Daylesford and Hepburn Mineral Springs Co. Pty Ltd v Australian Armaco Pty Ltd

[2015] ATMO 107

TRADE MARKS ACT 1995

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

Re:Opposition by Daylesford and Hepburn Mineral Springs Co. Pty Ltd to registration of trade mark applications 1586896, 1586897, 1586898 and 1586899(32) - DAYLESFORD, Crown Device and Ornate Frame - in the name of Australian Armaco Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Robert Kelson, trade mark attorney of Callinan & Co Applicant: Karen Sinclair, solicitor, of Watermark
Decision:	2015 ATMO 107 Section 52 opposition: grounds under sections 41, 42 and 43 not established. Trade Marks to proceed to registration

Background

1. In these proceedings under the Trade Marks Act 1995, (‘the Act’) Australian Armaco Pty Ltd (‘the Applicant’) has filed applications (‘the Applications) to register the trade marks (‘the Trade Marks’) which appear below:

   Application No:  1586896

   Trade Mark:  

   
   

   Application No:  1586897

   Trade Mark:  

   Application No:  1586898

   Trade Mark:  

   Application No:  1586899

   Trade Mark:  

2. Each of the above trade marks has a priority date of 21 October 2013 (‘the relevant date’) and each seeks registration in respect of the following goods in Class 32 of the International (Nice) Classification of Goods and Services:

   Aerated spring waters; Natural spring waters (not for medical purposes); Non-medicated mineral spring waters; Spring water (beverages), other than for medical purposes; Aerated mineral waters; Mineral water (beverages); Natural mineral water (not for medical purposes); Preparations for making mineral water; Aerated water; Bottled water (not for medical purposes); Carbonated water; Drinking water; Lithia water; Natural water (not for medical purposes); Preparations for making aerated water; Seltzer water; Soda water; Still water (not for medical purposes); Table waters; Water (beverage) other than for medical use; Water for drinking (other than for medical purposes); Waters (beverages)

   (‘the Goods’)

3. The Applications were examined as is mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 13 March 2014.

4. On 12 May 2014 Daylesford and Hepburn Mineral Springs Co Pty Ltd (‘the Opponent’) filed Notice of Intention to Oppose and on 12 June 2014 filed its Statement of Grounds and Particulars which cited grounds under sections 41, 44, 60, 42, 43 and 61 of the Act. Of these grounds the Opponent relied on sections 41, 42 and 42 at a hearing of the matters and I treat those other grounds as having been abandoned by the Opponent.

5. On 16 July 2014 the Applicant filed a Notice of Intention to Defend.

6. Thereafter the parties have filed their evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).

7. Both parties requested to be heard.  The hearing was before me as a delegate of the Registrar of Trade Marks on 18 September 2015.  The Opponent was represented by Robert Kelson, trade mark attorney, of Callinan & Co.  Karen Sinclair, solicitor, of Watermark Intellectual Asset Management represented the Applicant.

   Onus & Relevant Date

8. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26].

9. The relevant date at which the grounds must be considered is the filing date of the Trade Mark.[2]

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

   Evidence

10. The evidence in this matter is comprised of the following declarations:

    Evidence in support

    Mitchell Lindsay Watson made on 21 October 2014, together with exhibits MW-1 to MW-6 (‘Watson declaration’);

    Evidence in answer

    Jing Ni made on 6 February 2015, together with exhibits JN-1 to JN-3 (‘Ni declaration’); and

    Karen Joy Sinclair made on 10 February 2015, together with exhibits KJS- 1 to KJS-17 (‘Sinclair declaration’).

11. Mr Mitchel Lindsay Watson is a Director of the Opponent of Daylesford, Victoria.

12. The Watson declaration states:

    Now exhibited hereto and marked MW-1 are copies of photographs of a bottle[3] stated to contain volcanic spring water. The bottle bears a marking of “16/03/2014”, indicating the date of bottling. The stated source of the water is ‘Black Mount Sping (sic) Water.[’] The stated place of bottling is Taylor Ferguson & Co Pty Ltd, 818 Lauriston Road, Kyneton, Victoria 3444. I inquired of John Lanza as to the source of the water and was informed that it did not come from a mineral spring located in the area of Daylesford.

    [3] I note that this bottle bears a trade mark which corresponds to 1586897, above.

