De Bortoli Wines Pty Ltd v Donald Edward Brown, Glenda Maureen Brown, Susanne Jayne Schreier, David Robert Brown and Andrew Donald Brown Trading as Donald Brown & Co (SA)

[2002] ATMO 98

TRADE MARKS ACT 1995

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

Re:Opposition by De Bortoli Wines Pty Ltd to registration of trade mark application 809540(33) - MELBA - filed in the name of Donald Edward Brown, Glenda Maureen Brown, Susanne Jayne Schreier, David Robert Brown and Andrew Donald Brown trading as Donald Brown & Co (SA).

Date of Decision:

29 October 2002

Delegate:

Hearing Officer Geoff Purvis-Smith

Representation:

Opponent - Mr John Lyons QC instructed by Eales and Mackenzie

Applicant - Mr Barry Hess instructed by Madderns Patent and Trade Mark Attorneys

Decision:

Application to admit additional evidence refused

ss.42(b), 43, 44, and 58 grounds dismissed

s.60 ground successful

Registration of trade mark refused

Applicant to pay the opponent's costs

Background

On 7 October 1999, the applicants applied for registration of the following trade mark:

The application sought registration in relation to wines in Class 33.

The application was accepted for registration and advertised in the Australian Official Journal of Trade Marks on 28 September 2000.  The following endorsements were applied to the trade mark:

When the trade mark is used for items in the specification of goods having an alcohol content other than 13.5% Alc/Vol, the wording 13.5% Alc/Vol in the trade mark will be changed to accord with those other items.

It is a condition of registration that, where the trade mark is used on goods other than CHARDONNAY, the word CHARDONNAY in the mark will be changed to accord with those items.

It is a condition of registration that the trade mark will only be used in relation to wines originating (as defined in the Australian Wine and Brandy Corporation Act 1980) in the area in respect of which the geographical indication PADTHAWAY is registered and that the use is in accord with the Australian Wine and Brandy Corporation Act 1980.

On 21 December 2000, the opponents lodged a notice of opposition to registration. 

The matter eventually came before me, as Delegate of the Registrar of Trade Marks, for hearing in Melbourne on 21 and 22 May 2002.  The applicants were represented by Mr Barry Hess of counsel, instructed by Madderns Patent and Trade Mark Attorneys.  The opponent was represented by Mr John Lyons QC, instructed by Eales and Mackenzie.  For reasons set out later in this decision, further submissions were taken from the parties in relation to additional evidence.  The last submission was made on 29 July 2002.

Preliminary Matters

At the conclusion of the opponent's primary submissions, the applicant, through its representatives, sought to rely on material which had not been filed or served during the evidentiary stages leading up to the hearing.  The material comprised a statutory declaration made by Ms Leanne Marie De Bortoli on 21 December 1995 in relation to another trade mark application (Application Number 672406). 

The material was lodged at the hearing on the basis that it could be admitted as further evidence pursuant to Reg.5.15(1)(b) of the Trade Mark Regulations 1995, or was material that I was entitled to have regard to pursuant to Reg.21.15(8).

No prior warning was given to the opponent of the applicant's intention.  The first notice that the applicant provided was when it handed its written outline of submissions to the opponent just prior to the luncheon adjournment on the first day of the hearing.  This was despite the fact that the applicant's solicitor had contacted me by telephone on the day prior to the hearing, and requested that I bring the relevant file for application 672406 to the hearing.  During the course of two telephone conversations, I asked the applicant's solicitor whether he intended notifying the opponent of this new material, prior to the hearing.  He indicated that he did not propose to do so, but would reassess this position.

Upon the hearing resuming after the luncheon adjournment, the opponent strenuously objected to the material.  I informed the applicant that, in order for me to consider the material, an application for leave to file further evidence would be required, as I did not believe that Reg.21.15(8) was an appropriate means of bringing this new material into my consideration.

On 29 May 2002, the applicant lodged its application for leave to file further evidence, supported by a declaration of Mr Craig Vinall, the applicant's solicitor, dated 29 May 2002.  The opponent made written submissions in relation to the application on 14 June 2002, under cover of letter dated 12 June 2002.  The applicant then responded on 17 July 2002.  I received the final submissions of the opponent on 29 July 2002.

The declaration of Mr Vinall indicates that he first received a copy of the Ms De Bortoli's declaration in August 1998 following correspondence from the opponent relating to alleged trade mark infringement.  The material was not referred to again by Mr Vinall until April 2002, at which time he had commenced preparing for the hearing in this matter.  Mr Vinall does not mention in his declaration that he spoke to me several times in the days prior to the hearing, nor does he mention that he advised me of his intention to rely on Ms De Bortoli's declaration. 

