Carlton and United Breweries Limited v Melbourne Bros

[1999] ATMO 111

TRADE MARKS ACT 1995

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

Re:Opposition by CARLTON AND UNITED BREWERIES LIMITED to registration of trade mark application number 670892 in the name of MELBOURN BROS' for the trade mark MELBOURN BROS. Label

Background
On 28 August 1995, an application was filed in the name of Melbourn Bros' (the applicant) for registration of a trade mark shown below:

 

The applicant sought to register the mark in respect of goods: "beer, fruit beer, lager, ale, porter and stout", which goods fall in class 32.  The mark proceeded to acceptance in due course and was advertised as such in the Australian Official Journal of Trade Marks of 14 November 1996.  On 14 February 1997, Carlton and United Breweries Limited (the opponent) filed a notice of opposition to registration of the trade mark, containing four grounds of opposition.  At the hearing, however, the opponent chose to concentrate on submissions and evidence in relation to the following grounds:

• that the opposed mark is not capable of distinguishing the applicant's goods - s.41

• that the opposed mark is substantially identical with, or deceptively similar to, other person's trade marks with earlier priority dates - s.44

• that use of the opposed mark would be likely to deceive or cause confusion, having regard to reputation in a mark or marks before the priority date - s.60. 

The hearing on the opposition was held in Melbourne.  Mr Tim Allen of Griffith Hack, patent and trade mark attorneys of Melbourne, appeared for the opponent.  The applicant was represented by Mr Malcolm Royal, of Phillips Ormonde & Fitzpatrick, also patent and trade mark attorneys of Melbourne.

The evidence
As the evidence in support, the opponent has filed eleven statutory declarations.  Of these, the chief declaration is made by Kyle Richard Johnston, who is the brand manager of the opponent company.  In briefly describing the background of the opponent company's history, which is supplemented by a detailed history in a book annexed to his declaration, he refers to the acquisition of the mark MELBOURNE BITTER in about 1925.  He provides confidential information on sales of the product under the mark MELBOURNE BITTER and exhibits samples of the mark in actual use.  A number of exhibits illustrate the manner of advertising and promotion of the mark.  Mr Johnston says that extensive enquiries he had made within the opponent's management had revealed no other beer brand in Australia which comprises or includes the words MELBOURNE or MELBOURN other than the opponent's MELBOURNE BITTER mark.  He also asserts that, when giving orders for beer at a retail level where the vast majority are given orally, most purchasers refer to and recognize the MELBOURNE BITTER beer as simply MELBOURNE, but does not support his claim with any evidence.  This claim is further explored by the supporting declarants.  In his opinion, the applicant's mark resembles a "traditional/heritage" style label; such labels, which have become popular in the past ten years having been adopted for use by liquor traders, including the opponent and its subsidiaries. 

The ten other declarations are from persons who have been involved in the liquor industry for varying periods.  Many of these declarations originate from the opponent's own subsidiaries.  They support the statements of Mr Johnston regarding the reputation of the mark MELBOURNE BITTER, the ordering of the opponent's beer orally and in an abbreviated form, and the occurrence of the word MELBOURNE in respect of beer only in the opponent's mark.  The declarants share the opinion that, given the customers' awareness of the MELBOURNE BITTER brand, also known as MELBOURNE, use of the applicant's mark was likely to result in deception or confusion.   

The evidence in answer includes thirty-six declarations, in the form of questionnaires, from persons either employed in the liquor trade, or their customers expected to be familiar with beer marks.  The questions mainly focus on the respondents' awareness of MELBOURNE BITTER beer, how they order and recognize the beer, and whether they would confuse the applicant's mark with MELBOURNE BITTER.  The applicant's remaining evidence is a statutory declaration by Malcolm Royal, a patent attorney of the firm Phillips Ormonde & Fitzpatrick.  Mr Royal's statements that Melbourne is a well-known city throughout the world, as well as a major centre for the brewing of beer, are supported by exhibits to his declaration.  Annexed are also results of a search from the Trade Mark Office records showing marks containing the word MELBOURNE for relevant goods.  

