Cave De Pongracz Limited v Veuve Cliquot De Ponsardin

[1998] ATMO 18

Trade marks act 1955

decision of a delegate of the registrar of trade marks with reasons

Opposition by VEUVE CLIQUOT PONSARDIN to Application No 598450 in the Name of CAVE DE PONGRACZ LIMITED

The application

Cave de Pongracz Limited, a South African company (“the applicant”), applied on 18 March 1993 for the registration of the trade mark shown below

Registration was sought in respect of the goods “Alcoholic beverages, excluding beer; and all other goods in this class”, being International Class 33.  The application was advertised accepted on 29 September 1994 under no 598450.

Opposition

On 27 January 1995 Veuve Cliquot Ponsardin, a French company (“the opponent”), gave notice of opposition to the registration of the trade mark pursuant to s49 of the Trade Marks Act 1955 (Although the Trade Marks Act 1995 commenced on 1 January 1996, as provided in the transitional provisions of Part 22 of that Act the provisions of the repealed Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.).  The grounds of the opposition were widely stated but essentially may be stated as follows:

·   the trade mark is substantially identical or deceptively similar to certain registered trade marks of the opponent in terms of s33 of the Act;

·   because of the reputation of the opponent in its registered trade marks the use by the applicant of its mark would lead to deception or confusion in terms of s28 of the Act;

·   the applicant is not the proprietor of the trade mark in terms of s40 of the Act.

The evidence

Evidence in support

*   declaration of Gerard Roger Georges Baillat, legal officer in the sole employ of Veuve Cliquot with Exhibits GB-1 to GB-11;

*   declaration of Rupert John Clevely, Manager of Veuve Cliquot UK, with Exhibits RC-1 to RC-3;

*   declaration of Paul Anthony Stenmark, Manager of Samuel Smith & Son Pty Ltd and Brand Manager of Veuve Cliquot Champagne, with Exhibits PAS-1 to PAS-18;

Evidence in answer

*   declaration of Ian Rolyat Taylor, solicitor of Davies Ryan De Boos, Intellectual Property Solicitors, with Exhibits IRT-1 to IRT-48;

*   declaration of Brett Lewis, partner of Davies Ryan De Boos above, with Exhibit BL-1;

*   declaration of Philip Murphy, liquor retailer, with Exhibits PM-1 and PM-2;

*   declaration of Jacobus Adriaan Louw Fouché, Marketing Director of Distillers Corporation Limited, a South African company, with Exhibits JF-1 to JF-8.

Evidence in reply

*   declaration of Robert Hill-Smith, wine merchant;

*   declaration of Robert Hirst, Managing Director of Tucker Seabrook (Australia) Pty Ltd;

*   declaration of Kenneth Brian Stonier AO, vigneron.

Hearing

The evidence stages of the opposition proceedings were completed on 8 August 1997 and on 24 October 1997 Davies Collison Cave, patent attorneys for the applicant, requested that the opposition be set down for hearing.  The hearing was set down for 3 February 1998 in Melbourne.  Mr Brett Lewis of Davies Collison Cave appeared for the applicant.  The opponent was not represented at the hearing but written submissions were lodged on its behalf by Freehill Hollingdale & Page, solicitors.

Background

Veuve Cliquot Ponsardin is an old-established French company, originally founded in 1772, which in time came to concentrate almost exclusively on the production and distribution of wines from the Champagne region of France.  It has a world-wide reputation for fine Champagne wine.  The history of the company’s activities is set out in the Baillat declaration.  It appears that wine produced by the company has been available in Australia since 1900 and it is the registered proprietor in Australia of the following trade marks the earliest of which dates from 1921.  The features of the marks in dispute are what is referred to as the “arabesque” device surrounding the words VEUVE CLIQUOT PONSARDIN and the “star-with-tail” device or “comet” device appearing in the circle above the words in the earliest mark but which appears to be replaced in the later marks by the letters VCP and an anchor device.