On the basis that the applicant knew prior to the hearing that it intended to rely on, or bring to my attention, Ms De Bortoli's declaration, and failed to inform the opponent of this intention until such time as the opponent's primary submissions had closed, I find that, irrespective of the intention of the applicant's representatives, the opponent was likely to be, and was in fact, taken by surprise.  I am satisfied that it would be unfair to the opponent to take the material into account, and amount to an unwarranted condoning of the course of conduct adopted by the applicant.  Therefore, to consider the material would not be reasonably appropriate as required by Reg.21.15(8).  The material therefore, will not be considered as part of my decision pursuant to Reg.21.15(8).

I am satisfied, for similar reasons, that the application for leave to file further evidence should be refused.  An application filed at or after the hearing is undeniably a late application.  There appears to be no substantial or persuasive reason why the evidence should be allowed in at such a late stage.  The fact that the evidence was first received and reviewed by Mr Vinall in August 1998 suggests a lack of thoroughness in the preparation of evidence for this matter.  April 2002 was simply too late to be reviewing material that might be relevant at the hearing scheduled for the following month.  The material should have been reviewed during the course of the evidentiary process.  Therefore, I believe that the applicant was tardy in its preparation, and that it would be inappropriate to allow the extension of time.

Accordingly, I have not taken the statutory declaration of Ms De Bortoli dated 21 December 1995 into account in making my decision.

Evidence to be taken into account

The following evidence was properly filed and served, and has been taken into account in making my determination:

Name	Date	Exhibits	Referred to
Evidence in Support
Darren Vittorio De Bortoli	19.03.01	DDB1-DDB55	De Bortoli 1
David William Scott	20.03.01	Scott
Peter Cassimitas	21.03.01	Cassimitas
Edward George Kidd	14.03.01	Kidd
Peter Kevin Mathews	15.03.01	Mathews
Anthony John Hitchin	20.03.01	Hitchin
Deborah Gwen Wray	19.03.01	Wray
Trevor Francis Perrin	20.03.01	Perrin
Michael John Frost	16.03.01	Frost 1
Ian Garry Pearson	19.03.01	Pearson
Trayn Nicola Andonovski	20.03.01	Andonovski
Jonathon Lewis	21.03.01	Lewis 1
Evidence in Answer
Christopher Hugh Hill	16.08.01	CHH1-CHH2	Hill
Susanne Jayne Schreier	27.08.01	SJS1-SJS2	Schreier 1
Jonathon Lewis	26.09.01	JL1	Lewis 2
Kevin John Moore	27.09.01	KJM-A	Moore
Michael John Frost	29.08.01	MJF1	Frost 2
Evidence in Reply
Darren Vittorio De Bortoli	18.12.01	De Bortoli 2
Adriano Riccioni	18.12.01	AR1-AR5	Riccioni
Jeni Lorraine Port	20.12.01	Port 1
Further Evidence
Susanne Jayne Schreier	15.04.02	SJS4-SJS6	Schreier 2
Reply to Further Evidence
Darren Vittorio De Bortoli	22.04.02	De Bortoli 3
Jeni Lorraine Port	06.05.02	Port 2

By way of summary, De Bortoli 1 sets out the history of the opponent, its adoption and use of the expression MELBA in relation to its wines, press coverage of its wines, and steps taken to promote and distribute its wines.  Mr De Bortoli also provides some opinion evidence regarding the wine industry generally, and De Bortoli's wines.

Messrs Scott, Cassimitas, Kidd, Mathews, Perrin, Pearson, Andonovski, Lewis and Ms Wray are all members, in some form, of the hospitality and liquor industries.  Messrs Hitchin and Frost are journalists and wine writers.  Each of the declarants attest to their knowledge of De Bortoli Melba wines, and the practices of consumers in relation to the naming of the product.  Each also provides his or her opinion on the likelihood of confusion if two wines appear with the expression MELBA on their labels.

Messrs Hill and Moore provide similar evidence on the applicant's behalf.  Messrs Lewis and Frost provide additional declarations on behalf of the applicant.  These declarations seek to clarify the circumstances relating to, and the information provided in, their earlier declarations. 

Ms Schreier's first declaration sets out the history of the applicants' business, their adoption and use of the expression MELBA in relation to their wines, and advertising and promotion of their products.  Ms Schreier also makes comments on the evidence in support filed by the opponent.

Mr De Bortoli's second declaration, filed as evidence in reply, attempts to respond to a number of issues raised in the evidence in answer.  Similarly, Mr Riccioni's declaration seeks to answer a number of issues raised by the applicant in relation to the obtaining of declarations filed as evidence in support.  Ms Port is a journalist and wine writer who wrote a number of articles annexed to De Bortoli 1.  Ms Port denies allegations raised in the evidence in answer regarding the preparation of wine reviews and articles, sets out the manner in which she prepares and writes articles, and expresses her opinion regarding the applicant's and opponent's uses of the expression MELBA in relation to wines.

