Consorzio Tutela Vini Emilia v Vinedos Emiliana S.A
[2017] ATMO 67
•12 July 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Consorzio Tutela Vini Emilia to registration of trade mark application no 1598539 – EMILIANA – in the name of Vinedos Emiliana S.A.
| Delegate: | Cristy Condon |
| Representation: | Opponent: Luke Merrick of Counsel accompanied by Ed Cameron of Corrs Chambers Westgarth Applicant: Peter Hallett of Watermark IP Lawyers |
| Decision: | 2017 ATMO 67 Opposition under section 52 of the Trade Marks Act 1995 – ss 41, 42, 43 and 61 pressed – s61 made out but Applicant able to avail itself of 61(2)(c)(i) - no grounds established –Trade Mark will proceed to registration |
Background
Vinedos Emiliana S.A. (‘Applicant’) filed its trade mark application on 24 December 2013 in class 33 of the International Classification of Goods and Services. Relevant details of the application are set out below.
Trade mark: EMILIANA (‘Trade Mark’)
Trade mark application no: 1598539
Filing Date: 24 December 2013
Specification: Class 33: Wines and other alcoholic beverages in this
class (‘Applicant’s goods’)
The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 15 May 2014. Consorzio Tutela Vini Emilia (‘Opponent’) filed its Notice of Intention to Oppose the registration of the Trade Mark on 2 July 2014. This was followed by the Opponent filing a Statement of Grounds and Particulars (‘SGP’) filed on 25 July 2014 and the Applicant filing a Notice of Intention to Defend on 3 September 2014. Thereafter the parties served and filed evidence as provided by the Trade Marks Regulations 1995.
Following a letter from this office the parties requested to be heard and the opposition was set down for an oral hearing in Canberra on 10 May 2017. I was allocated to hear and decide the opposition as a delegate of the Registrar of Trade Marks.
The Opponent was represented by Mr Luke Merrick of Counsel, accompanied by Mr Ed Cameron of Corrs Chambers Westgarth. The Applicant was represented by Mr Peter Hallett of Watermark IP Lawyers.
In addition to the parties’ making oral submissions at the hearing, both parties filed written submissions in accordance with my schedule of directions.
Grounds of Opposition and Onus
The SGP nominated four grounds of opposition available under ss 41, 42, 43 and 61 of the Trade Marks Act 1995 (Cth) (‘Act’).
The Opponent bears the burden to establish one or more of its grounds of opposition on the balance of probabilities.[1] However, in this matter should the Opponent establish its case under sub-s 61(1) the Applicant may be able to avail itself of sub-ss 61(2), 61(3) or 61(4) in which case the onus will shift to the Applicant.
[1] See Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].
The Opponent presses all of the grounds nominated in the SGP. Should the Opponent establish one ground of opposition, there is no requirement for the other grounds of opposition to be considered. That said, these (or indeed any of the other grounds available under the Act) may be relied upon by the Opponent should my decision be appealed.
The relevant date for assessing the registrability of the Trade Mark is the date it was filed, 24 December 2013 (‘Relevant Date’).[2]
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.
As will become apparent, the Opponent has not established a ground for opposition.
Evidence
The evidence in this matter consists of the following declarations:
Evidence in Support
Davide Frascari made on 27 November 2014 with annexures A1 to A3 (‘Frascari’)
Evidence in Answer
Peter Hallett made on 22 April 2015 with annexures PLH-1 to PLH-6 (‘Hallett’).
By way of a letter to this Office dated 29 July 2015, the Opponent advised that it was not relying on evidence in reply.
The Opponent’s Evidence
Davide Frascari is the President of the Opponent, which is a non-profit trade association, tasked with the protection and advancement of the interests of the Emilia Indicazione Geografica Tipica (‘IGT’) this being a wine region recognised by the Italian government.
Pursuant to Ministerial Decree of 18 November 1995, “Emilia” became an IGT under Italian law.[3]
[3] This was recently modified by Ministerial Decree of 31 July 2013.
