Delegat Limited v Comiskey Management Services Pty Ltd as Trustee for NewPub Family Holdings Trust

[2025] ATMO 158

TRADE MARKS ACT 1995

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

Re:Opposition by Delegat Limited to registration of trade mark application number 2375726 (class 33) – OYSTER SHED - in the name of Comiskey Management Services Pty Ltd as Trustee for NewPub Family Holdings Trust

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Justine Beaumont Senior Counsel and Jessie McKenzie of Counsel instructed by A J Park

Applicant: Self represented

Decision:

2025 ATMO 158

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44 and 60 pursued – ground of opposition established under s 60 – registration refused

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Delegat Limited (‘Opponent’) to registration of the following trade mark:

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

Trade mark number	2375726 (‘Application’)
Trade mark	Oyster Shed (‘Trade Mark’)
Applicant	Comiskey Management Services Pty Ltd as Trustee for NewPub Family Holdings Trust (‘Applicant’)
Filing Date	28 July 2023 (‘Relevant Date’)
Specification	Class 33: wine (‘Applicant’s Goods’)

2.       The Trade Mark was examined and advertised as accepted for possible registration on 29 December 2023.

3.       On 26 February 2024, the Opponent filed a Notice of Intention to Oppose the Application. On 26 March 2024, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 4 April 2024.

4.       The Opponent filed Evidence in Support (‘EIS’) on 15 July 2024. The Applicant filed Evidence in Answer (‘EIA’) on 9 October 2024. The Opponent filed Evidence in Reply (‘EIR’) on 13 December 2024.

5.       The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. As a delegate of the Registrar of Trade Marks, I heard this matter via video conference on 23 July 2025. Prior to the hearing, both parties filed a written summary of their submissions. At the hearing, Justine Beaumont Senior Counsel and Jessie McKenzie of Counsel (observed by Dr. Victoria Argyle of A J Park) appeared on behalf of the Opponent. Appearing for the Applicant was Martin Gosper of the Applicant (observed by Robert Comiskey also of the Applicant). I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written and oral submissions of the parties.

Grounds and onus

6.       The SGP nominates grounds of opposition under ss 43, 44 and 60. In the Opponent’s written submissions, the Opponent indicated it was not pursuing the s 43 ground of opposition. I therefore treat this ground as abandoned.

7.       The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities, not beyond reasonable doubt.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

Evidence

1. The parties filed the following evidence in this matter:

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

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

Declarant and Position	Date	Annexures or Exhibits
EIS
Declaration of Megan Amelia Cox, solicitor at A J Park, the Opponent’s legal representatives (‘Cox’)	9 July 2024	MC-1 to MC-14
Declaration of Jonas David Steen, Global Marketing Manager of the Opponent (‘Steen’)	12 July 2024	JDS-01 to JDS-20
EIA
Declaration of Robert Joel Comiskey, Director of the Applicant (‘Comiskey’)	8 October 2024	A to L
EIR
Second declaration of Jonas David Steen, (‘Steen 2’)	13 December 2024	JDS-R1 to JDS-R2
Supplementary Declaration of Jonas David Steen[5]	20 December 2024

[5] This declaration was filed as Steen 2 did not contain an address for the declarant. The contents of this declaration are identical to Steen 2.

Summary of evidence

EIS

Steen

The Opponent

9.       Steen provides a history of the Opponent, a global wine company which was formed in 1947 and is one of New Zealand’s largest family owned and family managed winemakers. The Opponent was incorporated in New Zealand in 1989 and is a subsidiary of Delegat Group Limited (‘Delegat Group’). The Opponent markets wines under three labels – OYSTER BAY, BAROSSA VALLEY ESTATE and DELEGAT. The OYSTER BAY label is claimed to account for over 98% of the Opponent’s total case sales in recent years. OYSTER BAY wines are produced and bottled by Oyster Bay Wines New Zealand Limited, which is a wholly owned subsidiary of Delegat Group. Steen exhibits copies of incorporation documents from the New Zealand Companies Register for the Opponent, Oyster Bay Wines New Zealand Limited and Delegat Group.

10.    The Opponent sells and markets its products through a combination of subsidiaries and distributors in the Australian, United States, Canadian, United Kingdom, Asian, Pacific Island and New Zealand markets and owns the intellectual property rights used by Delegat Group.

