Constellation Australia Limited v Littore Family Wines Pty Ltd
[2011] ATMO 47
•31 May 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Constellation Australia Limited to registration of trade mark application 1283755 (33) - EMU DEVICE - filed in the name of Littore Family Wines Pty Ltd.
Delegate: Bianca Irgang Representation: Opponent: Mr John O’Mahoney of Collison & Co
Applicant: Mr Ed Heerey of Counsel instructed by Mallesons Stephen Jaques
Decision: 2011 ATMO 47
Section 52 opposition: sections 44 and 60 pressed – s 44 ground of opposition established since trade marks are deceptively similar – no evidence of prior use or other circumstances that would justify exercise of the Registrar’s discretion - Costs awarded against the applicant.Background
Littore Family Wines Pty Ltd (‘the applicant’) filed trade mark application number 1283755 on 5 February 2009 in class 33 of the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark:
Trade mark application: 1283755
Filing Date: 5 February 2009
Specification: Class 33: Alcoholic beverages (except beer) and wine products; the above including wine, spirits and liqueurs
The application was accepted for possible registration and advertised for opposition in the Official Journal dated 4 June 2009. Subsequently Constellation Australia Limited (‘the opponent’) filed a Notice of Opposition (‘the Notice’) dated 4 September 2009 to registration of the application. Thereafter the parties filed and served evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).
I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 8 November 2010. The opponent was represented by Mr John O’Mahoney of Collison & Co. The applicant was represented by Mr Ed Heerey of counsel instructed by Mallesons Stephen Jaques
Onus
The onus falls upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’[1]. His Honour’s findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2] and by Kenny J in Sports Warehouse, Inc v Fry Consulting Pty Ltd[3] .
[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; (2006) AIPC 92-146
[2] [2009] FCA 891, (2009) AIPC 92-355; (2009) 82 IPR 13, para 22-27
[3] [2010] FCA 664 (25 June 2010) at [26] to [40].
Evidence
The evidence of the parties consists of the following declarations:
Declarant
Position
Date Made
Exhibits
Evidence in Support
Joseph Ciccarelli
Assistant Company Secretary of Constellation Australia Limited
31 August 2009
JC-1 to JC-12
Evidence in Answer
Vince Littore
Managing Director of Littore Family Wines Pty Ltd
14 December 2009
VL-1
Evidence in Reply
Joseph Ciccarelli
Assistant Company Secretary of Constellation Australia Limited
19 April 2010
-
Opponent’s Evidence
The first statutory declaration made by Joseph Ciccarelli (‘#1 Ciccarelli’) outlines the trade mark registrations currently held by the opponent which cover wine and other related alcoholic beverages in class 33. These trade marks include:
Trade Mark Registration No.
Trade Mark
53012
EMU
53013
956933
1011995
FOUR EMUS
1058202
1058220
1132891
All of the above registrations have earlier priority dates than that of the opposed trade mark. For the most part the Opponent’s evidence relies on trade mark registrations nos 53012 for the unqualified word mark EMU and trade mark registration no. 53013 for the expression EMU BRAND with the image of an emu.
The opponent’s evidence has established that by virtue of being a successor in title it can associate itself with the original use of the word EMU and various EMU images owned by The Emu Wine Co. Exhibit JC-2 accompanying #1 Ciccarelli demonstrates this to my satisfaction.
The Emu Wine Co is asserted to have been established in London in 1862 (Exhibit JC-11). The opponent’s the evidence does support the contention that the Emu Wine Co. was established in the 1860s. Exhibit JC-7 contains an article which states ‘the EMU Wine Co,. Ltd …was established as far back as 1868’. It is also clear from the evidence that the Emu Wine Co. was the largest importer of Australian wines in the UK as well as Canada by 1925 (exhibits JC-6 and JC-11).
Mr Ciccarelli asserts, on behalf of the opponent, that The Emu Wine Co. first started to use EMU as a brand to distinguish its wine products in Australia from as early as 1929. However, exhibit JC-12 contains an extract from a publication called ‘A Family Tradition in Fine Winemaking’ which indicates that while The Emu Wine Co. was very involved in the wine industry in Australia it appears that the vast majority of its wine sales were to the UK and Canadian markets. There is no direct evidence that these early EMU branded wines were sold to Australian consumers despite being produced in Australian vineyards.