The evidence in reply consists of one statutory declaration by Christina Rose Linforth, with exhibits.  Ms Linforth is a secretary and paralegal employed by the firm of attorneys acting for the opponent.  She says she has conducted extensive enquiries in relation to Mr Royal's assertion that Melbourne is a centre for the brewing of beer, reporting the results of the investigations in her declaration.  She has also obtained a list of Australian brewers published by the Institute for Brewing Studies, which is exhibited to her declaration. 

Submissions and analysis
In introducing the submissions on behalf of the opponent, Mr. Allen directed my attention to the marks of registrations 23686, 709996, 215383 and 225427, upon which the opponent would rely in terms of s.44.  In relation to s.60, he said, the opponent desired to focus on the mark MELBOURNE BITTER and on MELBOURNE, as the product sold under the MELBOURNE BITTER mark was commonly known.  He contended that, for the purposes of s.60, it would be proper to regard MELBOURNE as a mark in which a relevant reputation existed, as per Photo Disc Inc v Gibson and Another 42 IPR 473 and Meldrum & Anor v The Trinh Tran (1999) AIPC 91-476.

Mr Allen referred to the tests for determining substantial identity and deceptive similarity by Windeyer in Shell Co (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 414-415, Australian Woollen Mills Limited v F.S. Walton & Co Limited (1937) 58 CLR 641 and Canon Kabushiki Kaisha v Brook and Another (t/a Cannon Watch Company) (1996) 36 IPR 88 at 97.

He then proceeded to lead me through the evidence in support, turning first to the chief statutory declaration by Mr Johnston, referring to the history of what Mr Johnston describes as the "MELBOURNE BITTER" brand, its very long and extensive use, significance of the oral expression and recognition of the mark as MELBOURNE, and the enquiries which had revealed no other use of a mark for beer containing the word MELBOURNE or MELBOURN.  He drew my attention to Mr Johnston's definition of the applicant's mark as being of a "traditional/heritage" style and that such labels had returned into fashion.  

Turning to the ten supporting declarations, Mr Allen reminded me that the purpose of these declarations was to show that the applicant's mark, used in a normal and fair manner, would be likely to deceive or confuse a considerable number of consumers.  As, in discussing these declarations, Mr Allen closely followed the contents of each paragraph in the declarations and many of the declarant's statements are similar, I do not propose to set out his submissions in detail, but will relate them only in general terms.  Referring first to those declarants whose businesses are not associated with the opponent, he noted their managerial positions, their long involvement in the liquor retailing trade, the recognition of MELBOURNE BITTER as a famous trade mark, the emphasis of MELBOURNE or MELBOURN not featuring in other beer marks, and the tendency of many customers to order the opponent's beer by reference to it as MELBOURNE.  As to the other supporting declarations, Mr Allen stressed the wealth of the declarants' experience in serving customers at bars and bottle shops; that they were to be considered as persons in a position to know the extent of the mark's reputation, and what was likely to happen if the applicant's mark appeared on the market.  He then carefully went through each declaration which, in essence, cover very similar ground and observations to those I have mentioned earlier.  In particular, my attention was directed to the significance of the declarants' opinion that confusion with the applicant's mark was likely to arise because of the existing reputation in the mark MELBOURNE BITTER, which, according to the evidence, was also identified as MELBOURNE. 

Moving on to the applicant's evidence, Mr Allen criticised the "trade" and "customer" declarations as not properly executed under reg.21.6(4).  He said that the authenticity of those declarations was so doubtful as to warrant their being entirely disregarded, or, at least, afforded diminished weight.  Furthermore, most of the trade declarants did not qualify as such, because no details had been given as to the duties they performed in the liquor trade.  Among the declarants, a number described themselves as holding management positions, but did not offer any evidence as to their experience in serving the customers.  That, he said, was fundamental to their ability to express any meaningful views as to how MELBOURNE BITTER was ordered, and whether use of the applicant's label was likely to cause confusion.  Much the same could be said of the declarants who described their work as a "Publican", "Bar manager" and "B/Shop" respectively, because there was no indication that their duties actually involved serving the customers.  He noted that most declarants, on viewing the applicant's label, had said that they would not associate the beer with any particular brewery, and it was significant to observe that the question referred to "brewery", not "brewer".  In elaborating on this point, he said that a particular brewery could be understood by the declarants to be a place where beer was brewed commercially, therefore most declarants might not be able to associate even MELBOURNE BITTER with a particular brewery.  Alternatively, the declarants might regard brewery and brewer as being synonymous and associate the applicant's label with MELBOURNE BITTER, but be unable to identify the brewer of MELBOURNE BITTER. 