Ms Schreier's second declaration, Mr De Bortoli's third declaration and Ms Port's second declaration all seek to clarify earlier statements or respond to statements made in declarations relied upon by the opposing party.

Grounds of Opposition

The opponent relies on ss.42(b), 43, 44, 58, and 60 of the Trade Marks Act 1995. 

I will deal with each ground in turn.

Section 42(b)

Following the decision of Madgwick J in Advantage Rent-A-Car[1], it is clear that the Registrar is obliged to take into account the operation of laws and legislation other than the Trade Marks Act 1995 when considering s. (42)(b).  In the present case, the opponent submits that the use of the trade mark would amount to a contravention of s.52 and/or s.53(c) of the Trade Practices Act 1974 and/or amount to passing off.  Each of these are matters that can and should be taken into account in determining whether use of a trade mark is contrary to law.

[1] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683

In Advantage Rent-A-Car, Justice Madgwick confirmed that the test to be satisfied was that use would, rather than could, be contrary to law.  Therefore, I am to determine, on the balance of probabilities, and on the basis of a hypothetical case which takes into account all the evidence and submissions before me, whether:

1. in relation to s.52, use of the applied for trade mark on wines would cause, or be likely to cause consumers to be misled or deceived;

2. in relation to s.53, use would give rise to a representation that the wines have a sponsorship, approval, performance characteristic, accessory, use, or benefit which they do not have; or

3. in relation to passing off, the requisite elements of reputation, misrepresentation and damage are made out.

There is a significant amount of conflicting opinion evidence as to the likelihood that consumers would be, or are likely to be, misled as each of s.52, s.53 and passing off require. There is no reason to prefer one party's evidence over the other.  Each of the parties relies on witnesses who have comparable experience, and none have undertaken a studied analysis of the likelihood of consumers being misled. 

I believe that the sum total of this conflicting evidence is that use could, rather than would, mean that one of the specified laws would be breached.  I believe that the likelihood is further reduced when one takes into account that both trade marks have co-existed in the marketplace, apparently without any instances of deception, since the first half of 1998 (De Bortoli 1 para 11 and Schreier 1 para 6).

Therefore, I find on the balance of probabilities that use could, rather than would, lead to a contravention of the law.  Therefore, this ground of opposition fails.

Section 43

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

T.G.I. Friday's Australia Pty Limited v TGI Friday's Inc[2], confirms that the connotation must be in the mark itself, and cannot be determined as the result of external considerations, such as reputation.

[2] [2000] FCA 720

The standard to be applied when testing for deception or confusion was set down by French J in Registrar of Trade Marks v Woolworths[3].  In considering the phrase "likely to deceive or cause confusion", His Honour said:

[3] (1999) AIPC 91-499 at 39,695 (paragraph 43)

The use of the word 'likely' in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial.  There must be a 'real tangible danger of it occurring'.

The Trade Marks Office Manual of Practice and Procedure Part 29 Paragraph 4 states:

If the inclusion of the name or representation is likely to lead the ordinary buying public to the conclusion that the person whose name or representation appears in the trademark, has endorsed the product or services in some way, then a ground for rejection exists unless the applicant has permission to use the name or representation in the trade mark upon the product or in relation to the services specified in the application.  

In George Schmidt v Down to Earth (Victoria) Co-Operative Society Limited[4], Hearing Officer Forno found that deception or confusion might arise by virtue of an implied endorsement or licence of services by a person or organisation.  In Twentieth Century Fox Film Corporation v Durkan[5] (the Braveheart decision), Deputy Registrar Hardie confirmed that it is not necessary for the purposes of s.43 for there to be a competing trade mark in the name of the opponent or at all.

[4] 41 IPR 632

[5] 47 IPR 651

In the present case, the opponent asserts that the expression MELBA, as it forms part of the applicant's trade mark, gives rise to two false connotations - (i) a connotation of connection with the opponent, De Bortoli Wines Pty Ltd; and (ii) a connotation of connection with, or production in, the Yarra Valley.   In order to succeed on this argument, the opponent must establish that not only do these connotations arise, but that the connotations survive a consideration of all the other elements of the applicant's trade mark.

(i) Connotation of connection with the opponent

In order to make out its case on this point, the opponent must satisfy me that the reputation which its MELBA trade mark enjoys is such that consumers will, when presented with another bottle of wine which incorporates the expression "Melba",  presume that it is some way associated with the opponent.  For this presumption to arise, I must be satisfied that the name in question has some currency in language amongst the public generally, or in some circumstances, amongst the relevant target market - per Deputy Registrar Hardie in Braveheart and Hearing Officer Forno in the Down to Earth decision, supra.  The relevant  target market here could be described as consumers, purchasers, suppliers and others involved in the wine industry. 