13. It is not clear who John Lanza is or what his authority is to comment on the operations of Taylor Ferguson & Co Pty Ltd.  Further, when the Watson declaration refers to the ‘area of Daylesford’ it is not clear whether it refers to an area within the town boundaries or an area reasonably close to Daylesford.  The Watson declaration goes on:

    Exhibited hereto and marked MW-2 are extracts from two publications, namely, “The Spa Country A Field Guide to 65 Mineral Springs of the Central Highland, Victoria” and “Spa Country Victoria’s Mineral Springs”. These books identify the mineral springs located in the area known as Daylesford. They also discuss the history of the Daylesford Mineral Springs area.

    Exhibited hereto and marked MW-3 is a print out of an article on the Wikipedia website discussing the town of Daylesford.

    Exhibited hereto and marked MW-4 is a copy of a letter from the Hepburn Shire Council referring to the significance of the name DAYLESFORD.

    Exhibited hereto and marked MW-5 is a print out of the results of a search on the term DAYLESFORD in the postcode area 3460 using the Yellow Pages. There were 172 entries containing the word DAYLESFORD in the area of Daylesford itself. Of those entries 140 were defined as local businesses. They included bed and breakfast accommodation, convention and conference venues, restaurants, day spas, an art gallery, a building designer, a florist, an insurance agent, a pet shop, a pharmacy, and a service station. The term DAYLESFORD has geographical significance in relation to businesses in that area.

    Exhibited hereto and marked MW-6 is a print out of search results on the name DAYLESFORD on the Australian Securities and Investments Commission database.

    The foregoing documents demonstrate that DA YLESFORD is a town known for mineral spas and the production of mineral waters.

14. Jing Ni is Director and Secretary of the Applicant.

15. The Ni declaration states:

    I started My Company in October 2011 with the objective of exporting mineral/spring water products to China, and marketing and retailing it there.

    I was involved in selecting and developing the design of the Opposed Trade Marks in September - October 2013. My husband and I worked with a graphic designer to create their overall look. The Opposed Trade Marks include several elements including a crown, an elaborate border of vine leaves, a fanciful representation of the word ‘Daylesford’ and in three of the cases, other word elements: ‘Blue Hills’, ‘Spring Hill’ and ‘Premium’. We chose to include the word ‘Daylesford’ as one of the elements in the Opposed Trade Marks in part because I am aware that the Daylesford region of Victoria is well known as a source of high quality mineral spring water. Further, a transliteration of the word ‘Daylesford’ has an auspicious Chinese meaning that evokes ideas of happiness, wealth, and good health. From my Chinese background, I know that some Chinese consumers associate the Daylesford region of Victoria and the word ‘Daylesford’ with mineral spring water and with long life and good health. Happiness, good health and a long life are all highly valued aspects of a Chinese person’s life.

    When I filed the Opposed Trade Marks at IP Australia I was not aware that there was any other company using the word ‘Daylesford’ as part of their name or brand. I had not seen any water products using the word ‘Daylesford’.

    I have since become aware that there are other bottled water suppliers that use the word ‘Daylesford’ in their labelling and branding of water products including the Opponent, Daylesford and Hepburn Mineral Springs Co. Pty Ltd, and Daylesford Region Spring Water Pty Ltd of Woodend Road, Tylden, Victoria.

16. Concerning the Applicant’s water products, the Ni declaration goes on:

    As part of the process of choosing the supplier of the water that is in [the Applicant’s] mineral/spring water products, I was taken to several water springs in the Daylesford region of Victoria by personnel from the business known as Black Mount Spring Water. [The Applicant] has contracted with the business known as Black Mount Spring Water to supply the water in [the Applicant’s] mineral/spring water products. I personally select the source or sources of water that is supplied by the business known as Black Mount Spring Water to the commercial bottler of [the Applicant’s] mineral/spring water products and then exported by [the Applicant].

    I am of the understanding that the source or sources of water used in [the Applicant’s] mineral/spring water products are in the Daylesford region. I am told that two of the sources of the water supplied by the business known as Black Mount Spring Water are located within an about 30 km radius of Daylesford township. These are Musk, Victoria and Millbrook, Victoria. The Chinese consumers to which my product is directed would consider these locations to be sources in the ‘Daylesford Region’ of Victoria.

17. Ms Ni then attests as to the sales revenue and marketing expenditure in relation to the sale and promotion of Goods bearing the Trade Marks in China.  When it is considered that sales under the Trade Mark cannot have occurred until after October 2013 when the Trade Marks were designed, the sales are quite large.