The first clear instance of EMU branded wines being sold to Australian consumers was in 2005 with the launch of the opponent’s FOUR EMUS range of wines (exhibit JC-10). The evidence demonstrates that the FOUR EMUS range is being sold across Australia.
#1 Ciccarelli states that the opponent has extensively promoted its FOUR EMUS range of wines across Australia. Exhibit JC-10 contains an article from Grapevine published in November 2005. The article states that the opponent took its wines to consumer events and trade shows in Sydney, Melbourne, Brisbane and Adelaide as part of the domestic launch of the FOUR EMUS range. According to the article the FOUR EMUS wines were displayed at the ALM Trade Day, The Liquor Stax expo, Sunrise morning television show and on trams, trains and buses in peak hours.
Applicant’s Evidence
The Littore business was started by Mario and Aurora Littore in or about 1976, according to the statutory declaration of Vince Littore ( ‘#1 Littore’) . At this time, the business was called Jinda-Lee Estate Wines. In 2008 the name of changed from Jinda- Lee Estate Wines to Littore Family Wines Pty Ltd.
Mr Littore states that a decade after the establishment of Jinda-Lee Estate Wines, the Littore business continued to grow and its wine production capacity increased from 3 million litres to 13 million litres of wine per annum. He further states that it was during this period of growth that the decision was made to re-brand Jinda-Lee Estate Wines. In 1996, the wines that had previously been offered under the Jinda-Lee trade mark were now being offered also using the images of native Australian animals to reflect the Australian origin of the wines. These wines were collectively called the ‘Critter’ range.
An emu was chosen as one of the Australian ‘Critters’ to be used on the labels of the Jinda-Lee range. Mr Littore states that between 2005 and 2007, the image of an emu appeared on the Rosé variety of wine marketed as part of the Jinda-Lee range (Document 3 in exhibit VL-1). During this same time, approximately 770 cases (each consisting of 12 standard bottles) of the Rosé wine bearing the image of an emu device mark were soldin Austral8ia. A further 2,176 cases were exported to and sold in countries such as the USA, China, Ireland and Ghana. In addition, 3,035 cases consisting of six magnum bottles of the wine were sold in the USA and Russia. Confidential document 4 in exhibit VL-1 consists of invoices setting out the abovementioned figures. However, it is to be noted that these sales, while using the image of an emu, did not use the EMU trade mark which is under opposition and are therefore, not relevant for the purposes of this decision.
In 2008 the applicant engaged a branding company, John Jewell Design, to update the look and feel of the Jinda-Lee wine range. The result was the artwork that is embodied in the opposed EMU trade mark which was applied to the Chardonnay of the applicant’s Critters range of wines (document 5 of exhibit VL-1).
Mr Littore asserts that the applicant is one of the largest independent wine grape growers in Australia and that it is also one of Australia’s most important wine exporters, exporting its wine to over 17 countries. Mr Littore asserts that the Jinda-Lee Chardonnay featuring the opposed EMU trade mark (‘EMU Chardonnay’) has been widely distributed across Australia and overseas. The #1 Littore outlines the number of cases (consisting of 12 bottles) sold in Australia and overseas. Document 7 of exhibit VL-1 consists of the invoices for these sales of the EMU Chardonnay. I note that the dates on these invoices are all from 2009. These invoices from 2009 are the first documented use of the applicant’s opposed EMU trade mark.
Mr Littore states that the Jinda-Lee range of wine, including the EMU Chardonnay, are distributed in Australia through the applicant’s cellar door as well as its retail outlet, Jinda-Lee Wine Direct, located in Highton, Victoria. The EMU Chardonnay is also promoted on the applicant’s website located at: (document 8 of exhibit VL-1).
Discussion
Section 44 - Identical etc. trade marks:
Section 44 of the Act relevantly provides:
44Identical etc. trade marks
(1)Subject to subsections (3) and (4), and application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)…; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:
Ø a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
Ø the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and
Ø the priority date(s) of the other person’s trade mark(s) is (are) the earlier.