According to Mr Frascari (at [10]):
In order to carry out its statutory mandate, the Opponent organises and coordinates the activities of groups concerned with the production and marketing of wines bearing the Emilia IGT; ensures consistency between the manufacturer operational requirements and production standards; protects the names from plagiarism, unfair competition, usurpation and other offences, defends the seat of each member of the consortium; implements all measures to enhance directly and indirectly the names, from technical and reputational perspectives; collaborates with organisations and individuals whose objects include enhancing and supporting the production of wine and of the protected products.[4]
[4] At [10].
Mr Frascari also points out that both “dell’Emilia” and “Emilia” are protected geographical indications under the Australian Grape and Wine Authority Act 2013 (Cth) (‘AGWA’). This Act is reproduced in Frascari and confirms this information.[5]
[5] See [18] and Annexure A3.
Mr Frascari says (at [7]) that he is fluent in the Italian language and he states that “dell’Emilia” means “of/from” the Italian region “Emilia”.
The “Emilia” and “dell’Emilia” geographical indications may be used in relation to wines manufactured in the region comprising the provinces of Ferra, Modena, Parma, Piacenza, Reggio Emilia and part of Bologna in Italy.[6]
[6] At [19].
Mr Franscari deposes (at [36]-[38]):
Since 1 September 2010, it has been an offence in Australia to sell or import wines with the false description or presentation of “Emilia” or “dell’Emilia” if the wine is not a wine originating in the area designated as part of the Emilia IGT, made in accordance with Italian laws and entitled under such laws to use the IGT.
In the period 2012-2013 the Consortium exported in Australia respectively 3159 hectolitre[s] and 3312 hectolitre[s] of products bearing the Emilia IGT.
I understand that the Applicant is a Chilean winemaker with vineyards located in Casablanca Valley, Maipo Valley, Cachapol Valley, Colchagua Valley and Bio Bio Valley ( all being areas in Chile) and that its wines all originate in Chile.
The Opponent argues that the Emilia IGT is a dominant feature of the Trade Mark and the identity of the IGT is not obscured in any way.
In respect of the Trade Marks’s suffix ‘na’ Opponent submits this is a very minor part of the Trade Mark and its addition creates a meaning in the Italian language. According to the Opponent the suffix ‘na’ creates a feminine adjectival form of the Italian place name Emilia.
The Opponent’s submissions also quote the Oxford Paravia Italian-English Dictionary (2nd Ed, 2006) which defines “EMILIANO” (the masculine adjectival form of the place name Emilia) as “Emilian”.
Lastly, the Opponent suggests that the present matter is similar to those facts in Federation of the Swiss Watch Industry FH v K-Swiss Inc[7] (‘K-Swiss’) where the Hearing Officer decided that the trade mark K-Swiss contained the geographical indication “Swiss”.
[7] [2009] ATMO 78.
The Applicant’s Evidence
Peter Hallett is the Applicant’s Australian trade mark attorney. He says “he is instructed that [the Trade Mark] has been registered and used in Chile and elsewhere in relation to wine for 30 years” and this statement is apparently supported by Annexure PLH-4, which contains extracts from the Applicant’s website downloaded on 22 April 2015 (albeit being some 16 months after the Relevant Date).
The rest of the Applicant’s evidence can be described as follows:
Annexure PHL-1 is a list of the Applicant’s pending applications and registrations for the marks EMILIANA and SANTA EMILIANA in various countries around the world.
Annexure PLH-2 shows that the Applicant is the registered owner of Australian trade mark 740435 SANTA EMILIANA, which dates from 1997.
Annexure PLH-3 contains evidence that the Applicant registered the trade mark EMILIANA & Grape Device in the European Union in 2010. I note that the registration was opposed by a German company named Emilia GmbH & Co. KG (presumably a member of the Opponent since the opposition was based on the Opponent’s earlier EU registration for the mark EMILIA) but that the opposition was later withdrawn.