18. Ms Karen Joy Sinclair is a Principal and Trade Marks Attorney of Watermark Patent & Trade Marks Attorneys, the legal representatives of the Applicant.

19. The Sinclair declaration exhibits a range of materials the purpose of which is to show that the word ‘Daylesford’ is used in respect of an area as well as a township. 

    ·The website[4] of the previously mentioned business Black Mount Spring Water states of its water sources, “We also have a number of other springs in the Central Highlands and Daylesford areas.” 

    [4] _ 23102008 making_ the_ most.html dated 23 October 2008

    ·A map[5] from the Daylesford & District Historical Society Inc shows an area of over thirty kilometres around Daylesford as falling within its purview.

    [5] .com.au/ district_ map.htm accessed 4 February 2015

    ·a copy of a photograph of a map, and an exploded part of the map located on the wall of the Melbourne Visitor Centre at Federation Square, corner Flinders and Swanston Streets, Melbourne on 10 February 2015.

    ·A copy of the cover page and pages 18 and 19 of the Official Visitors Guide to Daylesford and the Macedon Ranges also obtained from the Melbourne Visitor Centre at Federation Square, corner Flinders and Swanston Streets, Melbourne on 10 February 2015.  This states, inter alia:

    After a leisurely lap of these heavenly hamlets, dive into Daylesford And d Hepburn Springs - made famous by the re1uvenat ng natural mineral waters in the 19th century. Luxuriate at day spas and holistic health retreats, enjoy exquisite shopping and dining experiences, and drift into divine accommodation

    ·     a copy of the Central Victorian Mineral Springs Groundwater Management Area Local Management Plan dated July 2013 which was accessed on 20 January 2015 which in part explains:

    The Central Victorian Mineral Springs GMA is located in central Victoria, extending north from the Great Dividing Range to Cairn Curran Reservoir and Lake Eppalock (Figure 1). It includes the townships of Daylesford, Trentham, Tylden, Woodend, Newstead, Maldon, Castlemaine, Harcourt, Malmsberry, Kyneton, Redesdale and Heathcote.

    ·     This source further explains:

    Basalt, which can be up to around 100 m thick, is found around Daylesford, Trentham, Kyneton, Malmsbury and Woodend. The basalt aquifer is occasionally capable of producing moderate yields (of the order of 1 MLday) but lower yields are more common. Groundwater quality is generally very good. Most licensed extraction is from the basalt aquifer.

    ·     Water Extraction Licenses for various places (which are at least as distant from each other as are Hepburn and Daylesford) along the above basalt aquifer which show that the aquifer is treated as one entity by the licensing authority

    ·      Internet pages which show that a company called Daylesford Region Spring Water Pty Ltd is located at Tylden.[6]  I note that Tylden is 28 kilometres by car from Daylesford.

    · Material which shows that Mount Franklin branded mineral water does not necessarily come from Mount Franklin (there are at least three Mount Franklins in Australia, one in the ACT, one in Victoria near Hepburn Springs, and one in Tasmania).

    ·     Material which shows that Snowy Mountains branded mineral water comes from the Mount Macedon Ranges in Victoria.

    [6] accessed 4 February 2015.

20. I will mention now that the Opponent uses a trade mark which is owned by Mr Mitchel Watson (who made a declaration in support of the opposition) and his business partner.  Details of this registration are:

    Registration No:  1138076
    Priority Date:  29 September 2006

    Goods:Class 32: Mineral water; flavoured mineral water; table waters, including flavoured table waters, from mineral springs

    Trade Mark:  

    Section 41

21. Section 41 of the Act provides:

    41Trade 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.

    Note:For goods of a person and services of a person see section 6.

    (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; or

    (b)    the time of production of goods or of the rendering of services.

    Note 2:For goods of a person and services of a person see section 6.

    Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

    (5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

    Note 1:For applicant and predecessor in title see section 6.

    Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

22. The initial step in the consideration of section 41 of the Act is to assess the inherent adaptation of the Trade Marks to distinguish the Goods of the Applicant from those of other traders. The classic statement concerning the assessment of inherent adaptation within a trade mark is that by Kitto J in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at [5]:

    That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

23. While the Opponent argues, and the Applicant concurs, that the word ‘Daylesford’ in the Trade Marks lacks any inherent adaptation to distinguish, this is by no means means fatal to the Trade Marks which must be considered as wholes.  I paraphrase what I recently stated in Barossa Valley Estate Pty Ltd v Australian Vintage Limited [2015] ATMO 70 (‘Barossa’) at [16]:

    I agree with the Opponent that the word ‘Daylesford’ lacks any inherent adaptation to distinguish the Goods of the Applicant from those of other traders.  I also agree that the material other than the Crown Device may lack inherent adaptation to distinguish the Goods of the Applicant.  However, the Opponent’s evidence does not show, nor does the Opponent explain, why other traders would honestly need to use the particular combination in respect of their similar goods in the form that they are rendered within the Trade Marks.