In Mr Allen's opinion, the manner in which some questions in the declarations had been posed suggested single responses so that the declarants had to choose one of the two specified versions.  The formulation of the questions in this way left open the possibility that there could be a significant number of occasions when the customers ordered beer by reference to MELBOURNE, not MELBOURNE BITTER, or that the declarants might also know the opponent's product as MELBOURNE.  Commenting on the question as to whether the declarants would confuse the applicant's label with MELBOURNE BITTER, Mr Allen submitted that the wording of the question was rather inelegant and gave rise to ambiguity.

Mr Allen made similar observations to those above in analysing the "customer" declarations in the applicant's evidence.  He said that these declarations suffered from not identifying the relevant attributes of the declarants, such as their age.  Noting in particular that, when the declarants were asked whether the beer was known as MELBOURNE BITTER or MELBOURNE, four of the declarants had ticked the box indicating "MELBOURNE", Mr Allen reiterated the point made earlier that the question did not provide for a response that the beer could be known and ordered by reference to both versions of the mark. 

Referring to Mr Royal's declaration, Mr Allen submitted that the evidence concerning the state of the Register was irrelevant; one was to consider only the marks comprising or containing the word MELBOURNE that were in the market place.  Further, Mr Royal's assertion as to Melbourne being the centre for brewing beer by other companies, supported by a list of twenty enterprises, was incorrect, as shown by Ms Linforth in the evidence in reply.

On completing his comments on the evidence, Mr Allen submitted that the applicant's evidence was flawed in many respects and was of no probative value, whereas the opponent's evidence had clearly and adequately supported the ss. 44 and 60 grounds of opposition.  The opponent's evidence had also demonstrated that, at the priority date, the applicant's label was not capable of distinguishing the goods of the application from those of other persons. 

Mr Royal, on behalf of the opponent, directed my attention to the grounds in the notice of opposition, which specified four opponent's registered trade mark numbers for consideration in terms of ss. 44 and 60, pointing out that use of other marks ought not to be taken into account.  That would exclude any use by the opponent of the word MELBOURNE by itself.  In submitting that the major question in the present case would revolve around the issue of the likelihood of deception or confusion, Mr Royal focussed on the geographic significance of the word "Melbourne".  When someone wanted to appropriate a geographic name as a trade mark, one had to look at it with great deal of care, he said.  The opponent had asserted that it had proprietorial rights in the trade mark MELBOURNE, but the evidence for making such assertion was totally insufficient to conclude that the opponent had such a right.  Melbourne was a place where beer was not only likely to be brewed, but it was already brewed there.  The fact that beer was brewed in Melbourne by other persons than the opponent showed "Melbourne" to be a word which might be used by traders, if they desired to say that their product was a Melbourne beer.  In this connection, Mr Royal utilized two exhibits annexed to Ms Linforth's declaration in the opponent's evidence to illustrate his point.  Commenting on the investigation carried out by Ms Linforth, Mr Royal said that the report of the investigation supported his contention as to Melbourne having locations where beer was actually brewed. 

Concerning the question of the likelihood of deception or confusion of the marks at the date of the application, Mr Royal submitted that, while the historical development of a trade mark usage and of the market were of some relevance, one had to consider what impression existed at that time, which was to be distilled from the opponent's evidence.  He said that the historical material needed to be viewed carefully, because, for a very long time, the major brewing companies had enjoyed geographic monopoly, thus, for many years the Victorian beer produced by the opponent and its predecessors had not been sold in other states.  Pointing in particular to the change in marketing, where monopolies over the state borders were broken, as indicated in The Amber Nectar by Keith Dunstan in the opponent's evidence, Mr Royal submitted that, in view of a significant monopoly in the state of Victoria, the word "Melbourne" was used by the opponent to identify a variety of beer.  It was not used in the traditional trade mark sense to identify the products of one manufacturer.  The advertisements in support of the opponent's case, Mr Royal said, were directed at the purchasers of the opponent's products and to particular flavours.  It was in that context that the opponent had been very careful that it used the words MELBOURNE BITTER, rather than MELBOURNE.  

