Champagne Moet & Chandon v Chanzon Pty Ltd

[2004] ATMO 42

TRADE MARKS ACT 1995

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

Re:Opposition by Champagne Moët & Chandon to registration of trade mark application 883986(32) - CHANZON & Device - filed in the name of Chanzon Pty Ltd.

Delegate:

Mary Skivington

Representation:

Opponent: Celia Cumming, a partner at Freehills Carter Smith Beadle, Patent and Trade Mark Attorneys assisted by Bill Ladas a solicitor with the same firm.

Applicant: Unrepresented and did not appear or provide written submissions.

Decision:

Section 52 opposition - ground of opposition under section 60 established registration refused. Costs awarded against the unsuccessful applicant.

Background

1. Chanzon Pty Ltd, ('the applicant'), filed trade mark application number 883986 to register the trade mark shown below, on 27 July 2001. The application claims a priority date of 3 March 1997, as an application divided out from trade mark number 728923, which has since been withdrawn.

 

1. Trade mark 883986 is for the same trade mark and some of the goods specified in the initial application. The goods of this application are, Fruit and vegetable juices produced in Australia excluding water melon juice. Prior to acceptance the applicant agreed to the following endorsements:

   It is a condition of registration that the trade mark will only be used in relation to GOODS PRODUCED IN AUSTRALIA.

   When the trade mark is used for items in the specification of goods other than GRAPE JUICE, the words GRAPE JUICE in the trade mark will be changed to accord with those other items.

2. Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 17 April 2003.

3. Champagne Moët & Chandon, ('the opponent'), filed notice of opposition on 17 July 2003, citing grounds of opposition under sections 41, 42, 43, 44, 58, 59,60 and 62 of the Trade Marks Act 1995, ('the Act').

4. The opponent filed and served evidence in support, however, the applicant did not file and serve evidence in answer and in fact, has taken no part in these proceedings. On 14 May 2004 the opponent requested a hearing and as a delegate of the Registrar of Trade Marks, I heard the matter, in Canberra on 25 June 2004. The opponent was represented by Ms Celia Cumming, a partner at Freehills Carter Smith Beadle, Patent and Trade Mark Attorenys, assisted by Mr Bill Ladas of the same firm. The applicant was unrepresented and did not appear or provide written submissions.

The evidence

1. The evidence in support comprises five statutory declarations with exhibits.

Date	Declarant	Exhibits
30 December 2003	Bill Ladas, a legal practitioner with Freehills Carter Smith Beadle	BL-1
22 February 2000	Kenneth James Taylor, Managing Director of Trade Mark Investigation Services. (Taylor 1).	KJT-1 TO KJT-5
18 December 2003	Kenneth James Taylor Managing Director of Trade Mark Investigation Services. (Taylor 2).	KJT-1
19 July 2000	Jean-Marie Laborde, Chairman of the Board of Champagne Moët & Chandon SA	JML-1 to JML-11 'A' to 'C'
12 July 2000	Christopher Lynch, Managing Director of Domaine Chandon Australia.	CL-1 to CL-30 'A' to 'D'

Ladas

1. Mr Ladas declares that exhibit BL-1 to his declaration is a copy of the statutory declaration of Kenneth James Taylor, Managing Director of Trade Mark Investigation Services, made on 22 February 2000. He attests that Mr Taylor's declaration constituted part of the opponent's evidence in support of the opposition to the applicant's initial application, number 728923.

Taylor (1)

1. Mr Taylor provides details of investigations made by his company into what, if any, products produced by the applicant carry the CHANZON trade mark. He declares that his company found no evidence of any products carrying the CHANZON trade mark nor indeed any evidence of commercial activity by the applicant.

Taylor (2)

1. This second statutory declaration, made by Mr Taylor on 18 December 2003, provides an updated investigation report into use by the applicant of its trade mark in Australia. Again, Mr Taylor declares that his company was unable to find any evidence of products bearing the CHANZON trade mark and any evidence of commercial activity by the applicant. He declares, however, that he spoke to Mr Bruce Tasker of the applicant company who, he reports, said that the company is an 'alternative wine company' and the product a 'no alcohol wine'.