Opponent’s registrations

11.    Sheen provides details of seven Australian trade mark registrations (‘Opponent’s Registrations’) which appear in the table below.

Number	Trade mark	Goods	Priority date
638868 (‘868 Mark’)	(‘Label Mark’)	Class 33: Alcoholic beverages in this class including wine and wine-based beverages	24 August 1994
1025132  (‘132 Mark’)	SOMETIMES THE WORLD REALLY IS YOUR OYSTER	Class 33: Alcoholic beverages including wine and wine based beverages	21 April 2004
1073554 (‘554 Mark’)	OYSTER BAY (‘Word Mark’)	Class 33: Alcoholic beverages in this class; wine and wine based beverages	2 September 2005
1230284 (‘284 Mark’)	OYSTER	Class 33: Alcoholic beverages in this class; wine and wine based beverages Class 35: Wholesale and retail services relating to alcoholic beverages including wine and wine based beverages; direct marketing of alcoholic beverages; mail order services relating to alcoholic beverages; selling of alcoholic beverages over the internet or other computer networks; providing information in relation to the selling and marketing of wines Class 43: Wine club services	18 March 2008
1539108[6]	Class 33: Wine; wine based beverages	5 February 2013
1572401	Class 33: Wine; wine based beverages	5 February 2013
1672640 (‘640 Mark’)	Class 33: Wine; wine based beverages	30 September 2014

[6] Series of three marks.

These trade marks will be collectively referred to as the ‘Opponent’s Marks’.

12.    Steen also provides a table of the worldwide trade mark registrations owned by the Opponent.

Use of the Opponent’s Marks

13.    Steen claims the Opponent’s OYSTER BAY sauvignon blanc wine was first sold in Australia in May 1999. At the Relevant Date, the range of wines sold included pinot grigio, chardonnay, pinot noir, merlot, rosé, sparkling cuvée brut and sparkling cuvée rosé (‘Opponent’s Wines’). Sheen provides a table of the Opponent’s Wines as sold in Australia, whose labels I note are in the format of the 868 and 640 Marks.

14.    Sheen exhibits extracts from the 2013, 2017 and 2023 (covering July 2022 through June 2023) Annual Reports from Delegat Group. The reports show:

·2023 - case sales of OYSTER BAY wines remained consistent in the Australia, New Zealand and Asia Pacific region at 692,000. OYSTER BAY remains a top selling or category-leader brand in Australia across sauvignon blanc, chardonnay and merlot categories. OYSTER BAY engaged online with 64 million wine lovers across the globe through various social media platforms, delivering over 780 million impressions, and that OYSTER BAY was also recognised by Impact Magazine as a Blue Chip Brand. Selling, marketing and promotion expenses are listed as $45,837 in 2022 and $38,239 in 2023;

·2013 - historic success of the Oyster Bay brand. Oyster Bay sauvignon blanc was the number one selling bottled wine by value in Australia in 2013 and Oyster Bay achieved leadership in the chardonnay, pinot noir and merlot categories in Australia; and

·2017 - Oyster Bay Sauvignon Blanc was the top selling sauvignon blanc and bottled white wine by value.

15.    Sheen states that the Opponent’s Wines are recognised as a category-leading premium and super premium wine brand in Australia, with premium wine typically sold at a price point between $15-$30.

16.    Sheen attests that the Opponent’s Wines are sold to retailers and wholesalers who then either sell to the customer or distribute to retail and on-premise outlets. The Opponent’s Wines are sold to consumers in various online and physical channels including leading supermarkets, liquor outlets, bars, hotels and restaurants. Key retailers are Dan Murphy’s, Liquorland, First Choice, and BWS. Sheen exhibits Wayback Machine screenshots from the websites of Dan Murphy, Liquorland, Cellarbrations and Bottle O dated variously between 2012 to 2021.