Number	Goods	Trade Mark
30388	Champagne wines
517989	Alcoholic beverages, except beers
555338	Alcoholic beverages, except beers
585660	Alcoholic beverages in this class

The applicant company is a member of the Distillers Group of companies which is one of the largest liquor producers and distributors in South Africa.  Its predecessor in business was registered as a company in 1968 and changed its name to the present in 1990 when it began to produce a bottle-fermented sparkling wine.  That product was first sold under the trade mark in Australia in 1993.  The mark itself was devised in the late 1980’s, the elements of the mark identified as the “arabesque device” and the five point star with tail device” being adopted, according to the evidence of Mr Fouche, to embellish the label because of their common use in the trade in the liquor industry particularly in relation to bottle-fermented sparkling wines.  According to the same evidence no reference was made to or use made of the labelling used by Veuve Cliquot Ponsardin at any stage in the design of the label.  Since 1993 the applicant’s goods have been imported into Australia and sold by various distributors.

proprietorship

For the question of proprietorship to arise at all it is necessary that the marks in suit be the same mark or at least substantially the same mark.  In Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 Gummow J, then of the Federal Court, in considering the disputed claims to proprietorship of the marks FUNSHIP or FUN SHIP, posed the following questions:

Will substantial identity suffice? Or may questions of deceptive similarity be       considered? Or is visual identity essential?

Then, having considered a submission based on The Shell Company of Australia Limited v Rohm and Haas Company (1949) 78 CLR 601, His Honour continued:

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical" as it appears in s62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.

...

In the present case there would, in my view, be no material distinction to be drawn between "Fun Ship" and "Funship" or between the addition of the definite article or the use of the plural. However, "Fun Ship" is for this purpose a substantially different trade mark to "Sitmar's Funship" and "Fairstar The Funship".

In Karu Pty Ltd v Robert Leon Jose (1994) 30 IPR Drummond J, while noting that the comments of Gummow J were obiter, applied them directly to the matter before him.

The test referred to by Gummow J is the familiar one set out by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited, (1963) 109 CLR 407 at 414 and 415:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. 

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 [trade mark].

Deceptive similarity is defined under the Act at paragraph 6(3):

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

A side by side comparison of the trade marks here in issue shows the obvious differences between them.  The prominent features of the marks are the words VEUVE CLIQUOT PONSARDIN or LA GRANDE DAME and PONGRACZ respectively.  It is not possible to say that what emerges from the comparison is a total impression of resemblance or similarity.

section 33

Section 33, as far as is relevant, provides as follows:

33. (1) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

I have already found that the marks are not substantially identical in accordance with the test propounded by Windeyer J in Esso v Shell, supra.  There is also no question but that the goods of the registered trade marks of the opponent and those of the application are the same goods or goods of the same description.  There remains then the question of deceptive similarity.  Section 6(3) defines the term “deceptively similar” as:

(3) For the purposes of this Act, a trade mark shall be deemed to be deceptively similar to another trade mark if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion.

What is to be considered in the comparison of the marks is the impression created on persons of ordinary intelligence based on the recollection of the [opponent’s] marks: Esso v Shell, supra. 

The test to be applied under 33 may also be stated as follows, paraphrasing the words of Evershed J. in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97, in which he compared the tests under ss11 and 12 of the Trade Marks Act 1938 (UK), which correspond to ss28 and 33 of the Trade Marks Act 1955 (Cth):

The questions for my decision ... have been formulated, and I think accurately formulated, as follows:

...

(Under s.33) "Assuming user by the opponent of its mark VEUVE CLIQUOT PONSARDIN etc and graphics in a normal and fair manner for any of the goods covered by the registration of that mark ... is the Registrar satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant also uses its mark PONGRACZ etc and graphics and device normally and fairly in respect of any goods covered by their proposed registration?"

In my opinion, even taking account of the effect of imperfect recollection, the overwhelming impression left on the mind of the ordinary purchaser would be the names VEUVE CLIQUOT PONSARDIN  and PONGRACZ respectively.  Admittedly the syllable PON- is common to both marks, but overall the sets of words are quite different.  The common parts of the marks of which the opponent complains are the comet device and the arabesques or curlicues surrounding the words in both labels.  The evidence of Ian Rolyat Taylor demonstrates beyond doubt, with some dozens of examples, that such embellishments are extremely common on labels attached to bottles of Champagne and other sparkling wines and does very little if anything to distinguish one from another.  Given that they are only a minor or subsidiary part of the marks I cannot accept that overall the marks would lead to the deception or confusion of a substantial number of persons.