Laborde

1. Mr Laborde's, declaration also formed part of the evidence in support of the opposition to registration of trade mark 728923. Mr Laborde declares that Moët & Chandon is one of the oldest, largest and most famous Champagne Houses in the world. He reports that the house of Moët was founded in 1743 and became Moët & Chandon in 1832 when the founder's grandson yielded management of the company to his son Victor Moët and son-in-law Pierre Gabriel Chandon. Mr Laborde declares that the opponent has set up wholly owned subsidiaries in a number of countries, including one in Australia in 1985. He reports that these subsidiaries are collectively known as the Domaines Chandon. He declares that the opponent has fifteen Australian trade mark registrations, mostly in class 33, either for the word CHANDON or for trade marks that incorporate the word CHANDON. Mr Laborde declares that the opponent produces champagnes as well as wines, sparkling wines, semi-sparkling wines, liqueurs, brandies, aperitifs and spirits. He reports that for the last five years the opponent's premium quality champagne has held approximately 21% of the market share world wide and 40% of the market share in Australia. The opponent's trade mark CHANDON, used in respect of sparkling wines, has been registered in Australia since 11 November 1984, but Moët & Chandon products have been on sale in Australia since 1888. Mr Laborde claims that the CHANDON Vintage range is recognised as Australia's benchmark premier sparkling wine. The opponent's promotional activities include sponsoring major cultural and fashion events and promotion through use in the celebration of victories in high profile sporting events. The Moët & Chandon Australian Art Foundation, declares Mr Laborde, funds an annual Art Fellowship, Touring Exhibition and Art Acquisition Fund to the State Gallery that hosts the annual presentation of the Fellowship and first leg of the Touring Exhibition. Mr Laborde provides annual sales and advertising figures for the years 1986 to 1999, which I regard as substantial.

Lynch

1. Mr Lynch declares that Domaine Chandon, in Australia, has a non-exclusive licence from the opponent to produce, market and sell wines and other alcoholic beverages including sparkling wine, by reference to the CHANDON trade mark which has been in continuous use in Australia since 1986. Mr Lynch reports that the trade mark has also been used on a range of merchandise such as clothing, business card holders, wine bottle carriers and corkscrew/bottle openers which may be purchased at the Domaine Chandon winery in the Yarra Valley. Exhibit 'C' is a chart showing the month by month number of visitors to the winery for the years 1993 to 1999. These indicate that a large and increasing number of people visit the winery each year. Mr Lynch declares that sparkling wines bearing the CHANDON trade mark are sold in all states and territories of Australia. Exhibit 'A' shows the annual sales figures for 1992 to 1998 and I regard these as impressive. Wines bearing the CHANDON trade marks have received recognition through a number of awards which have been widely reported in the media. Domaine Chandon has also promoted its goods in the print media, online via the Internet, in signage and point of sale advertising. Mr Lynch attests to Domaine Chandon's sponsorship of exhibitions and other cultural and sporting events and charitable fund raising for charities such as the Variety Club and the Smith Family.

Grounds of opposition

1. Prior to the hearing, Ms Cumming, advised the applicant and me, that at the hearing the opponent would only canvass grounds of opposition under the provisions of sections 43, 44, 59 and 60 of the Act. I note here that the remaining grounds of opposition have not been established.

Submissions and the law

Section 44

1. Subsection 44 (1), applied to the present circumstances, provides that an application for registration must be rejected if it is substantially identical with, or deceptively similar to, another person's trade mark application or registration that has an earlier priority date, and which covers goods that are similar to the applicant's goods. The definition of 'deceptively similar' in section 10 is that '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.' Section 14 of the Act defines 'similar goods' as goods that are the same as the other goods or goods that are of the same description as that of the other goods.

2. The opponent relied on the following registrations, all of which, contain or comprise the word CHANDON and have earlier priority dates than the subject application, to establish its ground under section 44.

Number	Priority Date	Trade Mark	Goods and Services
364160(33)	12 August 1981	Wines of French origin, namely champagne
417921(33)	7 November 1984	CHANDON	Wines, sparkling wines, champagne wines.
418236(33)	15 November 1984	MOËT & CHANDON	Wines, sparkling wines, Champagne wines, spirits and liqueurs.
428540(33)	19 June 1985	Liqueurs.
443110(33)	2 April 1986	Wines, and all other goods in this class
452954(33)	30 September 1986	DOMAINE CHANDON	Wines, sparkling wines, champagne wines
480811(33)	4 February 1988	Liqueurs
526127(33)	29 December 1989	Alcoholic beverages
534391(25)	16 May 1990	MOËT & CHANDON	All goods in this class and in particular clothing and headgear
536287(42)	15 June 1990	MOËT & CHANDON	Services for providing facilities for art exhibitions
548159(16)	28 December 1990	MOËT & CHANDON	All goods in class 16.
557901(33)	18 June 1991	All goods in class 33
584054(33)	7 August 1992	Wines of French origin, namely Champagne
584583(35)	15 June 1990	MOËT & CHANDON	Promotional services provided through the medium of art exhibitions, including promotion of art and artists

1. Ms Cumming submitted that in comparing the applicant's trade mark with the opponent's trade marks, particularly CHANDON, (417921) and DOMAINE CHANDON, (452954 and 557901) I should be mindful of the tests for deceptive similarity set down by Parker J in Pianotist Co.'s Appn, (1906) 23 RPC 774, where he said,

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case.