Annexures PLH-4, PLH-5 and PLH-6 show that the Applicant manufactures wine under the EMILIANA label. Annexure PLH-6, for example, shows that the Trade Mark is used in relation to the Applicant’s wine and appears on Australian websites such as jetstar.com.au, traveller.com.au, news.com.au and qantas.com.au. As mentioned, Annexure PLH-4 contains extracts from the Applicant’s website and these show how the Trade Mark is represented on the Applicant’s wine bottles. Annexure PLH-5 reproduces copies of the first 4 pages of results of a Google® search for the term “EMILIANA”.
The Applicant claims that it has received considerable publicity and grown a substantial reputation within Australia and elsewhere in the world in relation to wine sold under the Trade Mark.
It also argues that the Trade Mark does not contain or consist of a sign that is a “geographical indication” as specified in ss 6 and 61 of the Act (as to which see below). In support the Applicant cites Bavaria NV v Bayerischer Brauerbund eV[8] (‘Bavaria’) and quotes the words of Bennett J where her Honour stated that making out a case under section 61:
(158)…does not depend on the impression or the likely impression made on a consumer. It requires the trade mark to be looked at in its totality to decide if it contains or consists of a sign recognised in Germany as indicating that the beer comes from Bavaria and that it has a quality, reputation or other characteristic attributable to its origin… (161)…The section does not refer to a sign that [is] substantially the same as or deceptively similar to the geographic indication, or refer to an evocation or limitation of the geographical indication.
Discussion
[8] [2009] FCA 428.
As will be seen later in this decision, the Opponent has particularised each of the grounds of opposition with reference to the geographical indications “Emilia” and “dell’Emilia” which are listed on the AGWA register in respect of wines. For this reason it is convenient to start my discussion with the s 61 ground of opposition because it deals with trade marks that contain, or consist of, geographical indications.
Section 61
Section 61 of the Act is reproduced below:
61 Trade mark containing or consisting of a false geographical indication
(1) The registration of a trade mark in respect of particular goods (relevant goods) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods (designated goods) originating in:
(a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or
(b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;
if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.
(2) An opposition on a ground referred to in subsection (1) fails if the applicant establishes that:
(a) the relevant goods originated in the country, region or locality identified by the geographical indication; or
(aa)the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or
(b) the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or
(c) the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:
(i)1 January 1996; or
(ii)the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;
whichever is the later; or
(d) if the registration of the trade mark is being sought in respect of wine or spirits (relevant wine or spirits)—the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.
(3) An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:
(a) although the sign is a geographical indication for the designated goods, it is also a geographical indication for the relevant goods; and
(b) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.
(4) An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:
(a) the sign consists of a word or term that is a geographical indication; and
(b) the word or term is a common English word or term; and
(c) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.
Note 1: Forapplicant, predecessor in titleand geographical indicationsee section 6.
Note 2: Fororiginate (in relation to wine only) see section 15.
Accordingly, the Opponent first needs to establish that the Trade Mark contains or consists of a geographical indication. Section 6 defines “geographical indication” as:
geographical indication, in relation to goods, means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.
In this case the ‘relevant goods’ for s 61 purposes included in the Applicant’s goods are ‘wines’.
The Opponent has particularised the ground for opposition under s 61 as follows:
Section 61
EMILIA and DELL’EMILIA are recognised as geographical indications within:
a) Italy/the Italian Republic (under Ministerial Decree of 18 November 1995 as most recently modified by Ministerial Decree of 31 July 2013); and
b) the EU (under article 118 of EC Regulation 1234/2007);
in respect of wines.
The rules for the use of the geographical indications EMILIA and DELL’EMILIA under both EU law and the laws of the Italian Republic are set out in the abovementioned decree of the Italian Government. As the Mark contains the geographical indication “EMILIA” and translates from Italian to “of/from EMILIA”, use by the Applicant of the Mark in respect of the Goods would constitute:
a) use of the Mark in respect of goods for which EMILIA and DELL’EMILIA are
recognised as geographical indications; and/or
b) use of the Mark in a manner that would be likely to deceive or cause confusion.The Opponent also submits that the use of the Trade Mark would contravene s 61 because it contains the “Emilia” and “dell’Emilia” geographical indications protected by the AGWA Act.