Advertising and marketing

17.    Sheen states that since 1999, the Opponent’s Wines have been advertised and promoted in Australia through a variety of channels including the Opponent’s websites, print media, digital and online media (including social media), billboards, point of sale promotions, events and partnerships providing examples as follows:

·Opponent’s websites at and since 2002 exhibiting Wayback Machine screenshots from 2018 to 2023 and Google Analytics data showing that between 30 June 2022 and 30 June 2023 the website had 56,364 total visitors. I note use of the 132 Mark as early as 2019;

·Facebook and Instagram exhibiting screenshots of posts dated before the Relevant Date. Current follower numbers for Facebook are 47,000 and Instagram are 12,400;

·Targeted paid advertising on social media through newsfeed posts, stories and reels exhibiting a 2020 and 2021 example of Facebook posts;

·Billboards exhibiting examples used in the Opponent’s 2017 campaign in Australia at Flinders Street Station, Melbourne and Martin Place, Sydney;

·Point of sale materials including signage, banners, counter displays, wine cases and retail display units exhibiting as an example, photographs claimed to be from 2021 and 2024 of the Opponent’s Wines displayed in store in Cellarbrations and Liquorland  stores where I note use of the 132 Mark;

·Trade and consumer shows such as the Independent Brands Australia (‘IBA’) tradeshow where the Opponent had a booth in 2022. Sheen exhibits an undated image from the 2022 IBA tradeshow;

·Media articles exhibiting examples of Australian articles reporting on the Opponent and referring to the Opponent’s Wines dated from 2007 to 2017 including in the Sydney Morning Herald and Forbes;

·Awards and certificates for the Opponent’s Wines providing a list of numerous awards won by the Opponent’s Wines from 2019 to 2023 which are mainly overseas awards but include three awards at the Sydney International Wine Competition in 2019. The Opponent’s Wines were also voted fan favourite in the white wine category of the Australian Drinks Association Awards in 2021 and 2022; and

·Point of sale promotions in bar settings including images for digital screens, table cards, wine menu inserts, posters and wine of the month cards exhibiting photographs from five clubs and bars claimed to be from 2018 to 2020.

18.    Sheen declares that in his experience, bars can often be very noisy resulting in bar staff and/or patronage experiencing difficulties in hearing what is being said, and in a restaurant setting where the OYSTER BAY wine is listed on the drinks menu, customers must choose a wine from the menu without first viewing the product itself. In these circumstances, the OYSTER BAY trade mark is easy to remember as the word OYSTER is unusual and has no natural connection to wine.

19.    Sheen exhibits an extract from the 2023 IWSR[7] report which shows that among regular Australian wine drinkers OYSTER BAY has been the number one brand for three years,[8] as measured by brand affinity, being the feeling that a brand is the right brand for the individual consumer.

Revenue and market share

[7] IWSR are the global leaders in data, analytics and insights for the beverage alcohol industry.

[8] Noting that in 2023 OYSTER BAY was joint number one with Jacob’s Creek and Brown Brothers.

20.    Sheen confidentially provides the number of cases of the Opponent’s Wines sold in Australia in 2022 and 2023 and the sales revenue for the financial year 2023, which are both significant.

21.    Steen states that according to IRI,[9] the OYSTER BAY brand accounted for 6.7% by value and 7.3% by volume of total premium still wine sales in Australia for the period June 2022 to June 2023.

[9] Information Resources, Inc (now Circana) a market research and data analytics company.

22.    Steen claims that OYSTER BAY sauvignon blanc has been one of the top selling wines in Australia for the past decade and OYSTER BAY pinot gris is the only wine which has significantly increased in rankings in the past two years.

Cox

23.    Cox exhibits the results of searches of Google, the Opponent’s website oysterbaywines.com/au/ and third party websites conducted in July 2024, limited to Australia and limited to pages that existed before 28 July 2023.

24.    The searches of Google were for:

·(1) The word Oyster together with each of the words sav, brut, sparkling, merlot, pinot, chardonnay, rose. wine, red wine, white wine and bay wine. (2) The phrases or questions: A great oyster white wine, Where can I buy oyster wine?, Where can I buy oyster bay wine?, Wines named after oysters and The best oyster wine. The results show that many if not all the screen captures of the top results refer to the Opponent’s OYSTER BAY wines;

·Which retail outlets sell wine and wine related beverages in Australia by searching for ‘liquor store wine’ and ‘retail outlets sell wine. These results showed that key retail outlets for wine in Australia are Dan Murphy, Liquorland, First Choice Liquor, BWS, Wine Sellers Direct, Liquor Shed and Vintage Cellars (‘Key Outlets’) and that all provide online purchasing options;