2. Ms Cumming further submitted that I should take into account the imperfect recollection of consumers: The Full Court in Henschke v Rosemount, [2000] FCA 1539; that the first syllable of a word is the most important for the purposes of distinction: Re London Lubricants (1920) Ltd's Application, 42 RPC 264; and that where the first syllables of the trade marks are identical, there is a greater likelihood of confusion. Ms Cumming said that although the applicant's trade mark is a label with a number of illusory and descriptive elements the essential feature of the trade mark is the word CHANZON and it is by this word that the applicant's products would be requested and recollected. She contended that CHANDON and CHANZON are phonetically similar because when both words are pronounced the emphasis is placed on the first syllable CHAN and on the ending, ON and the 'D' and the 'Z' in the respective marks are not accentuated and indeed are not clearly perceptible.

3. I agree with Ms Cumming that both phonetically and visually CHANZON and CHANDON are similar. Given the range of accents that are normal in Australia's multi-cultural society there would be difficulties in distinguishing the differences in pronunciation between these words when placing orders in a busy restaurant or bottle shop or by telephone call from a retailer ordering supplies from a wholesaler. The market for the goods is not a specialist one and frequently the goods are purchased by self-selection. Generally I think purchasers look for a product and then give the brand a cursory check and this is likely to lead consumers into a mistaken belief that one mark is in fact the other. CHANDON and CHANZON are not known English words and although some consumers may note that each is similar to the French word CHANSON it is likely that consumers will only retain a general idea of the word as a whole rather than an accurate letter by letter recollection of the word. I note that in a search of the Search For Australian Surnames database, the surname CHANDON only occurs once, thus making it an exceedingly rare surname in Australia and CHANZON does not occur at all. Neither word appears to have any other known meaning. Given the degree of similarity between the words CHANZON and CHANDON, the fact that they are not known words and are therefore less likely to be accurately recorded in the memory, the likelihood that the products will be selected with only a limited degree of caution and bearing in mind the principle of imperfect recollection I find that the applicant's trade mark is deceptively similar to the trade marks cited by the opponent. However this is not sufficient of itself to found a ground of opposition under section 44 of the Act. I must now determine if the relevant goods are similar.

4. Ms Cumming submitted that whether goods are of the same description is a question of fact and that goods fall within a different class under the Nice Classification is not a decisive consideration: Re The Australian Wine Importers Ltd (1889) 41 Ch D 278 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, (1954) CLR 592. She cited the tests for determining if goods are of the same description defined by British Assistant Comptroller in John Crowther & Sons (Milnsbridge) Ltd's Appn, (1948) 65 RPC 369,

   In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purposes, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the same of Jellinek's Appn, Romer J classified these various factors under three heads, viz, the nature of the goods, the uses thereof, and the trade channels through which they are brought and sold. No single consideration is conclusive in itself.

5. Ms Cumming also noted that in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, Jacob J set out a similar set of relevant factors and added that consideration must be given to ‘the extent to which the respective goods are competitive.’

6. Ms Cumming chiefly focussed her submissions on the similarity of sparkling white grape juice to wines, including sparkling wines and champagne, although she did address the other goods in the applicant's specification of goods to a lesser degree. Ultimately she submitted that all of the goods are similar because they share common uses and trade channels. She further noted that juices are often mixed with alcohol. Ms Cumming also drew my attention to the proliferation of alcopop drinks on the market. The term alcopop describes a drink that is a blend of alcohol with pop (effervescent soda or soft drink). Alcopops contain about 5% alcohol, more alcohol in fact than many beers, and even if some fruit juice is used in their manufacture the final product is not one that is encompassed by the applicant's fruit and vegetable juices.