The opponent has filed a significant amount of material which shows use of the expression MELBA in relation to one of its wines.  The material includes a large number of wine reviews, where the wine is referred to in a number of ways: "De Bortoli Melba", "De Bortoli Melba Barrel Select", "De Bortoli Melba Vineyard", "De Bortoli Yarra Valley Melba Barrel Select", "Melba Barrel Select", and "Melba".  There is also declaratory evidence by members of the wine industry as to the propensity of consumers to refer to the wine as "Melba" or "the Melba".  The applicant has filed its own evidence which attempts to contradict the opponent's evidence. This includes declarations from two members of the trade and one journalist - each of whom attempts to clarify their declarations filed as evidence in support.

Taking all the evidence into account, I am not satisfied that the expression "Melba" has gained a currency in language generally, or indeed within the relevant market.  This is, in part, evidenced by the fact that none of the newspaper articles before me refer to "Melba" without also referring to the name De Bortoli.  Such use indicates that the vast majority of writers feel the need to identify what "Melba" is and where it comes from.  This would not be necessary had the expression gained the currency which the opponent alleges.  Further, I am not satisfied that the evidence of the various trade declarants who state that their customers regularly refer to the wine as "Melba" or "the Melba" goes high enough. Rather, I believe that it simply reflects the practice of customers to shorten or simplify the names of wines or dishes when selecting from a menu.  They may also shorten the name when requesting a certain wine from a liquor outlet.  When they do so, this does not mean that the expression in question has achieved a currency in language - it is simply the shorthand manner of requesting a specific item.  While this may be relevant to considerations under other sections of the Trade Marks Act, it is not sufficient to make out s.43.

Accordingly, I am not satisfied that the first element of this ground is made out.  I am not satisfied that the expression "Melba" carried a connotation of connection with the opponent at the relevant date. 

(ii) Connotation of connection with, or production in, the Yarra Valley

The opponent alleges that the applied for trade mark (insofar as it includes the word "Melba") gives rise to a connotation of the Yarra Valley, because of the well known history of, and connection of the Valley with, Dame Nellie Melba.  The opponent relies in this regard on the following declarations and exhibits - Hitchin (paragraph 8), Wray (paragraph 3), Mathews (paragraphs 2 and 5), Kidd (paragraph 2), Pearson (paragraph 3), Andonovski (paragraph 3), and De Bortoli 1 (Exhibits DDB 8, 9 ,13, 15, 18, 21, and 34).  On reviewing these references, it is clear that only Mr Hitchin and Mr Mathews refer to the link between the word "Melba" and the Yarra Valley.  The balance of the declarants link the opponent's wine, which happens to be called "Melba" with the Yarra Valley.  The latter declarations do not assist the opponent in establishing its case on this point - they merely confirm that these people know that the De Bortoli wine is produced in the Yarra Valley.  They make no connection between the word "Melba" and Dame Nellie Melba. 

Exhibits DDB8, 13, 15, and 21 were all articles published in late 1997 or early 1998 and all state that the wine called "Melba" is a "fitting tribute to Dame Nellie Melba, who lived in the Yarra Valley for many years."  Exhibit DDB9 is dated 4 November 1997, and states that the wine was "...named after Dame Nellie Melba who lived in the Yarra Valley for many years".   Exhibit DDB18 is dated 11 October 1998, and states that the wine is a "fitting tribute to opera diva Dame Nellie Melba."  DDB34 was published in February 1999 and states that the wine was named "in honour of the famed soprano Dame Nellie, who had lived in the Yarra Valley for a number of years."

Exhibits DDB45-49, are tasting notes used by the opponent to advertise and promote its wines.  Mr De Bortoli, at paragraphs 13 through 18 inclusive of his first declaration, states that these notes were distributed to various people, including wine writers.  DDB46 comprises the tasting notes for the 1993 vintage, which was released in August 1997.  DDB46 states, after referring to the selection of the name "Melba" for the wine, "Dame Nellie Melba, who for many years was a resident of the Yarra Valley, was a famous opera singer of world wide recognition."

Given the similarity of wording in the newspaper articles, and, in turn, their similarity to the tasting notes issued by the opponent, I am satisfied, on the balance of probabilities that the authors of the articles were relying on the information supplied by the opponents, rather than their own knowledge of the link between the name of the wine, the Yarra Valley and Dame Nellie Melba.  At best therefore, the evidence suggests that a connotation might develop as the result of repetitive use by wine writers of the material issued by De Bortoli and/or the release of the material itself.  However, at the time the articles were written, no such connotation existed.  There is nothing before me which suggests that the situation had changed by the time the application was filed.  Therefore, while some people may have been cognisant of the connection between the name of the wine, the Yarra Valley, and the opera singer, I am not satisfied that this was sufficient to give rise to the requisite connotation.  I am not satisfied that a reasonable number of people, when they saw "Melba" on a bottle of wine at or before the priority date would have presumed that the product came from the Yarra Valley, or was connected with the region in which Dame Nellie Melba had lived for many years. I believe that the likelihood of the presumption being made is even less likely when the whole of the applied for trade mark is taken into account , particularly as it refers to Padthaway and informs the purchaser that it is a product of South Australia.  Therefore, this argument must also fail. 