Responding to Mr Allen's criticism of the applicant's trade and customer declarations, Mr Royal said that he realized pro forma evidence had its difficulties, but that I should look at all of the evidence for what it was, i.e. statements made as to what particular belief the declarants held at the time, or on practices of other people from their observations.  He stressed that the thrust of all that evidence was to support the view that the opponent's mark was not MELBOURNE, and that no reputation existed solely in that word.  He also made the comment that, in instances where the witnesses had referred to MELBOURNE used as a trade mark simpliciter, they did not say that they themselves asked to be supplied with "Melbourne", but referred to their customers.  It was not important, however, how anyone else had used the mark, because the evidence showed that, where MELBOURNE was used in relation to the products, the word had a geographic relevance. 

Concerning the opponent's claim that the applicant's trade mark was a traditional style label, Mr Royal disputed that suggestion, submitting that there was no evidence of use of such a style in relation to MELBOURNE BITTER, nor was there evidence of any change taking place in that direction, although he conceded that traditional style labels were in common use.  For such a contention to be of any substance, Mr Royal argued, a trend would need to be shown that MELBOURNE BITTER had been taken from its modern label to an old-fashioned one, and that members of the public recognized it. 

In comparing the marks, Mr Royal reminded me that one must look at the whole mark the applicant desired to register.  He noted the unconventional spelling of the word "Melbourn" in the mark, which, in his view, very few Australians would fail to detect, as well as the common short form of "Bros." for "Brothers" accompanying it.  He said there were a number of other components in the mark that created an impression of an old style label, and that it was not appropriate to simply consider what effect the words MELBOURN BROS. would leave on the public.  In support, he referred to the words of Burchett J in Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, at 512:

If the word 'EUROVOGUE" is abstracted from the total mark of the respondent and then used in a way which is deceptive in relation to the cited mark, as Sargant LJ pointed out in London Lubricants at 280, registration of the mark will not prevent the bringing of an ordinary action for passing off.

Commenting on Mr Royal's submissions, Mr Allen explained that MELBOURNE was not particularised as a separate mark in the notice of opposition, because its significance was derived from MELBOURNE BITTER.  The fact that people knew of it and ordered it as MELBOURNE went to the significance of MELBOURNE as opposed to BITTER, the latter being a purely descriptive term, whereas MELBOURNE was the critical component. 

Substantially identical or deceptively similar mark
Section 44 of the Act, as it relates to the present case, states:

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.

It is to be noted that section 10 defines a deceptively similar mark to another as one which so nearly resembles that other trade mark as to be likely to deceive or cause confusion. 

The opponent has indicated it relies on the following registrations, in class 32, in relation to the s.44 ground:
     Number     Registration date                 Trade mark                   Goods

1. 28 February 1919  Ales, lager beer
     and stout

1. 11 September 1937    MELBOURNE BITTER        Ale

1. 1 December 1967  Beer, ale and lager

1. 14 January 1969  Beer, ale, lager

   stout

As all four of these trade marks were registered before the filing of the applicant's mark and the respective goods are virtually same, to complete the consideration in terms of s.44, I need to decide whether the marks are substantially identical or deceptively similar.   

Mr Allen has referred me to the familiar tests on substantially identical or deceptively similar marks outlined in Shell v Esso and Australian Woollen Mills v Walton, both supra.  Comparing the applicant's mark and the opponent's above marks side by side, I note that the only feature which bears some resemblance between the marks is the word MELBOURNE, rendered as MELBOURN in the applicant's mark.  But, there are present other elements in the marks sufficiently different to create an impression of the marks being so unlike as to dismiss any perception that the marks are substantially identical. 

In Australian Woollen Mills v Walton, looking at the question of deceptive similarity, Dixon and McTiernan JJ. said, at 658:

In deciding this question, the marks ought not, of course, to be compared side by side.  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 description must be considered.  If a 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.  Evidence of actual cases of deception, if forthcoming, is of great weight. 