7. The natures of sparkling grape juice and wines are identical or at least similar, Ms Cumming argued, because they are all produced from grapes and they have similar packaging and manufacturing processes. While the packaging may be similar and both products start out with grapes as a basic ingredient the similarities end there. The method of manufacture of a carbonated fruit juice is a simple process whereas wine production is a comparatively complex science whose fermented product is far removed from the simple grape from which it was derived or a carbonated fruit juice. The inherent characteristics of the end products are quite different in nature. Wines are distinguished by colour, flavor, bouquet or aroma, and alcoholic content. Juices on the other hand in addition to flavour and a total absence of alcohol are recognized for the content of their natural properties, such as vitamins and minerals.

1. It is not unknown for producers of alcoholic wines to produce non-alcoholic grape juices for sale to customers said Ms Cumming. This latter claim was not, however, supported by evidence. Ms Cumming also submitted that production of sparkling white grape juice is within the natural zone of expansion of the opponent's business and could also be seen as a brand extension of the opponent's products. I agree that sparkling white grape juice is a product that falls naturally within a range of goods to which the opponent might extend use of its CHANDON trade mark, however for the purposes of section 44 of the Act I cannot consider goods that are not covered by the trade marks that the opponent has cited.

2. Ms Cumming submitted that the goods of the applicant and the opponent are used for similar purposes. She said that the applicant's goods are intended to be a substitute for wine for consumers who, in a business situation, feel uncomfortable about drinking products that are obviously non-alcoholic. Even if this is so I do not agree that this indicates that at the core of it the uses are the same. In such a situation the juice is used to promote a deception that the drinker is consuming alcohol. Conversely, wine is drunk to promote a sense of relaxation and conviviality, an effect not achieved by drinking non-alcoholic wines or juices. The applicant's goods however, would reach a much broader demographic. Fruit and vegetable juices supply enzymes, vitamins and minerals and are primarily seen as health promoting products that may be drunk by almost anyone at any time of the day. Wines on the other hand may not be legally consumed by children at all and generally, are only consumed by adults later in the day. Moreover wines are not normally promoted as, or reputed to be, primarily health drinks, indeed an excessive consumption is well known to have adverse effects on health. I do not agree that the applicant's and the opponent's goods are used for the same purposes.

3. The trade channels are similar, said Ms Cumming, because both wines and sparkling fruit juices may be purchased at supermarkets, pubs, bars and drive-through liquor outlets. I agree that these products may be purchased by end-users at these same outlets but I do not agree that consumers would necessarily believe that they originated with the same manufacturers. The maker of wine is not regarded as being in the same trade as the maker of non-alcoholic vegetable and fruit juices including sparkling fruit juices.

1. I find that the goods are not similar and that in consequence the section 44 ground of opposition has not been established.

Section 60

1. In order to satisfy a ground of opposition under the provisions of section 60 of the Act, the opponent must establish that the applied for trade mark is substantially identical with or deceptively similar to another trade mark or trade marks that have acquired a reputation in Australia before the priority date of the applied for trade mark and, because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion. Section 60 does not require the relevant goods or services to be the same or closely related nor does it require the trade mark/s on which the opponent relies to be registered or the subject of application/s for registration.

2. I have already found that the applicant's trade mark is deceptively similar to the opponent's trade marks.

3. Ms Cumming referred to the observations of Kenny J in McCormick & Co Inc v McCormick, (2001) 51 IPR 102, at page 127, in relation to 'reputation' in the context of section 60:

   What is intended by the word ‘reputation’ in section 60? The word is defined in the Macquarie Dictionary as follows:

   reputation … 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute … 2. favourable repute; good name … 3. A favourable and publicly recognised name or standing for merit, achievement, etc … 4. The estimation or name of being, having done, etc, something specified.

   Compare The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Kenny J then went on to say,

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

1. In support of the opponent's reputation Ms Cumming referred to the opponent's long history in the champagne industry first as the House of Moët and then somewhat later but still more than 165 years ago, Moët and Chandon. Ms Cumming noted that the opponent's champagne has been sold in Australia since 1888 under the Moët and Chandon trade mark and that it has for a number of years maintained a 21% market share world-wide and 40% market share in Australia. The opponent's Domaine Chandon in Australia was established in 1986 and has used the CHANDON trade mark since 1989 in respect of sparkling wines. The evidence shows that the opponent's goods are promoted through sponsorship of a variety of high profile events and cultural activities. Regular, independent brand surveys conducted between August 1996 and June 1999 demonstrate a high degree of brand recognition, (JML-11).