The opponent is most notably the owner of trade mark registrations nos. 53012 and 53013 which have earlier priority dates than that of the opposed trade mark. The opposed trade mark application covers the same goods in class 33 as those goods which are specified in the opponent’s trade mark registrations. The remaining issue for me to determine is whether the opposed trade mark is either substantially identical with or deceptively similar to the opponent’s previously registered trade marks.
Comparison of the trade marks
It is obvious that the applicant’s EMU device trade mark is not substantially identical with the opponent’s various EMU trade marks according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4]. There are clear visual differences between all the trade marks which are sufficient to preclude a finding of substantial identity.
[4] (1963) 109 CLR 407 at 414
Deceptive similarity is, however, defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark, to the impression that they would form from the applicant’s trade mark.[5] The likelihood of deception must be finite and non-trivial.[6]
[5] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J at 415 ‘Shell’
[6] Registrar of Trade Marks v Woolworths Limited 45 IPR 411, per French J at [43]
The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell at 415:
The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]
The Court added at 416, that:
[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.
The principles laid out in these tests have not been challenged.
Mr Ed Heerey, counsel for the applicant, discussed at length the proposition that the trade marks in question were not deceptively similar, drawing on the established authorities for the comparison. Whilst I agree that there are clearly differences between the trade marks I cannot agree that they are not deceptively similar to each other.
The opponent’s first trade mark is for the word EMU. The applicant’s trade mark is a graphic representation of an emu depicted in a particular Aboriginal style. I refer to Seixo v Provezende (1865) LR 1 Ch 192 at 197, and Shanahan’s commentary thereon:
“If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think that the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market, may be as much a violation of the rights of that rival as the actual copy of his device.”
Thus a trade mark consisting of a device may be regarded as deceptively similar to a trade mark consisting of the name of that device or to another device suggesting the same name. As Latham CJ observed in Jafferjee v Scarlett: "Purchasers very frequently endeavour to describe a mark in order to obtain the same goods as they have bought on a previous occasion."
In this instance, the only name that can be logically given to a trade mark that consists of an emu device is “EMU”. This consideration must apply even more clearly where the competing trade mark is the word EMU. I refer now to Jafferjee v Scarlett[7]:
It is important to consider what has been described as the "idea of the mark," that is, the idea which the mark will naturally suggest to the mind of one who sees it. Lord Herschell's committee (quoted in Kerly on Trade Marks, 6th ed. (1927), at p. 270) put the point very clearly in the following passage:--"Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same; so that a person acquainted with the mark first registered, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Take, for example, a mark representing a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade-marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing."
When a matter such as this comes before the court, the court has before it the two marks themselves, clearly shown, and available for direct and immediate comparison. Cases in which the marks are identical do not ordinarily come before a court. The question which arises is always whether there is a probability of deception because there is a resemblance, though there are also differences, between two marks. The court naturally and readily appreciates the distinctions between the marks which are seen side by side. When, however, the court has to determine the probability of deception arising from simultaneous user of the same marks in the same market, it is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived. The court must endeavour to put itself in the position of ordinary purchasers of goods who have noticed a trade mark as being distinctive of particular goods, but who have not compared that mark with any other mark, and who are quite probably not aware of the fact that another more or less similar mark exists. Such purchasers have not had the opportunity or the occasion to make a precise comparison of the two marks. They will be guided, so far as they are influenced by trade marks at all, by a general recollection or impression of the mark which they have seen.
[7] [1937] HCA 36; (1937) 57 CLR 115
The principle in that case came down to the ‘idea of the mark’. Whatever may be said of the competing ideas evident in the devices in Jafferjee, the only possible conclusion in the present opposition is that the idea of the applicant’s EMU device is “EMU”, precisely the same idea and name that would be associated with the opponent’s trade mark for the word EMU. How the applicant’s EMU is rendered (photographically, or as a drawing, or in Aboriginal dot style) is neither here nor there in comparison with the subject-matter that is being represented: an EMU.