    It is very difficult to understand how another trader could, without improper motive, alight upon the particular combination and graphical arrangement of the elements which form the Trade Marks to use in respect of similar Goods.  This does not appear to be a realistic likelihood.

    Viewed in this light, the Applicant’s rights arise in the combination of elements and the manner in which they are presented rather than the word ‘Daylesford’.  The principle here is the same as that in Diamond T Motor Car Co’s Appn (1921) 38 RPC 373 where it was observed by Lawrence J of the Diamond T (Logo) trade mark which appears below the following quote that:

    In order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves.

1. The trade marks under consideration here are in likewise situation to both the Diamond T trade mark, above, and the trade mark under consideration in Barossa.

2. Accordingly, in my consideration, the Trade Marks have sufficient inherent adaptation to distinguish such that the provisions of subsection 41(2) do not apply and that, accordingly, the Opponent has not established the ground under section 41.

   Subparagraph 42(b) and Section 43

3. Subparagraph 42(b) and section 43 of the Act respectively and relevantly provide:

   42Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   […]

   (b)its use would be contrary to law.

   43Trade 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.

4. Here the Opponent alleges that use of the Trade Mark would be contrary to law because it would constitute conduct “likely to mislead or deceive”, contrary to section 18 of the Australian Consumer Law (‘the ACL’), being Schedule 2 of the Competition and Consumer Act 2010, the successor to section 52 of the Trade Practices Act 1974 (‘the TPA’). Section 18 of the ACL provides that ‘A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.’

5. The Opponent also submits that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 43 of the Act.

6. I note that more is required to establish a likelihood of ‘misleading or deceptive conduct’ than is the case with the standard ‘likely to deceive or cause confusion’ under subparagraph 42(b) of the Act. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd, (1982) 1A IPR 684 at 688 Gibbs CJ noted with respect to s 52 of the TPA:

   In McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

7. It follows that consideration of the ground under subparagraph 42(b) would be superfluous because if the Opponent cannot establish its ground under section 43 of the Act then neither can it establish its ground under the higher standard of section 18 of the ACL.

8. Accordingly, I will consider only the ground under section 43 as, if it is made out by the Opponent, there is no requirement to consider the ground under subparagraph 42(b) and, if the ground under section 43 is not made out, then neither could be the ground under subparagraph 42)(b).

9. I will commence my consideration of this ground by reiterating that any ground of opposition can only succeed if I am satisfied on the balance of probabilities that it has been established.  Therefore I can only find that the Opponent has established its ground if I am satisfied that the opposed trade mark contains a connotation such that the use of the Trade Marks is likely to deceive or cause confusion.  If I did find the ground to be established, it appears to me that the most appropriate courses would be to either make it a condition of registration that the Trade Marks be used only in relation to Goods originating in Daylesford or that the Applicant restrict its Goods to those originating in Daylesford.

10. The Opponent submits:

    There are a number of mineral spas within the township of Daylesford itself – See Exhibit MW-2. They are named Central A, B and C, Hard Hills, Wagga, Sutton, Tipperery, Jubilee Lakes, Sailors Falls A and B, Sailors Creek, Bagnalls (Black Jack), Deep Creek, Tola, Brandy Hot and Corinella - See Exhibit MW-2 - Contents of pages of 1st document.

    However, there are many other mineral spas or mineral springs adjacent to other towns in the Central Highlands - See Exhibit MW-2.

    Daylesford is merely one town in the Central Victorian Mineral Springs Groundwater Management Area - See Exhibit KJS-9, p. 1 and Figure 1. The properties of mineral water from mineral spas varies from spa to spa - See Exhibits KJS-9, pg. 5 and Figure 2. It is not accurate or appropriate to refer to the “Daylesford Region” as encompassing any more than the township of Daylesford and its immediate environs.