At the outset of the deliberations, it is to be noted that no evidence of any deception has been produced in these proceedings

Three of the opponent's marks, 24686, 215383 and 225427, comprise labels as does the applicant's mark.  Each of these labels is of a different format.  However - and here, with respect, I will differ from the applicant's view - the most obvious and striking features in those marks are the words MELBOURN BROS. or MELBOURNE BITTER.  Cursory inspection of the applicant's mark reveals additional elements to the words, such as a group of buildings which appear to depict a brewery, horses and carts, two discs with devices of barrels, hops, ears of grain and a scroll containing the words in small size letters MELBOURN BROTHERS BREWERY.  I can say from my knowledge of trade marks that have been before the Trade Marks Office that most of these devices, particularly buildings, ears of grain, discs and scrolls, also appear in a number of other trade marks for alcoholic beverages, including beer, which belong to different owners.  The marks annexed to Mr Johnston's declaration under exhibit KRJ7 provide some examples.  I consider therefore that most purchasers, having become accustomed to features repeated in other marks for alcoholic beverages would largely overlook the device elements in the applicant's mark. 

Two of the opponent's registered marks 215383 and 225427 contain simpler elements than the devices in the applicant's mark, i.e. the non-distinctive letter 'M' in their centre portion, while the latter mark also shows the letters 'CUB' above the word MELBOURNE.  In addition to the heavy block type words MELBOURNE BITTER and ALE in the mark 24686, there are two discs separated by the word BITTER, one with the letters AB and the other containing what appear to be almost illegible words MELBOURNE CO-OPERATIVE BREWERY COY. LTD.   Whatever the devices, letters, or words in the marks under consideration might be, all of these features are, in my opinion, subordinated by the conspicuous and overbearing presence of the words MELBOURN BROS. in the applicant's mark and MELBOURNE BITTER in the opponent's marks.  In view of their dominance, it is more than probable that many purchasers concerned with the products would remember the marks to be labels, but may not recall their precise pictorial details in the marks.  In this regard, it has been observed by Lord Radcliffe in de Cordova v Vick Chemical Co (1951) 69 RPC 103, at 106, that "in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole".

When customers ask for beer at a hotel or other outlet, the most obvious manner of doing so would be by reference to the prominent words featured in the marks.  Considering the word MELBOURN, any significance the omission of the letter "E" might have in distinguishing it from the conventional spelling of the word MELBOURNE, becomes non-existent in terms of sound.  As to the words BROS. and BITTER, while there are noticeable differences in the appearance, structure and meaning between these words, any distinguishing features would considerably diminish in their pronunciation where they are prefixed by an identical word and both begin with the same letter 'B'.  This factor is particularly significant in situations where there is the likelihood that the goods could be ordered in a noisy environment as might be in the present situation if, for example, the drinks are ordered in a crowded bar, or a busy retailing store.  Indeed, the declarants in the opponent's evidence state that the vast majority of orders for the opponent's beer at a retail level are made orally, and, in doing so, many customers even shorten the brand name to MELBOURNE, rather than order their choice of the opponent's beer by the correct description MELBOURNE BITTER.  Furthermore, given the close oral similarity between the marks, consideration should also be given to confusion likely to arise during telephone conversations - "Rheinliebling" Trade Mark [1966] RPC 68. Thus, in the present case, verbal identification of the opponent's marks by the consumers is an important feature in procuring beer under the label MELBOURNE BITTER, necessitating that due consideration be given to the "effect of spoken description" of the marks.

The applicant's evidence shows registered marks in classes 33 and 32 in respect of alcoholic beverages which contain the word MELBOURNE.  These are word marks LORD MELBOURNE in class 33 (286926), MELBOURNE CUP in classes 32 and 33 (435655 and 435654), and M 2000 MELBOURNE 2000 in classes 32 and 33 (716711) which contains a stylized version of "2000".  I also accept the applicant's argument that beer is brewed in Melbourne and that the word "Melbourne" has a widely recognized geographic connotation, also noting disclaimers of the word in the marks registered under the repealed Act, the Trade Marks Act 1955, expressed in endorsements to the effect that registration of the mark shall give no right to the exclusive use of the word MELBOURNE..