·(1) The words Oyster Bay together with the names of the Key Outlets. (2) The word Oyster together with the names of the Key Outlets. The results show many if not all the screen captures of the top results refer to the Opponent’s OYSTER BAY wines; and

·The words ‘Bay’ wine and ‘Shed’ wine. I note the use of Bay in the names of other wine or wineries such as Wineglass Bay, Cloudy Bay, Boston Bay, Okiwi Bay and Pegasus Bay. I also note the use of Shed in the names of other wine or wineries such as Jam Shed, Tin Shed and Hay Shed

25.    The searches of the third party websites were:

·For the word OYSTER on the websites of the Key Outlets which only show the Opponent’s OYSTER BAY wines; and

·Of Coles and Woolworths supermarket websites for the word OYSTER which, other than foods containing oysters or cutlery, show the Opponent’s OYSTER BAY wines.

26.    Cox exhibits details obtained from a Google search of the many awards won by the Opponent for OYSTER BAY wines in Australia and overseas from 2019 to 2024, mentions of the Opponent’s OYSTER BAY wines in online articles in the Sydney Morning Herald (2013), Forbes (2016) and Wine Searcher (2020), availability of third party Oyster Bay gift boxes and hampers dated before the Relevant Date and third party social media posts dated before the Relevant Date.

27.    Cox provides results of searches of the Australian Trade Marks Office database for pending and registered trade marks in class 33 covering wine containing the words BAY and SHED which revealed 167 BAY marks and 21 SHED marks.

EIA

28.    Comiskey states that the Applicant is a family-owned entity which operates hotel and accommodation venues across the greater Brisbane, Queensland area, one of which is the Sandstone Point Hotel (‘Hotel’) located at Sandstone Point, which has a long association with oyster gathering and oyster farming. An oyster shed was built in the early 1900’s on the property where the Hotel is located. This oyster shed was refurbished and repurposed as part of the Hotel and in 2022 it was named the ‘Oyster Shed Beach Club’ (‘Venue’).

29.    Comiskey claims that as the Trade Mark has a long trading association with the Hotel which sells liquor, including wine to its patrons, and this gives rise to a legitimate and genuine reason why the Applicant seeks to register the Trade Mark.

30.    Comiskey declares that the Applicant’s desire is to extend the Trade Mark to wine which is sold by the Applicant to its patrons and provides a proposed example of labelling of the wine which appears below:

31.    Comiskey states that the Applicant is aware of the Opponent’s Wines but believes that the Trade Mark will not create any confusion among its wine consuming patrons.

32.    The remainder of Comiskey consists of comments and opinions on the EIS which do not constitute evidence and have no probative value, together with information and materials which have no relevance to the matter before me.

EIR

33.    Sheen 2 states that the Opponent does not object to the Applicant’s current business at the Venue nor the manner of use of the Trade Mark by the Applicant for the past 8.5 years.

34.    Sheen 2 attests that the Opponent views the word OYSTER as a standalone brand that is critical to the Opponent’s business, exhibiting a screenshot of a social media promotion dated after the Relevant Date.

35.    The remainder of Sheen 2 consists of comments and opinions on Comiskey and as such they do not require summarisation.

Discussion and reasons

Section 60

1. The provisions of s 60 are reproduced below:

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

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

   Note:          For priority date see section 12.

2. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

3. The SGP identifies the 284, 554 and 868 Marks as the trade marks supporting this ground of opposition. As a preliminary observation, each trade mark must be considered and assessed separately for the purposes of s 60.[10]

   [10] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [89] (O’Bryan J) (‘Rodney Jane’); Qantas Airways Ltd v Edwards [2016] FCA 729, [160] (Yates J) (‘Qantas Airways’).

   Reputation

4. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’ and includes the credit, image and values projected by the trade mark.[11]

   [11] [2000] FCA 1335, [81] (‘McCormick’).

1. Further, Kenny J stated in McCormick that:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[12]

   [12] Ibid [86].

2. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[13]

   [13] [2019] FCA 923, [83] (O’Bryan J).

3. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[14] Here given the parties’ goods are wine, the relevant market is likely to include most Australians over the age of 18. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[15]

   [14] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   [15] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57].