The Applicant argues that “Emilia” is merely part of the Trade Mark and that when it is combined with other elements found in the Trade Mark namely, the suffix letters ‘na’ that would, the Applicant submits, on the balance of probabilities be unlikely to be interpreted by wine consumers as meaning a wine originating in, or designating, the “Emilia” or “dell’Emilia” geographical indications.
Firstly, from my own knowledge, EMILIANA is an Italian first name and family name, and the feminine form of the masculine Italian name EMILIANO.
The Opponent submits that the letters ‘na’ forming the suffix of the Trade Mark are of no great significance because placing ‘na’ at the end of “Emilia” forms the feminine adjectival form of the Italian place (region) name Emilia. The Applicant has not disputed this part of the Opponent’s argument, so I will accept the Opponent’s submissions on this issue at face value.
In regard to the K-Swiss and Bavaria decisions the Applicant submits that “the question under s 61 is not simply whether the letters that make up the word “Emilia” can be found in the Applicant’s mark. Instead, as the cases illustrate, section 61 requires that the mark contain the sign that is the geographical indication in such a manner that it retains its identity as the sign in question”.
On this point, the Italian meaning of the feminine adjectival form of “Emilia” was provided by Mr Frascari. I am satisfied that Italian speaking Australians (of which there are many) would, on the balance of probabilities, understand the Trade Mark as identifying the Emilia wine region in Italy.
I am in any event satisfied based on my own knowledge that many Australian consumers of wine would be familiar with the word “Emilia” denoting the Italian geographical region associated with wine production, especially given that Australians frequently travel to Italy, particularly to the popular tourist destination Tuscany which borders the Emilia region to the South, and because a considerable volume of wine from the Emilia region has also been exported under the Emilia IGT to Australia.
The Applicant has not applied for the composite wine labels containing additional words which identify the actual region of the Applicant’s wine production like in the Bavaria case (which was actually Bavaria). That said I cannot assume potential purchasers would inspect the Applicant’s wine bottles to such a degree that they would notice fine print on the label. Indeed, I cannot discern the words on the representations of the Applicant’s wine bottle labels in Annexure PLH-4 beyond the word “EMILIANA” and the words “organic” and “vineyards” with a grape device between the latter two words.
For the reasons given above, I am satisfied, on the balance of probabilities, that the Trade Mark contains the “Emilia” geographical indication.
Since the Applicant’s goods include “wines”, the requirements of sub-s 61(1) are accordingly made out.
However, this finding is not necessarily fatal for the application since the Applicant may be able to avail itself of sub-ss 61 (2), 61 (3) or 61 (4).
Ways of overcoming section 61
As mentioned, there are a number of ways in which the Applicant may overcome the s 61 ground. However in this case it is sufficient only to address sub-s 61 (2), to which I now turn.
According to sub-s 61 (2) the opposition fails if the Applicant can establish:
(a) the relevant goods originated in the country, region or locality identified by the geographical indication; or
(aa) the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or
(b) the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or
(c) the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:
(i)1 January 1996; or
(ii)the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;
whichever is the later; or
(d) if the registration of the trade mark is being sought in respect of wine or spirits (relevant wine or spirits)—the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of grapes used in the production of the relevant wine or spirits.
In regard to sub-ss 61 (2)(a), (aa), (b) and (d) it is clear from the Opponent’s evidence that the words “Emilia” and “dell’Emila” are recognised as geographical indications for wine and that they continue to be geographical indications for wine.
It is likewise clear to me that the Applicant’s wine is not produced in Italy but in Chile. It is also clear that Chile does not contain a geographical region called EMILIANA, and nor is EMILIANA the customary name of a variety of grapes used in the production of wine.
Therefore, sub-ss 61 (2)(a), (aa), (b) and (d) are not open to the Applicant to resist the opposition under s 61.
Turning to sub-s 61 (2)(c), I note that Annexure PLH-4 (the extracts from the Applicant’s website) states:
1986 The search began to find the best valleys for each varietal in order to make wines with excellent quality and personality. Viña Santa Emiliana S.A. is founded as a result, and soon positioned itself as one of the best varietal wineries in the country.
