Chateau Lynch Bages v Chateau Angelus S.A

[2022] ATMO 158

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia number 2088050 (International Registration number 1529793) (class 33) - Echo d’Angélus - in the name of Chateau Angelus S.A. and opposition thereto by Chateau Lynch Bages.

Delegate:

Debrett Lyons

Representation:

Holder:  Julie Simpson of Pizzeys Patent & Trade Attorneys Pty Ltd

Opponent:  Simon Gapes of Griffith Hack

Decision:

2022 ATMO 158

Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.29 – grounds of opposition under ss 42(b), 44, 60 and 62A – none established – extension of protection to Australia granted.

Background

1. This is a decision in respect of an opposition under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth)[1] to the extension of protection to Australia of a trade mark.  

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) or regulation of the Trade Marks Regulations 1995 (Cth).

2. On 31 March, 2020 (‘Relevant Date’), Chateau Angelus S.A. (‘Holder’) applied under the Madrid Protocol for extension of protection of its International Registration 1529793 for “Echo d’Angélus” (‘Trade Mark’) to Australia.  The resulting International Registration Designating Australia (‘IRDA’) was accorded Australian trade mark application no. 2088050.  The IRDA claimed class 33 goods being:

   Alcoholic beverages (except beers), cider, digestives (liqueurs and spirits); wines, spirits, alcoholic extracts or essences

3. As required, the IRDA was examined and under regulation 17A.12, a Notification of Provisional Refusal was sent to the International Bureau on 20 August 2020 based on the prior registration of Australian trade mark no 894835 for “THE ANGELUS” for relevant goods. 

4. The Holder provided a letter of consent from the proprietor of regn 894835 overcoming the provisional refusal and the IRDA was advertised for opposition purposes on 7 January 2021. 

5. Meanwhile, Chateau Lynch Bages (‘Opponent’) lodged a request for revocation of intended extension of protection to Australia (‘Revocation Request’) “owing to a clear error in not raising an objection based on IRDA 2109568 (IR 1544704) ECHO” having a priority date of 21 January 2020 being earlier than the Relevant Date and covering the same goods as the Holder’s Goods.

6. The intention to extend protection to Australia was not withdrawn and the Opponent has brought these proceedings.  On 3 March 2021, the Holder filed notice of its intention to oppose the Trade Mark, followed by a statement of grounds and particulars, later amended for error in the original (‘SGP’).  The Holder filed notice of its intention to defend the Trade Mark from opposition on2 July 2021.  Evidence, described below, was filed by both sides after which it was requested that a decision be made without a hearing.

7. The matter was delegated to me by the Registrar and on 27 July, 2022 I wrote to the parties asking if they wished to make submissions before my decision.  Both responded stating that they did not so wish.

   Evidence

8. The Opponent’s evidence consists of the:

   ·Declaration of Jean-Charles Cazes, Chief Executive Officer of the Opponent, made on 6 October 2021, with Annexures JCC-01 to JCC-04 (‘Cazes Declaration’)

9. The Holder’s evidence consists of the:

   ·Declaration of Mme Stéphanie de Bouard-Rivoal, Chairperson of the Opponent, made on 21 December 2021 with Exhibits SdB-0 to SdB-9 (‘de Bouard-Rivoal Declaration’); and

   ·Declaration of Julie Maree Simpson, the Holder’s Australian attorney, made on 31 December 2021, with Exhibits JMS-1 to JMS-3.

   Grounds and onus

10. The Opponent carries the burden of establishing its grounds of opposition on the balance of probabilities.[2]  The rights of the parties are assessed as at the Relevant Date.[3]  The SGP nominated grounds of opposition under ss 42(b), 44, 60 and 62A.  They are discussed in detail below.

    [2] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, 133 (Besanko, Jagot and Edelman JJ).

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

    Discussion

11. The Cazes Declaration states that the Opponent’s wine estate was established in the Bordeaux region of France in 1749.  Wines bearing the name ECHO were first produced in 2008 and the ECHO trade mark has continuously been used on or in relation to wines sold in Australia since 2014.  The Opponent’s Registration 2109568 for ECHO covers ‘wines’ and has a priority date of 21 January 2020.  The Cazes Declaration states:

    “… [b]ased on my review of the Opponent’s records, it is not currently possible to derive precise sales figures for the Opponent's ECHO wines. However, based on my review of these records I estimate the Opponent's annual sales revenues for goods sold under or by reference to the ECHO trade mark in Australia to be approximately […] per annum.