section 28

In the case of s28(a) the onus is on the opponent once again to show that its reputation in the mark is such that the use of it by the applicant would lead to the deception or confusion of a substantial number of persons: Smith Hayden’s Application (1946) 63 RPC 97. The applicable principles are as set out by Kitto J in Southern Cross Refrigerating Company v Toowoomba Foundry Pty Limited (1954) 91 CLR 592 at 594-5:

a)    in all applications for registration of a trade mark the onus is on the applicant to satisfy the Registrar (or the Court) that there is no reasonable probability of confusion;

b)   it is not necessary in order to find that a trade mark offends against the section, to prove that there is an actual possibility of deception leading to a passing off.  While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring ... it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.  It is enough if the ordinary person entertains a reasonable doubt;

c)    in considering the possibility of deception, all the surrounding circumstances have to be taken into consideration.  (This includes the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods);

d)   in applications for registration, the rights of the parties are to be determined as at the date of the application;

e)    the onus must be discharged by the applicant in respect of all goods coming within the specification in the application ... and not only in respect of those goods on which the applicant is proposing to use the mark immediately.  And the onus is not discharged by proof only that a particular method of user will not give rise to confusion.  The test is, what can the applicant do if it obtains registration?

Although, in accordance with the principles of the Southern Cross case, above, the onus is on the applicant to show that there is no likelihood of confusion or deception, there is an evidentiary onus on the opponent in the first instance to establish the extent of its reputation in Australia.  As the matter was put by Heery J in the recent decision in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (Federal Court, unreported, 11 July 1997):

With one major exception, the legal principles applicable to this case are not in dispute. They may be summarised as follows:

(i) The opponent bears the initial onus of establishing a reputation in its mark sufficient to found an objection under s 28: Arthur Fairest Limited's Application (1951) 68 RPC 197. (ii) However, once this onus is discharged the burden shifts to the party seeking registration: Eno v Dunn (1890) 15 App Cas 252 at 261, Jafferjee v Scarlett at 119. (iii) The rights of the parties are to be determined as at the date of application for registration (here 27 July 1989): Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 594. (iv) The onus is on the party seeking registration to satisfy the Court that there is no reasonable possibility of deception or confusion: Southern Cross at 594-5. (v) In order to defeat the application for registration it is not necessary for the opponent to establish that there is an actual probability of deception which will amount to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of it occurring - it is sufficient that the result of the user of the mark will be that a substantial number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough that the ordinary person entertains a reasonable doubt: Southern Cross at 594-5, 608, The Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300 at 305. (vi) In considering the issue of deception all the surrounding circumstances must be taken into consideration. The factors to be considered include the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold and the character of the probable purchaser of the goods: Jafferjee v Scarlett at 120; (vii) A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 9 at 103-104. (viii) It is not enough for the party seeking registration to negative the likelihood of confusion in relation to the actual trade carried on by the opponent at the time of the registration and to the manner in which the latter then uses his mark. The applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark within the ambit Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94, Southern Cross at 608. (ix) The question whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense; it is a "jury question" in which the judge is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion: Murray Goulburn Co-operative Ltd v New South Wales Dairy Corporation (1990) 24 FCR 370 at 377.

The test under s28(a) may also be set out as that in Smith Hayden, supra:

(a) (Under s.28) "Having regard to the reputation acquired by the name VEUVE CLIQUOT PONSARDIN etc and graphics, is the Registrar 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 not be reasonably likely to cause deception and confusion amongst a substantial number of persons?";

While conceding that the opponent has a great international reputation in Champagne wines, I am not satisfied, for the reasons already set out in relation to s33 above, that the use by the opponent of its trade mark in a normal or fair manner in connection with sparkling wines would be reasonably likely to lead to the deception and confusion of a substantial number of persons.  If I am wrong in that conclusion there remains nevertheless the question of blameworthy conduct.  The application of s28 in opposition proceedings has been considered on two occasions recently by the Federal Court.  In Canon Kabushiki Kaisha v Robert James Brook and Rachel Brook trading as The Cannon Watch Company 36 IPR 88 Tamberlin J, after considering the judgments in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited (1990) 171 CLR 363, concluded that in his view the reasons for judgment delivered by members of the High Court left the matter open as to whether there was a need to find blameworthy conduct in opposition proceedings based on s28(a) as opposed to expungement proceedings. He went on to find that:

Notwithstanding the diverse opinions expressed by members of the High Court in New South Wales Dairy Corporation case, I consider that I should follow the views expressed by the Full Federal Court in that case, with the result that in the case presently before me the opponent to the application for registration is required to demonstrate “blameworthy conduct”.