Given my findings in relation to the two alleged connotations, there is no need for me consider whether the applicant's use of MELBA in its mark is likely to cause deception or confusion in contravention of s.43.

Section 44

Section 44(1) provides that a trade mark may be refused registration if it is substantially identical with, or deceptively similar to, a registered or applied for trade mark which:

·     covers the same goods or closely related services; and

·     has an earlier priority date.

Subsections 44(3) and (4) provide that registration may be allowed, notwithstanding that the trade mark falls foul of s.41(1), if it can be shown that there has been honest concurrent or prior consistent use of the relevant trade marks, or other special circumstances exist.

Section 10 confirms that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

In the present case, the opponent relies only its registered trade mark - DE BORTOLI MELBA (trade mark number 672406).  The priority date for 672406 is 18 September 1995, which predates the current application by more than two years.  The relevant goods are table wines in Class 33.  The opponent asserts that the applied for trade mark is deceptive similarity to 672406.  It does not allege substantial identity.

I am satisfied that the goods covered by the opponent's registration and the current application are virtually identical.  I make this finding on the basis of the notional use of the trade marks, rather than any use to date.  I am also satisfied that 672406 has an earlier priority date.  Therefore, the consideration becomes one of whether the applied for trade mark is deceptively similar to 672406.

The tests for deceptive similarity are the familiar ones, laid down in Shell Co. v. Esso Standard Oil[6], Australian Woollen Mills Ltd v FS Walton & Co Ltd[7], and Re Application by the Pianotist Co Ltd[8].In Shell, Windeyer J said at 415:

[6] (1963) 109 CLR 407 at 415 per Windeyer J

[7] (1937) 58 CLR 641 at 658 per Dixon and McTiernan JJ

[8] (1906) 1A IPR 379 at 380; 23 RPC 774 at 777 per Parker J

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is the question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It 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 television exhibitions.

In Australian Woollen Mills, their Honours Dixon and McTiernan JJ said at 658:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.

The application of the tests to the 1995 Act has been confirmed French J in Registrar of Trade Marks v Woolworths[9]at paragraph 50 where he stated:

[9] [1999] FCA 1020

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

Similar tests were confirmed in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, 245-6.

Here, the relevant trade marks share a common element - "Melba".  While each contains other elements, the opponent asserts that "Melba" is the essential element of the trade mark.  In other words, it is the aspect that will be recalled by consumers, rather than the other elements of the marks.  Given this argument, it is useful to note the elements of each of the marks.  The applied for trade mark, moving from top to bottom, contains:

1.    Brown's of Padthaway;

2.    A diamond shaped graphic;

3.    Donald Brown and Family, with heraldic Crest;

4.    Padthaway;

5.    [The variety of wine (eg Chardonnay)];

6.    Family Reserve;

7.    Melba;

8.    Estate Grown;

9.    Produced by Donald Brown & Family, Padthaway, South Australia; and

10.   750 ml         Product of Australia       [Alcohol content]

The opponent's trade mark comprises:

1.    De Bortoli Melba

In submitting that "Melba" is the essential element of the trade mark, the opponent directed me to the following cases: 

• De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-106

• Polo Textile Industries Pty Ltd  v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227, 231-2

• Sporoptic Pouilloux SA v Arnet Optic Illusions Inc (1995) 32 IPR 430, 433

• Cole v Australia Char Pty Ltd (1994) 30 IPR 151

• R & C Products Pty Ltd v Bathox Bath Salts Pty Ltd (1991) 21 IPR 547

• Companhia Souza Cruz Industria E Comercia v Rothmans of Pall Mall (Australia) Ltd (1988) 41 IPR 497, 503

In De Cordova, the dispute was whether the expression "Karsote Vapour Rub" infringed the registered trade mark "Vicks VapoRub Salve".  Lord Radcliffe said, at 105-106:

"...but a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features.  The identification of an essential feature depends partly on the Court's own judgment and partly on the burden of the evidence that is placed before it.  A trade mark is undoubtedly a visual device; but it is well-established law that the ascertainment of an essential feature is not to be by ocular test alone.  Since words can form part, or indeed the whole of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another reader, for confusion is likely to result... [T]heir Lordships think that 'VapoRub' must be treated as an essential feature [of the trade mark], and that the Appellants have infringed the mark by selling their ointment under the designation 'Karsote Vapour Rub'; for the word 'Karsote' prefaced to 'Vapour Rub' is quite insufficient in itself to dissolve the confusion that is bound to arise from associating the Appellants' goods with a word so distinctive as 'Vapour Rub'."