    As the Opponent's advertising for wines sold under or by reference to the ECHO mark has primarily been electronic in nature, it is not currently possible to derive precise figures for individual countries including Australia for the Opponent's annual advertising expenses. However, our webpage has most likely been visited by Australians in all states and territories.”

12. Annexure JCC-03 to the declaration shows how the Opponent's ECHO mark has been used in relation to wines (below, left) and Annexure JCC-04 are examples of wines produced by the Holder (below, right).

13. The Holder’s evidence is largely found in the de Bouard-Rivoal Declaration.  Its detail is claimed as strictly confidential and exempt from publication making my job difficult were it not for the observation that all which is critical to my decision is already in the public domain. 

14. The Holder owns vineyards of significant heritage in Bordeaux, principally those surrounding its Chateau Angelus, from which it produces a flagship Premier Grand Cru, Saint­Emilion under the name “ANGELUS”. The evidence shows that it has used and registered trade marks incorporating the word “d’ANGELUS”, such as those shown at [12] above. It has sold wine in Australia since the 1960s. The de Bouard-Rivoal Declaration states that “[t]he trade mark ECHO D'ANGELUS refers to a new cuvee from a very old plot” without being more specific about dates or sales in Australia or elsewhere.

    Section 60

15. Section 60 of the Act provides:

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

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

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

16. To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date.  If reputation is established, the Opponent must then prove that because of this reputation, use of the Trade Mark is likely to deceive or cause confusion.

17. The SGP states:

    The Opponent has used its ECHO and Echo de Lynch Bages trade marks internationally, including such use in Australia, on or in relation to wines since at least 2008. As a result of this use, the Opponent’s ECHO and Echo de Lynch Bages marks have acquired a reputation in Australia and, because of that reputation, the use of the opposed trade mark would be likely to deceive or cause confusion, for at least some of the goods for which registration of the opposed trade mark is sought.

18. I do not consider that the Opponent has established any sort of reputation in Australia in either of its trade marks.  There is no evidence usually associated with proof of same, merely an unsupported claim to use since 2008.  There is no promotional information and uncertain sales data which, at best, I would describe as modest.  Absent better proof of reputation there is no basis for a successful s 60 claim and I find that this ground of opposition fails.

    Section 42(b)

19. The SGP states that:

    (a) Use of the opposed trade mark in relation to the goods for which registration is sought would be contrary to the Australian Consumer Law by virtue of amounting to constitute misleading or deceptive conduct, having regard to the reputation acquired through use of the ECHO and Echo de Lynch Bages trade marks by the Opponent, as identified under the s60 ground above.

    (b)  Use of the opposed trade mark in relation to the goods for which registration is sought would be contrary to law in that it would constitute passing off having regard to the reputation and goodwill acquired through use of the ECHO and Echo de Lynch Bages trade marks by the Opponent, as identified under the s 60 ground above.

20. For the same reasons given in respect of s 60, I am not satisfied that consumers are likely to be misled or deceived or that use of the Trade Mark on the Holder’s Goods would likely be passing off.  I find that s 42(b) has not been established.

    Section 44

21. To establish s 44 the Opponent must rely on a pending or registered trade mark that has a priority date earlier than that of the Trade Mark, and which is in the name of a person other than the Applicant. That earlier mark must claim similar goods (or closely related services) and be substantially identical or deceptively similar to the Trade Mark.

22. The SPG nominates IRDA 2109658 (IR 1544704) ECHO as the basis for s44, stating that the respective marks are either substantially identical or deceptively similar.  The Revocation Request on the other hand makes it plain that the allegation is that of deceptive similarity, the argument being that:

    “… it is well accepted under Australian case law that the first part of each mark is considered to be the most memorable and distinctive. Further, both marks contain “ECHO” which represents the “essential feature: and “dominant cognitive cue” of both marks. The only difference in these two marks is the additional word of d’Angélus and the addition of this element does not alter the appearance or meaning the word ECHO in the mark applied for.