The following picture is from Annexure PLH-4 and shows how the Trade Mark appears on the Applicant’s wine bottles:
Mr Hallett deposes (at [5]) that the Applicant has operated a very successful organic winery in Chile for almost 30 years.
Based on the evidence before me I am satisfied, on the balance of probabilities, that the Applicant was using EMILIANA as a trade mark in relation to its wines since 1986 and thus prior to January 1996.
Therefore, the Applicant is able to avail itself of the defense available under sub‑s 61 (2)(c)(i).
The s 61 ground for opposition is accordingly not established.
I move then to consider the other grounds for opposition nominated in the SGP.
Section 41
Section 41 of the Act relevantly provides:
41 Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
…
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
i.the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
ii.the use, or intended use, of the trade mark by the applicant;
iii.any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services…
Pursuant to s 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it.
The appropriate inquiry under this ground was summarised succinctly by Kitto J in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[9] as:
The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without improper motive, to desire to use upon or in connection with their goods.
[9] (1965) 112 CLR 537 at 55.
More recently in Cantarella Bros Pty Limited v Modena Trading Pty Limited[10] (“Cantarella”) the High Court said in its majority judgment:
…whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3),[11] requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.
As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.[12]
[10] [2014] HCA 48.
[11] The Court is here referring to s 41(3) as it stood prior to significant amendment to s 41 which came into effect on 15 April 2013. As from that date s 41(3) as it then was, was effectively replaced by s 41(4) as set out in paragraph 57 above.
[12] At [70]-[71].
It follows then that to establish the ground for rejection under s 41 the Opponent must establish that the ordinary signification of the Trade Mark is the “Emilia” or “dell’Emilia” geographical indication (or the Emilia region of Italy) and that other traders in wines might need to use the Trade Mark in respect of their goods for legitimate descriptive purposes.
The Opponent has particularised the ground for opposition under s 41 as follows:
Section 41
The Mark is not inherently adapted to distinguish the goods specified in the Application, namely wines and other alcoholic beverages in this class, (Goods) from the goods of other traders.
The Mark EMILIANA translates from Italian as “of/from Emilia”. EMILIA is a protected geographical indication for wines listed on the register of protected geographical indications (AGWA Register) maintained under the Australian Grape and Wine Authority Act 2013 (Cth) (AGWA Act). The status of EMILIA as a protected geographical indication on the AGWA Register establishes that the Mark would be required by other traders to identify goods (including wines) originating in the region of Emilia.
The phrase DELL’EMILIA (Italian for “of/from Emilia”) is also listed on the AGWA Register as a protected geographical indication in respect of wines. The Applicant’s mark is a synonym for DELL’EMILIA and registration has been sought in respect of wines in class 33.
Other traders are therefore likely to wish to use the Mark to describe that their wines and similar goods that come from the region of Emilia.
As mentioned in paragraph 36 above “Emiliana” in Italian is the feminine adjectival form for the place name “Emilia”. As such it does mean from or of Emilia in Italian. Indeed, I am satisfied this is its primary meaning, from which its use both as a given name and a surname derives. It is also my understanding that “La donna Emiliana”, for example, would translate into English as “the Emilian woman”, or “the woman from Emilia” or “the woman of Emilia” or similar. That said I believe this would not be understood by most Australians.
The majority judgment in Cantarella, which was effectively based on the Court’s view that most Australians would not understand the meaning of the Italian words “oro” and “cinque stelle” applies the present case, the ordinary signification of the Italian word “EMILIANA” is a first name and a family name and not one other traders might legitimately need to use in respect of their goods. The Trade Mark contains an allusive reference to the relevant goods and as such it is inherently adapted to distinguish.
In case I am wrong that the Trade Mark is prima facie registrable, other relevant factors supporting the dismissal of the s 41 ground are that the Trade Mark has been used by the Applicant in respect of wine for a considerable time and that the relevant goods are not marketed in such a way that Australian customers would be caused to wonder if the goods were manufactured in the “Emilia” region of Italy or according to the “Emilia” or “dell’Emilia” geographical indications.