The findings of Lord Radcliffe were applied by Burchett J in the Polo case. In doing so however, his Honour was called upon to consider whether the word "Polo" solus, had been infringed by "Polo Club". He found, at 232, that "it is plain that the word 'Polo' must be an essential feature of the [registered owner's] mark, since it is the whole of the mark." [emphasis added].

In the present case, "Melba" is not the whole of the opponent's trade mark.  Its trade mark is DE BORTOLI MELBA.  Nor is it an invented word or phrase like VapoRub or Vapour Rub.  Irrespective of its origins in the present case, "Melba" has a recognised use as a name in Australian culture - in the opponent's case, it is a famous surname, and in the applicant's case, it is the first name of a member of their family.  Accordingly, it does not immediately strike me as essential feature of the mark.  To determine whether it is the essential or memorable feature of the mark requires me to assess it in light of the elements that accompany it and the practices of consumers or members of the liquor and hospitality industry.  Some assistance is provided by the balance of the cases to which the opponent referred.

In the Sporoptic decision, where the trade marks in question were "Vuarnet" and "Arnet Optic Illusions" Deputy Registrar Hardie considered that the overlap occurred in the use of "arnet", that this element dominated the applied for mark, and therefore, would be the focus of answering the question of whether the allegation of deceptive similarity would be made out.  However, again, the expressions in question were invented words.

In Cole, the issue was whether the expression "beads" in the applied for trade marks "Hotrox Heat Beads" and "BBQ Beads" meant that these were deceptively similar to the registered trade mark "Heat Beads".  Hearing Officer Hohman found that because "beads" was not common to the trade, it was likely to lead to consumers wondering as to whether the applicant's goods came from the same source as the registered owner's.

In R&C Products, Assistant Registrar Farquhar was called on to compare the applied for "Bathtox Bath Time" with "Lorelene Bath Time".  Ms Farquhar found that the expression "Bath Time" was not common to the trade, and as a result, was capable of being perceived as a trade mark.  The marks were held deceptively similar.

Finally, in Compahnia Souza Cruz, Justice Wilcox was called upon to determine whether a trade mark for cigarettes which comprised the word "Free", and a crest of coat of arms was deceptively similar to the registered "Freedom" trade mark of the Federal Court applicant.  His Honour found that the use of a coat of arms or crest device was a common practice, and that the claim of deceptive similarity was made out.  His Honour also placed significance on the normal method of retailing of cigarettes, and the resulting reliance on aural use of the trade marks.

Notwithstanding that these cases were all determined under the now repealed Trade Marks Act 1955, the cases are useful in setting out the types of considerations to be taken into account in assessing what is the essential or memorable feature of the mark.

Before I turn to my assessment of whether the marks are deceptively similar, I believe it is useful to set out my impressions regarding what is common in the trade, and the normal method of selling or supplying wines.  I believe, and have seen nothing to contradict my belief, that the normal method of selling or supplying wines includes both aural and visual cues. 

I believe that consumers, when purchasing wine from liquor outlets will look for a label first, and then the variety or specific name of the wine.  In the present case, I believe that purchasers, when using their imperfect recollection, will look for the applicant's diamond logo, then the variety of wine, and then the specific name of the wine - in this case "Melba".  I am not satisfied that they would look for the "Brown's of Padthaway".  In the opponent's case, taking into account that its trade mark is DE BORTOLI MELBA, I believe that they will look for the "De Bortoli" name, and then for "Melba". 

On the other hand, I believe that when orders are placed aurally - either by retailers ordering supplies or by customers in restaurants, they are likely, due to their imperfect recollection and the accepted need to be somewhat specific when ordering wine (due to the large number of varieties and producers), to ask for "Brown's Melba" or "De Bortoli's Melba".  I believe that this is the normal, shorthand version that people usually use when ordering wine when they are presented with both trade marks in the one list. 

On this basis, I am not satisfied that the expression "Melba" is the only memorable element of the marks in question.  Nor am I satisfied that it is the essential element of the applicant's trade mark.  I am not satisfied that consumers will only look for the "Melba" element, and thereby be caused to wonder whether the two products come from the same source, and in turn, be deceived or confused in the requisite manner, at least insofar as I am to consider the opponent's DE BORTOLI MELBA.  I am satisfied that any initial confusion that might arise is clarified in the applicant's case by the additional memorable elements, including "Padthaway" and "Browns of Padthaway".  While these might be aspects that are common to the trade or even legally required, they are an important element in the selection and ordering of wine.  As a result, I am not satisfied that there is a real tangible danger of deception or confusion occurring. 

This ground of opposition therefore fails.

Section 60

Section 60 provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

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

(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

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

Note 1:For deceptively similar see section 10.

Note 2:For priority date see section 12.

There is no requirement in s.60 that the opponent rely on a registered trade mark.  Here, the opponent relies on the common law trade mark MELBA. 