23. The Opponent cites the case of Re Polo Textile Industries Pty Limited and Keith Gamble Pty Limited v Domestic Textile Corporation Pty Limited and Polo Textile Industries Pty Limited [1993] FCA 203 (‘Polo’), which found the marks POLO and POLO CLUB to be deceptively similar as they shared the same essential feature.

24. I have no issue with the logic or outcome of the Polo case and I could be seduced by the facile appeal of the Opponent’s argument, but I am not convinced that the question of confusing similarity can be disposed of so easily in this case.

25. I may have been better assisted by submissions but from the evidence it seems that the Trade Mark has a particular meaning.  From my own knowledge, ‘angelus’ is the Latin equivalent to the English word, ‘angel’, and ‘The Angelus’ is a Catholic devotional prayer.  What I did not know was that believers are called to prayer by the ringing of the so-called Angelus bell. 

26. Although the Trade Mark is not wholly Latin or French, it seems to refer to the sound or tolling of the Angelus bell.  Evidence which can be summarized without breach of confidentiality is that the Opponent unsuccessfully opposed the Trade Mark in France and China.  English language translations of both cases are provided with the de Bouard-Rivoal Declaration.  Neither is immediately helpful because the Opponent appears to have relied principally upon its claim to rights in the ECHO DE LYNCH BAGES trade mark and the courts were occupied by comparison of that mark and the Trade Mark.  Nevertheless, when the Bordeaux Court of Appeal considered the Holder’s French Reg. No. 4 468 987 for the Trade Mark, it accepted the statement of the director of INPI (analogously, the decision of the Registrar) that:

    “… intellectually, the expression ECHO D'ANGELUS refers to the sound produced by a bell which announces to Christians the hour of prayer. This religious connotation is completely absent from the earlier mark ECHO DE LYNCH BAGES.

27. The unsuccessful opposition to the Trade Mark in China is of no help.  The CNIPA wrote:

    The opposed mark IR No. 1529793 “ECHO D’ANGELUS” is designated on the goods “alcoholic drinks (expect beer); cider, etc.” in class 33. The opponent’s cited marks No. 10622048 “ECHO DE LYNCH BAGES” and No. 1544704 “ECHO” are designated on the goods “wines” in class 33. The goods covered by the marks of the two sides are similar in function, sales channel and target consumers, they belong to similar goods. However, the opposed mark and the cited marks bear large differences in wording composition, sounds, meaning and overall appearance, they do not constitute similar marks…

28. Deceptive similarity requires that one trade mark so nearly resembles the other that it is likely to deceive or cause confusion.[4] I do not think that the Polo case is instructive.  The marks at issue on that occasion shared a common and, as the court decided, ‘essential feature’, but the added matter ‘club’ was relatively non-distinctive with a meaning linked to ‘polo’ and most sports. 

    [4] Trade Marks Act 1995 (Cth) s 10.

29. It is said that there must be a real, tangible danger of confusion[5] and in this case I am mindful of the way goods are likely to be sold and to whom they will be sold.  The parties’ vineyards are all in the Bordeaux region but they are known for producing quite different wines.  The decision of the Bordeaux Court of Appeal explained that:

    … the origin of the two wines is not identical, since the two castles in

    question are not located on the same wine terroir, Château Lynch Bages being

    a Bordeaux Grand Cru located in Pauillac, while that Château Angélus, is a

    Grand Cru Classé of Saint-Emilion, the notoriety attached to

    each of these wines being such as to reinforce the distinctiveness of the

    products in question.

    [5] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J)

30. The evidence shows that the Holder’s wines are well known and sell for hundreds of dollars a bottle.  I assume the same to be largely true of the Opponent’s wine.  However, I found that the Opponent’s claim to a reputation in Australia was, on the evidence, unsubstantiated, and I must form my view of how the relevant Australian purchaser would react to the trade marks. 

31. Australia is a wine producing and wine consuming nation.  Australians are well travelled and it is common knowledge that many French vineyards are now owned or managed by Australians. The appetite for quality wine, from Australia and from premier wine growing regions like Bordeaux, increases each year in my observation.  Willingness for Australians to spend generously on French wine is shown by the offerings of wine merchants in Australia and, in my assessment, Australians continue to educate themselves about foreign wine. 