On the balance of probabilities I am satisfied the ordinary signification of the Trade Mark would be a female name and/or family name.
The Opponent’s wine is made in Chile. Chile does not contain a geographical region called EMILIANA and nor is EMILIANA the customary name of a variety of grapes used in the production of wine or any of the Applicant’s goods. EMILIANA is not a geographical location in any other part of the world and nor is it a protected geographical indicator under the AGWA Act.
The suffix of the Trade Mark is ‘na’ and its addition has a significant effect on the Trade Mark’s capacity as a whole to distinguish. The Trade Mark has no meaning in English in reference to the Applicant’s goods.
Other traders will not desire to use the Trade Mark, or something so similar to it, without improper motive, to indicate their own similar goods or closely related services.
I am satisfied the Opponent has failed to establish the ground for opposition under s 41.
Section 42
Section 42 of the Act is reproduced below:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
The s 42 ground is particularised in the SGP as follows:
Section 42
The EMILIA and DELL’EMILIA geographical indications have a reputation in Australia as denoting wines originating from the Emilia region of Italy produced in accordance with certain requirements. The Mark includes the geographical indication EMILIA. Accordingly, use of the Mark by the Applicant would constitute a representation that Goods to which the Mark is applied:
a) are produced in accordance with the requirements of the EMILIA or DELL’EMILIA
geographical indications; and/or
b) come from the Emilia region of Italy.Any use of the Mark in relation to any Goods that are not permitted by the laws of the
Italian Republic to bear the EMILIA or DELL’EMILIA geographical indications and/or do not come from the Emilia region of Italy would therefore constitute misleading or deceptive conduct contrary to section 18 of the Australian Consumer Law (being schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL), the making of false statements contrary to section 29 of the ACL and/or the tort of passing off.As EMILIA and DELL’EMILIA are protected geographical indications in respect of wine
listed on the AGWA Register, use of the Mark in respect of wines originating other than
from the Emilia region of Italy would constitute a breach of sections 40C and/or 40E of the AGWA Act.While the SGP does not explicitly indicate whether sub-ss 42(a) or 42(b) (or both) is of concern to the Opponent I note for the sake of completeness that there is no evidence before me suggesting the Trade Mark contains or consists of ‘scandalous matter’, being defined as material disgraceful to reputation; shameful or shocking.[13]
[13] >
At the hearing, and in its written submissions, the Opponent relied on s 18 and sub‑s 29(1)(k) of the Australian Consumer Law in schedule 2 to the Competition and Consumer Act 2010 (CTH) (‘ACL’) in addition to passing off and ss 40C and 40E of the AGWA Act.
The Opponent bears the onus of establishing on the balance of probabilities that such use would, rather than could, be contrary to law.[14] The relevant time for assessing whether an application is contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[15]
[14] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[15] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.
In relation to the grounds pressed at the hearing Schedule 2 of the ACL relevantly provides:
18 Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2) Nothing in Part 3-1 (which is about unfair practices) limits by implication subsection (1).
Note: For rules relating to representations as to the country of origin of goods, see Part 5-3.
29 False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
[…]
(k) make a false or misleading representation concerning the place of origin of goods;
In relation to the AGWA Act ss 40C and 40E relevantly provide:
40C Offence—sale, export or import of wine with a false description and presentation
(1) A person commits an offence if:
(a) the person sells, exports or imports wine; and
(b) the wine is sold, exported or imported by the person:
(i) in trade or commerce; and
with a false description and presentation.
…
(2) The description and presentation may be misleading even if it indicates the country, region or locality (as the case may be) in which the wine originated.
40E Sale, export or import of wine with a misleading description and presentation
(1) A person commits an offence if:
(a) the person sells, exports or imports wine; and
(b) the wine is sold, exported or imported by the person:
(i) in trade or commerce; and
with a misleading description and presentation
…
(2) The description and presentation may be misleading even if it indicates the country, region or locality (as the case may be) in which the wine originated.