The Full Federal Court in the New South Wales Dairy Corporation case , concluded that, as a matter of interpretation, s28(a) was qualified by s28(d) and that “blameworthy conduct” was one, but not the only, circumstance which could render a mark “not entitled to protection in a court of justice”. (see 86 ALR 549 per Gummow J), (24 FCR 370 Lockhart, Pincus and Von Doussa JJ).

In the instant case, Canon has not established any “blameworthy” conduct or any other matter on the part of the respondents in relation to the present application, which would disentitle the mark to protection in the courts and as a result the challenge under this provision must fail....

In the present matter, the delegate of the Registrar, when considering the s28(a) ground, relied on what was described as the “fully settled” practice of the Registrar developed from the Murray Goulburn case and dismissed the opposition on this ground because in her view there was “no hint of blameworthy action”.  See also Titan Manufacturing Company Pty Ltd v John Terence Coyne (1991) 22 IPR 613; Unidrive Pty Ltd v Dana Corporation (1995) 32 IPR 155. Cf Johnson & Johnson v Kalnin (1993) 26 IPR per Gummow J where the point was apparently not raised.

In Nettlefold Advertising Pty Ltd v Nettlefold Signs Ltd, supra, Heerey J also analysed the judgments of the High Court in Murray Goulburn and went on to say:

It is difficult to see how a disjunctive reading of s28 could have been unintended.  After all, if para (d) is to be read conjunctively with para (a), presumably the same reading must apply to paras (b) and (c).  It does seem odd, to say the least, that if a mark contained scandalous matter, a finding to that effect would not be sufficient in itself to prevent (or expunge) registration.

As to authority, the New Zealand Court of Appeal in Pioneer Hi-Bred Corn v Hy-Line Chicks [1978]2 NZLR 50 in dealing with a statutory provision very similar to s28 (see Murray Goulburn at 427) rejected a cumulative construction.  Richmond P (at 52) considered that the New Zealand legislature has “deliberately departed” from the wording of the UK provision.  His Honour said:

The result is that in this country the words “the use of which would be likely to deceive or cause confusion” are no longer governed by the words “would...otherwise, be disentitled to protection in a Court of justice.”  They should accordingly be given effect in accordance with their ordinary and natural meaning.

Pioneer was a case of opposition to registration and thus, unlike Murray Goulburn, on all fours with the present case.

However, there remains the decision of the Full Court of this Court in Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569. Although not an appeal from the Registrar, the issue of contravention of s28 was considered as at the date of registration and in this respect is indistinguishable from the present case. It was held by a majority (Bowen CJ and Lockhart J, Northrop J dissenting) that s28 was not to be construed disjunctively. Moreover the Full Court in Murray Goulburn (at 380-383) adopted the construction of the majority in Riv-Oland, although, as already noted, their Honours considered that the circumstances in which a mark was “not otherwise entitled to protection in a court of justice” were not confined to “blameworthy conduct” on the part of the applicant for registration.  (As also appears above, a determination of this issue was not part of the ratio decidendi of the High Court in Murray Goulburn.)

I conclude that I am bound by the decisions of the Full Court in Riv-Oland and Murray Goulburn to hold that the requirement of s28(d) is cumulative on s28(a).

Heerey J makes no mention of the decision of Tamberlin J in Cannon v Brook so that it seems that two judges of the Federal Court at first instance arrived independently at the conclusion that the High Court had left open the matter of the issue of the operation of paras 28 (a) and (d) in opposition proceedings and that they were therefore bound by the decisions of the Full Court of the Federal Court in Riv-Oland and Murray Goulburn.  This tribunal is similarly bound.

There is no evidence of any blameworthy conduct on the part of the applicant.  The objection under s28 of the Act must therefore fail.

Conclusion
Having found that the opponent has been unsuccessful on each of the grounds relied on it follows that I must dismiss the opposition.  I direct that, subject to the applicant’s right of appeal against this decision, the trade mark subject of application 598450 should be registered.

I award costs in the opposition proceedings against the opponent.

Michael Homann
Hearing Officer

29 April 1998