The applicant's argument has some merit.  It is, of course, well-established in case law that, generally, in considering the possibility of confusion between trade marks, where a non-distinctive element or one which occurs in other marks in the same market is reproduced in marks owned by different proprietors, then purchasers tend to pay more attention to the other features contained in the marks so as to ensure they select the product of their choice - Harrods Ltd's Appn (1935) 52 RPC 65 and Coopers Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536. However, in the present situation, I must take a different stand. While it is true that the evidence produced by the applicant on the status of the Register reveals that the word MELBOURNE has been incorporated in marks by three other owners besides the opponent, to cover alcoholic beverages, that, in my opinion, is not sufficient in itself to maintain that the common or descriptive element should be entirely disregarded when assessing a possible conflict between the marks - Broadhead's Appn (1950) 67 RPC 209. It has been stated by Romer J in Payton & Co Ltd v Snelling Lampard & Co Ltd (1900) 17 RPC 48, at 56, that:

[W]hen one person has used certain leading features, though common to the trade, if another person is going to put goods on the market, having the same leading features, he should take extra care by the distinguishing features he is going to put on his goods, to see that the goods can be really distinguished.

Here the marks concerned share not only the similar significant word elements MELBOURN/MELBOURNE, but also an identical first letter of the following word, i.e. in BROS. and BITTER, respectively, and all the marks, with the exception of the mark of registration 70996, are composite marks.  Additionally, the words "bros." and "bitter", both being descriptive, reduces further the significance of features the marks might otherwise possess in order to be more easily discernible.  I have not lost sight of the principle that, for the purpose of comparison, marks must be considered in their entirety.  My conclusion that the applicant's mark is deceptively similar to the opponent's marks is largely based on the finding that, although the marks do contain other features than the words to which I have referred, those features are not sufficiently impressionable and distinctive to enable the marks to be clearly distinguished.  For those reasons, on encountering the applicant's mark, purchasers may well mistakenly assume that they are obtaining the opponent's product. 

Accordingly, the opposition succeeds on this ground. 

Whether the opponent's similar marks have acquired a reputation
Section 60 of the Act reads:

60.  The registration of a trade mark in respect of particular goods or services may be opposed on the grounds 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.

In relation to the s.44 ground I have arrived at the conclusion that the applicant's and the opponents marks are deceptively similar.  It remains to be decided whether the deceptively similar opponent's trade marks acquired a degree of reputation in Australia before the date of this application, 28 August 1995, so that use of the subject mark would be likely to deceive of cause confusion. 

Following the decision of the Full Bench of the Federal Court in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), the test concerning deception and confusion of the marks has to be answered in positive terms. The test adopted from Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97, at 101, and applied to previously is to read as:

Having regard to the reputation acquired by the name [the opponent's trade marks], is the [hearing officer] satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, [will result in a likelihood of] deception and confusion amongst a substantial number of persons?

A common theme that runs through the opponent's evidence and submissions is the assertion that the MELBOURNE BITTER marks for beer are known as MELBOURNE, and it has been suggested that, through recognition and promotion of the word MELBOURNE, for the purposes of s.60, reputation can be said to have accrued from use of this word.  According to the declarants in the opponent's evidence, a great number of purchasers of the beer abbreviate their verbal references of the mark MELBOURNE BITTER to MELBOURNE and, on occasions, references have been made in this form in promoting the mark in television commercials, as evidenced by the video tape under annexure KRJ4.  However, I can find no persuasive evidence that reputation in the mark attaches to the word MELBOURNE, rather than MELBOURNE BITTER.  In other advertising media: newspaper advertising, external signage, as well as many television commercials, the word BITTER is not omitted from the mark.  The same form of the mark appears to have been employed in sporting venues and on billboards, although no samples of such advertising feature in the opponent's evidence.  In this connection, it is pertinent to note that, in Mr Johnston's declaration, the details concerning sales of the product identify the mark  as MELBOURNE BITTER, and the mark in use in the samples annexed to his declaration clearly display those words.  Similarly, the other declarants in the opponent's evidence state that they regard MELBOURNE BITTER as a well-known beer brand, not merely MELBOURNE.  Furthermore, despite Mr Allen's comments on the flaws in the applicant's trade and customer declarations, it is of some importance to note that the majority of the declarants recognize the beer as MELBOURNE BITTER.  The opponent's beer under the mark MELBOURNE BITTER may be conveniently abbreviated in spoken form and called MELBOURNE by the customers, but the evidence does not bear out the contention that MELBOURNE is recognized as a trade mark, and that any reputation resides in it, rather than in the trade mark MELBOURNE BITTER, for reasons which I will develop below.  