4. The Opponent submits that the evidence establishes that since well before the Relevant Date, the Opponent has enjoyed a very substantial reputation in Australia in the 284, 554 and 868 Marks, and in the Word Mark in particular. The Applicant submits that the Opponent does not have a significant reputation in the Label Mark or the Word Mark as the sales figures provided by the Opponent relate to sales in Australia, New Zealand and Asia Pacific and there are no marketing and advertising figures. The Applicant submits that if a reputation does exist, such a reputation is limited to the Label Mark and not the Word Mark, which is consistently incorporated within the Label Mark in all the Opponent’s public branding.

5. The Opponent’s evidence shows significant use of both the Word Mark and the Label Mark in Australia for a number of years. Further, in respect of the Label Mark, the evidence shows it is the wine label used on the Opponent’s OYSTER BAY wines. As such, while I agree with the Applicant that the Label Mark appears on all the Opponent’s Wines, I do not agree that the Opponent’s reputation is limited to the Label Mark. On the contrary, I am satisfied that each of the Word Mark and the Label Mark had the necessary reputation at the Relevant Date. I am not however satisfied that the 284 Mark had the necessary reputation at the Relevant Date. As s 60 requires I consider one earlier mark (or at least, one mark at a time), for present purposes, it is sufficient that I focus the enquiry on the Word Mark.

6. On the basis of the evidence provided by the Opponent, I am satisfied that at the Relevant Date, the Word Mark had acquired a reputation in Australia amongst a significant number of consumers in respect of wines. The reputation enjoyed by the Word Mark can be readily inferred from the extensive Australian sales figures and case sales disclosed, including in annual company reports, the very high percentage of the Opponent’s case sales which are attributable to OYSTER BAY wines, OYSTER BAY wines impressive percentage of premium still wine sales in Australia, together with the many different forms of advertising and marketing activities detailed in the Opponent’s evidence including print media, the Opponent’s websites, billboards, awards, in-store promotions, third party websites and social media.

7. Further online wine retailers prominently display the Word Mark when referencing the brand name of the Opponent’s Wines.[16] The Word Mark is also used in the description of the wines online as well as in the multitude of brick and mortar wine retail outlets Australia wide.[17]

   [16] Steen Exhibit JDS-05.

   [17] Ibid Exhibit JDS-06.

8. Accordingly, as I am satisfied that the Word Mark has a reputation in relation to wines in Australia before the Relevant Date, pursuant to s 60(b), consideration must now be given to whether, because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

   Likely to deceive or cause confusion

9. The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:

   “Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[18]

   [18] [1979] RPC 410, 423 (citation omitted).

10. The likelihood of deception or confusion must be real and tangible.[19] The test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient ‘if people would have cause to wonder’ whether the Applicant’s Goods appearing in relation to the Trade Mark were being provided by the same person as the owner of the Word Mark.[20] To this end, it has been observed that ‘the threshold for confusion is not high’[21] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[22] There is no limit to the nature of the confusion, and it is sufficient to cause confusion if the minds of the public are merely perplexed or mixed up as to the relationship between the two.[23]

    [19] Southern Cross (n 4).

    [20] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).

    [21] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).

    [22] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).

    [23] Coca-Cola Company v All-Fect Distributors Ltd (1999) 47 IPR 481, citing Pioneer Hi-Bred v Hy-Line Chicks [1979] RPC 410, 423.

11. There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of the Act. Nevertheless, it has been observed that:

    Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[24]

    [24] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 (Hearing Officer Lyons), [39] (emphasis in original). See also Qantas Airways (n 10), [142].

12. In summary, here the assessment of the likelihood of deception or confusion is informed by the strength of the reputation of the Word Mark, the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods of the parties. Each of these is a variable. Further, the relevant comparison is between the reputation of the Word Mark derived from actual use of that mark, and a notional normal and fair use of the Trade Mark in respect of wine.

13. The Opponent submits that there is a real tangible danger of deception or confusion in relation to the use of the Trade Mark having regard to:

    ·The clear aural and visual similarities between Oyster Shed and the Word Mark;

    ·The replication of the dominant feature OYSTER is not overcome by the different, comparatively less important and less prominent second word SHED and BAY, which give rise to a similar idea when used in collocation with ‘Oyster’, both invoking ideas of bodies of water and/or locations or experiences inextricably linked or proximate to bodies of water;

    ·The extent of the Opponent’s sales and marketing in Australia of the Opponent’s Wines sold under or by reference to the Word Mark is such that the Word Mark occupies a unique place in the minds of Australian wine consumers;

    ·The word OYSTER is emphasised in the Opponent’s marketing and promotion e.g. use of the 132 Mark;

    ·The Opponent’s reputation is not tied to a geographical location as Oyster Bay is a notional place, not a wine growing area and would be perceived by consumers as a brand; and

    ·The Applicant’s Goods are wine.