11. However, the Exhibit[7] to which the Opponent refers me does not support its contention that the properties of mineral water from mineral spas varies from spa to spa within the Daylesford, Trentham, Kyneton, Malmsbury and Woodend area.  In my view, the relevant passage concerns the Basalt aquifer to which I have already referred:

    [7] Central Victorian Mineral Springs Groundwater Management Area Local Management Plan dated July

    There are five main aquifers in the CVMS GMA, namely: Ordovician sedimentary bedrock; granite; deep leads, basalt and shallow alluvial (SKM, 2011 a). A summary of the understanding of the groundwater system is provided in Figure 2.

    Ordovician sedimentary bedrock

    The Ordovician sedimentary bedrock aquifer comprises fractured sandstones siltstones and mudstones and dominates the surface geology of the Central Victorian Mineral Springs GMA. The bedrock aquifer comprises two types of groundwater flow systems: shallow local systems with short flow paths up to a few kilometres, and deeper systems that include those that host carbonated mineral water with flow paths extending up to 40 km from the Great Dividing Range. Yields from the bedrock aquifer are typically low and groundwater salinities are low in the south and become higher in the north.

    Granite

    Granite outcrops in the north of the region around Maldon and Harcourt and east of Kyneton. The granite is a comparatively poor aquifer in the area with low yields and variable groundwater salinity, but it can provide useful domestic and stock supply.

    Deep leads

    The deep leads are unconsolidated sands and gravels of ancestral streams that are buried beneath basalt around Trentham, Malmsbury, Kyneton, Daylesford and Guildford. The deep leads have been mined in some places for gold, leaving behind open mine voids. Higher yields can be achieved locally from the deep lead aquifer and the groundwater salinity is usually low. The deep leads tend to be quite narrow and difficult to locate. They are also mostly overlain by thick basalt which commonly yields sufficient groundwater supply to meet domestic and stock requirements or small-scale irrigation needs. Therefore, to date there is little groundwater extraction from this aquifer in the GMA.

    Basalt

    Basalt, which can be up to around 100 m thick, is found around Daylesford, Trentham, Kyneton, Malmsbury and Woodend. The basalt aquifer is occasionally capable of producing moderate yields (of the order of 1 MUday) but lower yields are more common. Groundwater quality is generally very good. Most licensed extraction is from the basalt aquifer.

    
    

    Shallow alluvial

    Shallow alluvial aquifers, comprised of sand, silt and clay occupy valleys along present day streams and are likely to be well connected to waterways. These aquifers are relatively thin, with a maximum thickness of around 10 m. There are very few bores developing these aquifers due to their limited extent and dominantly clayey nature.

    [Stress added]

12. It is much more probable than not that the problems alluded to in the passages stressed with italics and underlining above dictate that almost all of the water extraction for commercial mineral water is or will be from the Basalt aquifer as is acknowledged by the bolded passage, above.  In view of this, the mineral water which is bottled by the parties and others in the Daylesford area is likely to come from a geological common source and be of a uniform composition.  The extraction licenses appended to the Sinclair declaration appear to confirm the commonality of source.

13. I note also that the passage under the heading Basalt refers to bottlers ‘around’ Daylesford, Trentham, Kyneton, Malmsbury and Woodend.

14. Further, the evidence shows that at least one other bottler who is not bottling in Daylesford identifies itself as being in the Daylesford region: Daylesford Region Spring Water Pty Ltd is located at Tylden.

15. Additionally, if the Opponent’s argument held true, it should not have registered its own trade mark (which contains the words ‘Daylesford’ and ‘Hepburn’) without either restricting its own specification to waters from those sources or entering an endorsement that its trade mark not be used on goods other than those from ‘Daylesford’ and ‘Hepburn’.

16. Having regard to all of the above factors, I am not satisfied that the Opponent has established that the use of the Trade Marks would confuse or deceive because the origin of the Goods is within the Daylesford area rather than from within Daylesford itself.

17. The Opponent has not established its ground under section 43 of the Act (and thus cannot establish its ground under subparagraph 42(b) of the Act.)

    Decision

18. Subsection 55(1) of the Act provides:

    55Decision

    (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:For limitations see section 6.

19. The Opponent has not to any extent established a ground of opposition.

20. The trade mark application may then proceed to registration 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 the appeal has been decided or discontinued and the disposition of the application be in accordance with the Court’s order or direction.

    Costs

21. Both parties sought their costs and since the Opponent did not establish its opposition, it is appropriate that I award costs against it at the scale set out in Schedule 8 to the Regulations.

    Iain Campbell Thompson
    Hearing Officer
    Trade Marks Hearings
    29 October 2015

    
    

2013