The details as to the history and use of the opponent's MELBOURNE BITTER marks, given in Mr Johnston's declaration, support the opponent's argument of the beer under the marks as having gained a nation-wide reputation in Australia.  Mr Johnston says that the mark MELBOURNE BITTER had been used by the opponent's predecessors since 1904, and continued to be a successful brand in respect of beer throughout Australia under the opponent's ownership since about 1925.  That beer has been sold in each state and territory through over 10,000 retail outlets, which include hotels, bottle shops and supermarket liquor outlets.  From the estimated retail value of the total sales of the MELBOURNE BITTER beer and the volume of its sales, which are given in terms of litres between 1 July 1982 and 30 June 1995 July, including an approximate number of litres sold annually, it is indubitable that this particular beer brand has attracted an overwhelming attention.  This is demonstrated by Mr Johnston's statement that, for many years, the MELBOURNE BITTER beer has been one of the top ten packaged beer brands sold in Australia. 

From the manner of advertising the marks utilized by the opponent, as shown in its evidence, it can be readily deduced that the words MELBOURNE BITTER, in one form or another, would have been noticed by a vast number of the population in Australia.  Through the nineteen television commercials screened on many occasions  throughout this country between 1968 and 1991, which are exhibited on a video tape, the mark would have entered many living quarters, being exposed to persons not necessarily those concerned with the drinking of beer.  Similarly, large numbers of Australians would not but notice the opponent's sizeable external signages displayed on hotels and other liquor retailer stores while walking or driving past such premises.  In the twenty-eight photographs in the evidence, which represent samples of the signs advertising the opponent's beer, the inclusion of the letter "M" in a circle in the mark does not detract from the significance of the words MELBOURNE BITTER.  According to Mr Johnston, at the filing date of the present application, MELBOURNE BITTER had been displayed prominently on signage at about 750 outlets in Australia.  The impact on the general public of the large number of such signs throughout the country cannot be underestimated.  The popular sporting venues, to which Mr Johnston refers, such as the Melbourne and Sydney Cricket Grounds, the Gabba in Brisbane and the Bellerive Oval in Hobart, where the mark MELBOURNE BITTER had been displayed on hoardings during the football and cricket seasons from about 1960s until 1995, would also have considerably added to the awareness of the mark, although Mr Johnston's declaration provides no details as to the number of occasions this form of advertising was undertaken by the opponent.  It is not possible to comment on the billboard advertising on sites in Melbourne and Sydney, mentioned by Mr Johnston, as no other information is given, apart from their approximate size, and the fact that such billboards had been erected until "about 2 - 3 years ago".

The opponent has provided ten statutory declarations from persons involved in the liquor trade either in the states of New South Wales, Victoria or Queensland.  Six of the declarants say they regard MELBOURNE BITTER as a well known beer throughout Australia, while others restrict their knowledge of its notoriety to individual state or states, the state of Victoria predominating.  All of them express the opinion that use of the applicant's label would create confusion in view of the customers' awareness of the opponent's MELBOURNE BITTER brand, which is also known as MELBOURNE.  Furthermore, they consider that there existed the likelihood of confusion of the marks at 28 August 1995, given the reputation of the MELBOURNE BITTER mark before that date.  As the majority of the declarants are employed by ALH Group Pty Ltd, which is a subsidiary of the opponent, I will focus my attention more on the assessment of the marks by the three declarants, who are employed by retailers in direct competition to the opponent's subsidiary.  Mr Foster, who is the general manager - merchandise of Liquorland (Australia) Pty Ltd, Australia's largest liquor retailer, believes that customers are likely to see the applicant's label as a newly introduced "traditional" style label for the opponent's MELBOURNE BITTER product, i.e. that it had simply been re-labelled in accordance with a marketing trend towards the use of "traditional" style labels.  A similar opinion is expressed by Mr Le Sauvage, the group manager liquor control of Austotel Management Pty Ltd that owns and operates hotels in Queensland, New South Wales and Victoria.  Mr Falcone, general manager of Philip Murphy Wine and Spirits, one of Victoria's largest liquor retailers, attests to the reputation of the MELBOURNE BITTER brand and expresses the view that use of the applicant's label would cause confusion because of that reputation.

