural effect of the marks, I have had regard to the Opponent’s submission that the goods will generally be ordered verbally and therefore the words are of primary importance in the assessment of deceptive similarity. While I accept that wine might be ordered verbally, there is nothing in the evidence that indicates or demonstrates the Opponent’s goods will only or primarily be ordered verbally. On the contrary, the evidence indicates only that a relatively small amount of wine bearing the Opponent’s mark has been sent from Italy to one or two Australian wholesalers or retailers. There is no evidence that enables any inference to be drawn that it is, for example, available for verbal order at a wine bar or other licensed premises. Even if it is packaged for retail sale, wine is also purchased without any verbal request, for example, directly by a customer choosing it from display in a bottle shop or liquor store, or online. In such circumstances, I consider the visual impact of the trade mark is at least equally important to the aural effect.

7. I also note the Opponent’s submissions that the first word should generally be given the most weight when comparing marks.[14] In revisiting the tests for deceptive similarity, Finn J said, in C A Henschke & Co v Rosemount Estates Pty Ltd:

   [P]articular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks... save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.[15]

   [14] London Lubricants (1920) Ltd's Appn, (1925) 42 RPC 264

   [15] C A Henschke & Co v Rosemount Estates Pty Ltd. [1999] FCA 1561 [35].

8. The Applicant’s submission as to the significant use of ‘terre’ (or the singular ‘terra’) for class 33 wines is substantiated by an examination of the Register, thereby indicating that its use is common to the trade and requiring emphasis on other aspects of the marks. In the absence of any evidence of the use or pronunciation of ‘verde’ and ‘verdiane’, it is at least clear that ‘verdiane’ contains an additional one or two syllables which aurally distinguishes it quite sharply from the shorter ‘verde’.

9. Furthermore, as the Comptroller-General stated in the case of Harrods Ltd’s Application:

   Now it is a well-recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective trade marks and to distinguish between them by those other features. This principle, however, requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or will be used.[16]

   [16] (1935) 52 RPC 65 [70].

10. While there is no evidence before me as to how many of the above noted marks are in use, given the currency of the registration of many of them, I consider it reasonable to assume a number are in use. On this basis I also consider it reasonable to infer that, given the relatively ‘common occurrence in the market’ of the use of ‘terre’ or ‘terra’ for wine, purchasers are familiar with the use of it in association with the sale of wine and are accustomed to differentiating their product choices by paying more attention to other features.

11. There is no evidence concerning the ‘idea’ conveyed by the respective marks.

12. Overall therefore, on the very limited evidence before me, I do not consider it likely that consumers with a recollection of the Opponent’s mark will make a connection between it and the Trade Mark, especially given the striking visual and aural differences noted above.

13. For the above reasons, I am not satisfied that the Trade Mark ‘so nearly’ resembles the Opponent’s mark in any material way such that it would be ‘likely to deceive or cause confusion’ among ‘persons of ordinary intelligence and memory’, even allowing for imperfect recollection.

14. In coming to this conclusion, I have been cognisant of the presumption of registrability which is to be applied in favour of the Applicant.[17]

    [17] See Pfizer Products Inc v Karam (2006) 237 ALR 787 ; 70 IPR 599 ; [2006] FCA 1663 [8].

15. For the above reasons I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s mark as listed above within the meaning of s 44. It follows that the Opponent has failed to establish this ground of opposition under s 44.

Decision

1. Section 55 of the Act relevantly provides:

   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.

2. Subsection (3) does not apply to these proceedings.

3. As the Opponent has failed to establish its ground of opposition, this application may proceed to registration after 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 either the appeal is withdrawn or a court so orders.

Costs

1. Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Mary-Ann Cooper

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

9 April 2020.