Accordingly the opponent must establish that its trade mark, MELBA:

• enjoyed a reputation as at the priority date;

• that the applied for trade mark is substantially identical with, or deceptively similar to, the opponent's MELBA; and

• that, as the result of the reputation in MELBA, use of the applied for trade mark would cause deception or confusion.

Counsel for the opponent submitted that the weight of evidence regarding the reputation of MELBA was overwhelming.  He specifically referred to the declaratory evidence of members of the trade, together with the declarations of Mr De Bortoli, including the various newspaper articles and promotional activities.  The applicant, for its part, asserts that the evidence is insufficient to show that the requisite reputation had been garnered as at the priority date, and provides some evidence to this effect.

There is some merit in the applicant's argument.  However, I believe that the evidence of the trade declarants tips the balance of probability in favour of the opponent.  While the declarants made their declarations well after the priority date (ie March 2001 and August 2001) and without specifically addressing the reputation as at the priority date, I believe that their intentions were clear.  I am satisfied on the balance of probabilities that the opponent's reputation in the MELBA trade mark commenced with the first release of the wine in 1996 and continued to grow each year, including the year immediately preceding the application.  I am also satisfied, on the balance of probabilities that the wine was referred to as "Melba" or "the Melba" by the application date.  In making these findings, I have taken into account the evidence filed on behalf of the applicant, together with the following specific statements contained in evidence filed on behalf of the opponent:

Declarant	Date	Statement
Scott	20.03.01	I first became aware of the De Bortoli Wines product "Melba" on De Bortoli Wines winning the Jimmy Watson trophy in 1997.  It obtained a high reputation on its first release and has built on that reputation with subsequent vintages...The product has become known by my patrons only as "Melba" or "the Melba", and the word "Melba" in wine circles has become intimately linked with De Bortoli wines.
Cassimitas	21.03.01	The wine "Melba" has obtained a high reputation in wine circles since its first vintage, because of its quality.   It is a super premium wine which has become known to my clients simply as "Melba" or "the Melba" which name is linked unquestionably to De Bortoli Wines.
Kidd	14.03.01	I first became aware of the De Bortoli wine Melba on its release in 1996 of the 1992 vintage...In my experience, that wine has obtained a significant reputation from the time it was first released because of its premium quality, and it has built on that reputation as a prestige premium wine from the Yarra Valley on each release since...clients of mine have called and still call the De Bortoli wine simply "the Melba" or "Melba" without reference to De Bortoli.
Mathews	15.03.01	In my experience the wine has obtained a significant reputation from the time it was released because of its high quality and has built on that reputation as a prestige Yarra Valley wine with each release since then...Our clients refer to the De Bortoli product as "Melba" or "the Melba".
Wray	19.03.01	The "Melba" wine has been a remarkable success story.  Because of its high quality, it achieved a high and extensive reputation almost from its beginning, and certainly by 1997, with the second release.  The De Bortoli product has become known affectionately by my customers as "the Melba"...Even though the De Bortoli name appears on the label, the wine is usually called and asked for by the customers under the name "the Melba" or "Melba".
Perrin	20.03.01	I first became aware of the De Bortoli wine "Melba" when it was released in 1996 and appeared on the product list for the 1992 vintage.  From that time it immediately built up a reputation as a super premium wine.  From my experience, our customers attach the name "Melba" to the De Bortoli product range.
Pearson	19.03.01	...it has had a reputation, since its inception in 1996...I consider the word "Melba" is a strong word and is clearly linked among wine consumers to the De Bortoli range of products, as my customers refer to the De Bortoli product as "Melba" or "the Melba".
Andonovski	20.03.01	Due to the Melba's high quality, it achieved a high and extensive reputation almost from the beginning, and certainly by 1997, with the second release.  The De Bortoli product has become known affectionately by my customers as "the Melba".

I might note that I have placed no reliance on the evidence of Mr Lewis.  This is because while he stated in his declaration of 21.03.01 that that the opponent's wine is "a super premium wine which has become known to my clients simply as 'Melba' or 'the Melba' which name is unquestionably linked to De Bortoli Wines", he states in his declaration of 26 September 2001 that "I personally do not know of any examples of customers referring to the product by the term Melba or the Melba however there is some possibility that this might occur."  The same can be said for Mr Frost.  Whatever the reason for their altered positions, it is unacceptable.  I prefer the evidence of witnesses who have not contradicted themselves. 

I have also considered the applicant's criticisms of the method of collection of these declarations.  However, I am not satisfied that the declarations are contrived or fatally flawed as the result of their similarities.  Therefore, I have taken them into account.