If the applicant has used its mark in Australia to any extent, then such evidence was not presented in these proceedings.  In an attempt to discharge its onus that there would be no likelihood of deception or confusion, the applicant has produced the declarations from members in the liquor trade and its customers to which references have been made earlier in this decision.  These declarations were subjected to severe criticism by Mr Allen as not being properly executed and exhibiting deficiencies in other respects.  However, I do not propose to ignore them entirely.  The declarations/questionnaires supply the essential information as to the respondents' name, address, where they are working in the liquor trade, and their position in the employment.  The respondents are required to answer the questions by indicating "yes", "no", or "uncertain", or by ticking a box.  As submitted by Mr Allen, the persons witnessing the respondents' signature do not state their titles, nor, with the exception of two, have they inserted the date when, and the place where, the declarations were made.  Nevertheless, given that an administrative tribunal, such as the Registrar or his delegates, are not bound by the strict rules of evidence - TA Miller Ltd v Minister for Housing and Local Government [1968] 1 WLR 992 and Minister for Immigration & Ethnic Affairs v Poci 31 ALR 666 - I have given some consideration to these declarations.

Having been referred to a reproduced applicant's label, the respondents were asked whether, on seeing the label, they would associate the beer with any particular brewery.  Those responding in the affirmative were requested to state which brewery, or, if uncertain, to explain the reason why.  The majority of the respondents did not identify any brewery, and only one clearly associated the label with the applicant.  All the declarants were aware of a beer "known as MELBOURNE BITTER" and, when required to respond as to whether they would confuse 'beer with the label on Page 1 [where the applicant's label is shown] with MELBOURNE BITTER", all gave a negative response.  It seems to me that, even if it were possible to give full weight to the responses provided by the declarants on the question of deception or confusion as it relates to s.60, if indeed the canvassing of opinions on this issue had been the applicant's intention in an attempt to rebut the opponent's assertions, then this evidence would have been too inadequate to satisfy me in that regard.  Firstly, it is uncertain from the declarations that the persons were aware of the origin of the applicant's mark, i.e. that they connected the mark with the applicant.  Secondly, although they appeared to know the opponent's beer as MELBOURNE BITTER, there is no indication that these words were associated with the opponent's trade marks bearing those words.  Thirdly, the respondents were not asked their opinion on the possible confusion between the applicant's mark for beer and the marks of registrations 24686, 70996, 215383 and 225427 for the same goods.  Fourthly, and most importantly, no inferences can be drawn from the responses that the declarants believed they would not confuse the applicant's mark with the beer under the MELBOURNE BITTER label, because of the reputation achieved by MELBOURNE BITTER mark.

From the opponent's evidence, the reputation residing in the MELBOURNE BITTER marks in Australia, as at 28 August 1995, cannot be disputed.  The applicant for its part has failed to discharge its onus in satisfying me that, in view of that reputation, no deception of confusion would be likely to be experienced by a reasonable number of potential consumers if its mark was used in a normal and fair manner for the goods specified in the application.  I am bound to find therefore that the opponent's case succeeds in terms of s.60.

The opponent's submissions that, by establishing the applicant's mark to be likely to cause confusion, the opponent would also show that the mark was not capable of distinguishing the applicant's goods, is not well founded, because s.41 of the Act defines the basic tests for the mark to be registered by the applicant, but makes no reference to marks owned by other persons, which may be in conflict with the applicant's mark.  Consequently, I dismiss the ground of opposition based on s.41. 

Conclusion
I have held that the applicant's mark is deceptively similar to the opponent's registered marks in terms of s.44, as claimed in the notice of opposition.  The applicant's evidence has failed in rebutting the opponent's allegation that the applicant's mark should not be registered on the grounds based on s.60 ground.  However, I found no substance in the opponent's assertion that the mark is not registrable under the provisions of s.41.  Accordingly, subject to any appeal from my decision, I refuse registration of this application. 

Costs
Both parties have sought costs.  As the opponent is the successful party in these proceedings, it is entitled to costs.  I therefore award costs to the opponent.

Vija Zars
Hearing Officer
29 October 1999