2. I am satisfied that the opponent has a well established reputation in Australia, acquired by virtue of the duration and extent of use in Australia, as well as in other jurisdictions, of its various CHANDON trade marks, the volume of sales, extensive promotions and the high regard that has accrued to it through its philanthropic activities. I find that this reputation was established before the priority date of the subject application. It remains for me to determine if, because of this reputation use by the applicant of its trade mark CHANZON would be likely to deceive or cause confusion.

3. The goods of both parties are beverages. They are likely to be consumed at the same time by people within the same family on social occasions, purchased by the same people and often from the same outlets. Moreover, consumers frequently mix alcoholic beverages with juices and other soft drinks. While the goods cannot be described as being of the same description there is a clear connection between them. Consumers are well used to the concept of brand extension whereby a brand name with an established reputation is applied to a new product in anticipation that the goodwill attached to the first product will extend to the new product. The opponent’s initial and primary goods of interest are wines, however the opponent has extended its range to include spirits and liqueurs. The basic ingredient for CHANDON wines and CHANZON sparkling white grape juice products are grapes. Given the opponent’s expertise in grape growing and ready access to grapes, an extension of its goods from wines, spirits and liqueurs to sparkling grape juice is, and would be seen to be, a logical brand extension.

4. I find that because of the opponent’s reputation, the obvious connection between the relevant goods and the fact that an extension of the opponent’s range of products to include those encompassed by the applicant’s specification of goods, is a likely brand extension, use by the applicant of its label trade mark CHANZON, a word that is at the very least deceptively similar to the unusual word CHANDON, would be likely to deceive or cause confusion among potential purchasers. This ground of opposition is established.

Section 59

1. Section 59 of the Act provides that the registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise the use of, the trade mark in Australia; or to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods and/or services specified in the application.

2. The filing of a trade mark application is evidence of an intention to use a trade mark: Aston v Harlee Manufacturing Co (1960) 103 CLR 391. However, to establish a ground of opposition under the provisions of section 59 it is necessary to show that at the time it filed its notice of opposition the applicant no longer had an intention to use the trade mark. An applicant is not required to use its trade mark before registration and in many cases would be wise to refrain from use until it has the certainty of registration. Ms Cumming alleged that the evidence shows that the applicant is only interested in a non alcoholic wine product and therefore the trade mark should be refused for all of the goods specified, other than grape juice. In support of her argument she referred to the Taylor statutory declarations where Mr Taylor reports that Mr Bruce Tasker of the applicant company described the company to him as 'an alternative wine company', {Taylor (1)} and the product as a 'no alcohol wine' for export to Malaysia, USA, Dubai and Brunei, {Taylor (2)}. It would seem from the opponent's evidence that the applicant does have a present and ongoing intention to use the trade mark. I see no reason to limit the goods to grape juice. While wine is most often made from grape juice it may be made from many other plant and fruit juices such as apple, pear or gooseberry for instance. This ground of opposition is not established.

Section 43

1. Section 43 provides that registration may be refused if, because of some connotation that the trade mark (or constituent part of it) has, the use of the trade mark is likely to deceive or cause confusion.

2. It has been confirmed in Winton Shire Council v Lomas (2002) 56 IPR 72 that this ground is directed to the mark itself, and not to any deception or confusion caused by the reputation in Australia of some other trade mark.

3. Ms Cumming argued that the application must be rejected because of a false connotation in the trade mark that the applicant's goods are SPARKLING WHITE, that is, that the goods are 'a juice beverage in the style of champagne or sparkling white wine'. She said that the term SPARKLING is applied to champagne style wine that do not originate from the Champagne region of France. Sparkling wines are wines that are naturally carbonated by a secondary fermentation, but that does not mean that such wines have a monopoly of the term sparkling. Supermarkets sell carbonated soft drinks including variously flavoured sparkling mineral waters and sparkling fruit juices including sparkling apple and sparkling grape juices. Sparkling indicates that the goods are bubbly, a description that is consistent with a characteristic of any carbonated drink. SPARKLING WHITE is a description that may apply with equal accuracy to a bubbly wine, a bubbly juice, or bubbly mineral water of a particular colour that in reality, is more of a straw to golden colour, than white. This ground of opposition is not established.

Decision

1. The opponent has been successful in establishing its ground of opposition under section 60, therefore pursuant to section 55 of the Act, I refuse to register trade mark number 883986.

Costs

1. The opponent has been successful and is entitled to its costs. Accordingly I award costs against the unsuccessful applicant and direct that it pay the opponent's costs in accordance with the official scale set down in schedule 8 of the Trade Mark Regulations 1995.

Mary Skivington

Hearing Officer

Trade Marks Hearings

10 August 2004