I have also taken into account the balance of the evidence, but find that it does not assist either side greatly in their submissions.  Specifically,

• while the evidence in Exhibits DDB-3 through DDB-39 is impressive, it is not necessarily evidence that the requisite reputation existed at the application date.  Rather, the articles merely demonstrate that the wine was referred to in a significant number of articles over several limited periods.  I was not taken to any article which specifically discussed the reputation of the "Melba" wine at a particular point in time. Nor was there any evidence which indicated that the "Melba" wine enjoyed greater coverage in newspapers than any other wine.  Accordingly, the evidence is of limited assistance in determining the relevant reputation at the relevant time;

• the evidence of promotion is of similarly limited benefit - there is no indication of how much was spent on advertising, what was actually achieved by the sales team mentioned at paragraph 12 of De Bortoli 1, or how many of the tasting notes/promotional leaflets exhibited as DDB-45 through DDB-48 were distributed.  Again, the distribution of price lists suggests that the wine was released, but does not assist the opponent in establishing that a reputation had been garnered; and

• the quantum of sales of the De Bortoli wine is small - however, this does not necessarily mean that the requisite reputation has not been achieved.  The scarcity of a product may in fact enhance its reputation - see for instance, McCormick & Co Inc v McCormick[10].

  [10] 51 IPR 102, 129 per Kenny J

In assessing the relevance and persuasiveness of this additional evidence, I have been guided by the comments of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd[11] where his Honour confirms that, although evidence of advertising and promotion is useful, it is still incumbent upon the person asserting the reputation to establish that the reputation has in fact been garnered in the particular jurisdiction. It is still a question of fact to be determined on the basis of the evidence.  Here, this additional evidence does not satisfy me that the reputation had in fact been garnered.

[11] (1992) 23 IPR 193, 233-234

Having found that the opponent's MELBA trade mark enjoyed the requisite reputation as at the priority date, I must now determine the questions of deceptive similarity and deception or confusion arising as the result of the reputation.

For the reasons I have already set out in relation to s.44, I did not consider that "Melba" was the essential or only memorable feature in either the applied for trade mark or the opponent's registered trade mark. However, it is certainly the essential, memorable feature of the opponent's unregistered MELBA trade mark. This trade mark does not contain the qualification "De Bortoli". Therefore, the impression or recollection which will be carried away and retained by consumers is that of MELBA.

Whether this in turn gives rise to deceptive similarity, must be determined by a consideration of the likelihood that deception or confusion will occur. Applying the decision of French J in Woolworths, the question that must be answered is therefore: are consumers, who have prior knowledge of the reputation of the opponent's "Melba" wine and who come upon a wine carrying the applicant's trade mark, reasonably likely to wonder whether the two products come from the same source? 

It sufficient, that there is a real, tangible risk that consumers will entertain a reasonable doubt.  I am satisfied that there is a real, tangible risk that consumers who have had experience with the opponent's "Melba" wine will be caused to wonder whether there is some connection between the applicant's "Melba" wine, and the opponent. This wonderment is reasonably likely to lead to consumers being deceived into purchasing the applicant's wine.

The likelihood of deception or confusion increases when the relevant reputation is taken  into account.  I am satisfied that consumers will again be caused to wonder whether the applicant's wines share at least some of the attributes for which the opponent's MELBA trade mark has gained its renown. This is in addition to consumers who will be deceived or confused as the result of actual contact with the opponent's wine.  I am satisfied that, based on the reputation of the opponent's "Melba" wine that consumers, when presented with the applicant's "Melba" wine will stop and wonder whether the wine comes from the same entity, or shares the same attributes which have led to the opponent's wine garnering its reputation as a premier wine.  This will, in turn, lead them into deception and there is a real, tangible risk that they will purchase the applicant's wine as a result.

Accordingly, I am satisfied that this ground is made out.

Section 58

Section 58 provides that registration may be opposed on the basis that the applicant is not the owner of the trade mark.

Here, the opponent alleges that it is the first owner of the trade mark MELBA. The applicant's mark, as I have already discussed includes the word "Melba", accompanied by a number of other elements. 

The decision in Carnival Cruise Lines Inc. v Sitmar Cruises Limited[12] confirms that the opponent must show that it used a trade mark that is at least substantially identical to the opposed trade mark, before the application date.  Notwithstanding the submission of counsel for the opponent, I consider that the Sitmar decision remains good law and is binding authority in the present case.

[12] (1994) AIPC 91-049; (1994) 120 ALR 495

I am not satisfied that the opponent's trade mark is substantially identical to the applied for trade mark.  Nor am I satisfied that the opponent's DE BORTOLI MELBA trade mark is substantially identical with the applied for mark.

Therefore, this ground must fail.

Summary and Costs

I have found that the opponent has succeeded on its s.60 ground.  Therefore, I refuse to register the trade mark.

The opponent has sought its costs. Costs normally follow the event, and I see no reason to derogate from this. I direct that the applicant pay the opponent's costs in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Geoff Purvis-Smith

Hearing Officer

Trade Marks Hearings

29 October 2002