Mr Heerey provided six examples where other trade marks containing emus had been registered by traders other than the opponent in respect of wine in class 33. He argued that these other trade mark registrations containing EMU word/devices demonstrated that the opponent’s assertion that it enjoys a monopoly in the use of an image of an emu or the word EMU in respect of wine is unsustainable. Mr John O’Mahoney, representative for the opponent, responded to this argument by providing representations of these trade marks. Mr O’Mahoney argued that each of the trade marks had a strong/prominent/distinguishing word or image which precluded an average wine purchaser from perceiving the meaning of the trade mark to be that of an EMU.
Regardless as to the opponent’s arguments I am not satisfied that these other registrations have any relevance to the matter before me. I also note Mr Heerey’s argument that a device such as the applicant’s EMU trade mark will invariably be accompanied by a prominent brand name. In the present case that name is “Jinda-Lee”. I find this statement interesting because it is true that the applicant’s evidence demonstrates that its EMU trade mark has only ever been used in close conjunction with the term “Jinda-Lee”.
In relation to the making of the necessary comparison, I would explain the process thus: I am not to be overly influenced by the evidence that the disputing parties use their respective trade marks in ways that, at the moment, may be quite different. I am to consider any of the modes of business that would be within the scope of the registration, should it be granted in the terms presently sought. In this instance the applicant has not applied for a composite trade mark comprising the EMU device and the term “Jinda-Lee”. The applicant has only applied for an EMU device. This device is the trade mark which must be compared to the opponent’s registered EMU word trade mark. All discussion pertaining to customers referring to the applicant’s EMU Chardonnay as “Jinda-Lee” is completely unrelated to the matter at hand. The applicant has not applied for a trade mark with an EMU and the words Jinda-Lee. It has applied for an EMU device solus. This being the situation, I am satisfied that the opposed trade mark is deceptively similar to the opponent’s EMU word trade mark.
However, subsections 44(3)(a) and (b) of the Act make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances.
A consideration of the evidence demonstrates the applicant has not demonstrated any use of its EMU trade mark before its priority date so the provisions of section 44(3)(a) are not applicable.
Littore #1 states that between 2005 and 2007, the image of an emu appeared on the Rosé variety of wine marketed as part of the Jinda-Lee range (Document 3 in exhibit VL-1). As mentioned earlier, this emu image is not the trade mark which is currently under opposition. However, Mr Heerey argued that the extent of the applicant’s early EMU trade mark and subsequent use of the opposed trade mark has established an independent reputation in EMU as being associated with that company and with its Critter range of wines. Mr Heerey states this reputation is a thing of value which the applicant ought to be allowed to keep using and he submits that this factor should weigh in favour of the exercise of the Registrar’s discretion to allow registration under s 44(3)(b).
While it may well be true that the applicant has been using an emu image on its wine, it has not used the opposed trade mark before the priority date. It has used a different trade mark and the reputation it may have in that earlier trade mark has not been transferred to the present application. The applicant has also pointed out that should its trade mark not obtain registration it will be put to the expense of re-packaging its wine and further expenses associated with marketing. However, I am not persuaded by these arguments. The plain, understandable, and perhaps regrettable, facts of the matter are that the applicant and the opponent, in the course of operating their long-standing, and apparently successful and well-regarded enterprises in Australia, have quite independently chosen deceptively similar trade marks to identify their similar goods.
Taking into account all of the above, I am not satisfied that the current circumstances make it proper to apply the provisions of section 44(3)(b). Nor has the applicant been able to provide any evidence of use before the filing date so that the provisions of section 44(3)(a) are not applicable. Therefore, the opponent has established the section 44 ground of opposition.
Having found in favour of the opponent in terms of section 44 there is no need for me to discuss the remaining grounds set out in the notice although these grounds or any others in the Act may also be relied on in the event of an appeal from this decision.
Decision
Section 55 of the Act provides:
Decision
Unless the proceedings are discontinued or dismissed, 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.
I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 44 argued at the hearing. Accordingly, I refuse to register trade mark application 1283755.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant Littore Family Wines Pty Ltd.
Bianca Irgang
Hearing Officer
Trade Marks Hearings
31 May 2011
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