32. On balance, I find that at the Relevant Date and bearing in mind the likely purchaser of the types of wines at issue, the lack of any reasonable inference that the Trade Mark might be applied to anything other than high quality, high priced, wine of the same terroir, and, in my opinion, the likelihood that such purchasers would perceive a meaning in the Trade Mark not present in the Opponent’s mark, the risk of deception or confusion is very low.  Even if I make allowance for notional use and the possibility that the respective marks could also be used on lower quality and cheaper wines, I would still regard a purchaser exercising even a modicum of care in the selection of wine unlikely to be confused or deceived.

33. For these reasons, I do not consider the Trade Mark is deceptively similar to the Opponent’s mark and so the ground under s 44 is not established.

    Section 62A

34. Section 62A provides that “[t]he registration of a trade mark may be opposed on the ground that the application was made in bad faith.”  The SGP states that:

    The Opponent’s products are marketed internationally under the ECHO and Echo de Lynch Bages trade marks which have a substantial reputation around the world. As such, the Opponent’s ECHO mark would have been well known to the Applicant at the time of filing the Application.

    In light of the similarities between the Applicant’s mark and the Opponent’s trade marks, the Applicant’s conduct in filing the present Application falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the field of the relevant Class 33 goods. As such, the Opposed trade mark was therefore filed in bad faith.

35. Whether an application was made in bad faith requires consideration of subjective and objective factors.  I must form a subjective view of the knowledge of the Applicant at the Relevant Date and ask if a person, adopting standards of acceptable commercial behaviour in the relevant industry[6] and knowing what the Holder knew, would regard the IRDA as having been lodged in bad faith.  

    [6] DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194, 206 [62] (Bennet J).

36. Clearly, the parties are known to each other.  As indicated, the Opponent first produced wine bearing the name ECHO was in 2008.  Presumably that first use was in France.  The Holder simply states that the Trade Mark refers to a new cuvee from an old plot.  No date is mentioned and giving latitude for what might be referred to as ‘new’ within the French wine industry, I nevertheless draw the inference that the Trade Mark was coined sometime after 2008. 

37. The Opponent’s evidence indicates that the name ECHO was chosen because of its reference in Greek mythology to the mountain nymph whose ability to speak was cursed, leaving her able only to repeat the last words spoken to her.  The Holder’s evidence is that the Chateau Angelus derived its name from the Angelus bells at the chapel at Mazerat and the churches in Saint-Martin de Mazerat and Saint­Emilion, all audible from the estate, and that the Trade Mark was chosen to follow the pattern of other used and registered marks including ‘d’ANGELUS’.

38. I have no evidence regarding the Opponent’s assertion of a worldwide reputation in its trade marks, still less of their renown in France at the Relevant Date but, given the proximity of the parties and the nature of the wine industry, I have made the assumption most favourable to the Opponent – that the Holder knew of its adoption of the ECHO and ECHO DE LYNCH BAGES trade marks.  That said, both are premier wine producers with, in my assessment, nothing to be gained and much to be lost by copying or causing confusion.  Further, I note that one of the names already used and registered by the Holder is ‘Carillon’, being a set of bells hung in a bell tower (or a set of bells set tolling by a keyboard or some automated mechanism) which suggests to me that the Holder was thinking along similar lines when it coined the Trade Mark.  I see no evidence of bad faith.

    Decision and costs

39. Regulation 17A.34N provides the following:

    17A.34N Decision on opposition

    (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations),

    having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

    (2) The Registrar must notify the International Bureau of the Registrar’s decision.

40. The Opponent has not established any of the grounds of opposition it nominated in its SGP and so I extend protection to Australia of the Trade Mark for all of the goods specified, to take effect one month from the date of this decision. The International Bureau will be notified of this decision.

1. If the Registrar is served with a notice of appeal to this decision before protection is extended, protection of the Trade Mark shall not occur until that appeal has been withdrawn or discontinued. 

2. Both parties asked for an award of costs. The general rule is that costs follow the event, and I see no reason to depart from that here.  Accordingly, I award costs against the Opponent under s 221 in accordance with the amounts specified in Schedule 8 of the Regulations.

   Debrett Lyons

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   12 September 2022