Bearing in mind these legislative provisions: s 18 of the ACL requires the Applicant to have engaged in conduct which is misleading or deceptive or which is likely to mislead or deceive, in this case, in relation to trade of its wine. I have already found that the Trade Mark contains the “Emilia” geographical indication but the Trade Mark is also a recognised female name and family name and the visual and aural differences between the Trade Mark and the geographical indications “Emilia” and “dell Emilia” are such that I am not satisfied that the use of the Trade Mark would mislead or deceive. Similarly, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to the tort of passing off.
The connection between passing off and s 52 of the repealed Trade Practices Act 1974 (‘TPA’) was talked about in Re Equity Access Pty Ltd v Westpac Banking Corporation:
[T]he scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of the name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[16]
[16] [1989] FCA 506 [40].
Section 18 of the ACL is compatible to s 52 of the TPA. Therefore, the above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.
It follows then that s 18 of the ACL has not been contravened and therefore use of the Trade Mark does not amount to passing off.
Sub-section 29(1)(k) requires the Applicant to have engaged in a false or misleading representation concerning the origin of the goods or services, in this case “wine”.
In terms of ss 40C and 40E of the AGWA Act, s 40C requires the sale, export or import of goods or services with a false description or presentation. Under s 40E the sale, export or import of the goods or services must occur with a misleading description and presentation.
I have already found above that most Australians would not recognise that the Trade Mark means “of/from”, Emilia. If the Italian meaning is not known then use of the Trade Mark in respect of wine would not create a false description and presentation, nor would it create a misleading description and presentation that the wine originates from the Emilia region in Italy. I am satisfied that neither s 18 nor sub-s 29(1)(k) of the ACL or ss 40C or 40E of the AGWA Act are made out. Use of the Trade Mark in relation to the Applicant’s wine would not be contrary to law.
Therefore, the Opponent has not established the ground of opposition under ss 42(a) or 42(b).
Section 43
Section 43 of the Act is reproduced below:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
To establish a ground of opposition under s 43 of the Act, there must be an inherent connotation within the Trade Mark. As Gyles J in Pfizer Products Inc v Karam commented:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [17]
[17] [2006] FCA 1663; (2006) 70 IPR 599, [53].
In Winton Shire Council v Lomas Spender J said:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [18]
[18] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].
The Opponent has particularised the ground of opposition in the SGP as follows:
Section 43
The Mark contains the geographical indication EMILIA and is a synonym for the
geographical indication DELL’EMILIA. Given the registration of EMILIA and DELL’EMILIA as geographical indications on the AGWA Register, there is a real likelihood of deception or confusion if the Mark is used in respect of Goods that:
a) do not originate from the Emilia region of Italy; and/or
b) are not produced in accordance with the laws of the Italian Republic regulating the
use of the EMILIA and DELL’EMILIA geographical indications.As can be seen in the case law referred to above the requisite confusion or deception must arise from a connotation within the Trade Mark itself.
Other than the Opponent’s claims that the Trade Mark includes the geographical indication “Emilia”, the Opponent has not provided any evidence that the registration of the Trade Mark would be likely to cause deception or confusion.
While the Applicant’s wine originates in Chile, I have also already found that the Applicant has been using its Trade Mark in relation to wine since as early as 1986. I am also confident that it has established a reputation in relation to wine as evidenced by Annexure PLH-6 which identifies several well-known websites that reference the Applicant and its wine. For the sake of completeness I note too that the s 43 objection does not extend to the Applicant’s goods other than “wines”.
As a consequence, I am satisfied that if the Trade Mark is used in relation to the Applicant’s goods including wine, there is no apparent connotation within it which is likely to result in deception or confusion.
The Opponent has not established the ground for opposition under s 43.
Decision
Section 55 of the Act provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: Forlimitationssee section 6.
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark application no. 1598539 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.
Costs
Costs usually to follow the event. I award costs against the Opponent according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.
Cristy Condon
Hearing Officer
Trade Marks and Designs Hearings & Oppositions
12 July 2017
1
10
0