14. The Applicant submits that:

    ·     If the Opponent has reputation in the Word Mark consumers will not be confused;

    ·     The word Oyster is not inherently distinctive and may evoke geographic locations (e.g., Oyster Bay in New Zealand) or descriptive qualities (e.g., coastal or seafood-related imagery) common in the food and beverage industry;

    ·     Consumers associate the Word Mark with a premium New Zealand wine, not with oysters or generic OYSTER branding;

    ·     The respective marks are visually, aurally, and conceptually distinct. OYSTER is not the dominant element of the Trade Mark and the word SHED gives the clear impression that the Trade Mark references a non-specific oyster-farming structure that bears no conceptual overlap with the concept of the Word Mark, being a geographically specific coastal landscape;

    ·     Wine consumers in Australia are sophisticated, making careful and deliberate choices, regarding a product that they are about to consume, using visual cues (labels, menus) or verbal recommendations from staff. Consumers typically encounter the full mark, whether on a label, menu, or in conversation, reducing the risk of mistaking OYSTER SHED for OYSTER BAY; and

    ·     While both marks cover wine, the Applicant’s intended use is confined to its hospitality venues such as the Hotel. Even assuming notional use across all wine types, the wine market’s diversity mitigates any risk of confusion. Australian consumers routinely distinguish between brands with shared elements, such as BAY (e.g., Cloudy Bay, Lobster Bay) or EAGLE (e.g., Eagles Rest, Eagles Nest), without confusion.

15. In my opinion, the OYSTER BAY mark is inherently distinctive and its reputation is strong. With respect to the products to which the Trade Mark will be used, the Applicant’s Goods are wine, placing them squarely in the market in which the Word Mark has a reputation. Each of these factors tend toward a finding that deception, or at least confusion, is likely. What is left to consider is the degree of similarity between the trade marks and whether in these contexts, it is likely to result in deception or confusion.

16. I consider the Word Mark and the Trade Mark share a significant and sufficient degree of similarity as follows:

    ·the word OYSTER in the respective marks is a prominent and distinctive component, lacking any descriptive qualities in respect of wine and is the first part of the Word Mark, replicated in the Trade Mark. The main identifying feature is the word OYSTER and the only different element in the respective marks are the second words BAY and SHED, which are both of one syllable; and

    ·the words BAY and SHED do not have the level of distinctiveness of the word OYSTER or the level of uniqueness of the word OYSTER, as there are other wine brands in the marketplace with the words BAY or SHED as the second word in the marks.[25]

    [25] Cox Exhibit MC-13.

    56.    I agree with the Applicant that consumers associate the Word Mark with a premium New Zealand wine but I do not agree with the Applicant that the word Oyster is not inherently distinctive nor that it may evoke geographic locations or descriptive qualities. If the word Oyster evoked a geographical location called Oyster Bay, I consider this would be a direct result of the Opponent’s reputation in the Word Mark. Further I cannot see how the word Oyster has a descriptive quality in respect of wine.

    57.    Considering the surrounding circumstances in which wine is sold, I note that wine is often sold in a retail environment including online or by a wine list in licensed premises. Unlike a retail environment where wines are typically on display, wine lists may not give full details of the wine, or may simply be reduced to a blackboard listing. When presented with a wine list which displays OYSTER SHED wine, or when visiting a store that displays wine with OYSTER SHED on the label, I consider that there is a real tangible danger that a consumer would focus on the distinctive and unusual word OYSTER and be less conscious of the distinction between BAY and SHED. Such is the Opponent’s reputation in the Word Mark, that they would be caused to wonder whether OYSTER SHED wine is or comes from the same source as OYSTER BAY wine.

    58.    There is no disagreement from the parties that the normal method of selling or supplying wines includes both aural and visual cues. The Applicant submits that there are many brands and labels of wine in Australia and, I agree. While the Applicant also submits that Australian consumers routinely distinguish between brands with shared elements such as BAY or EAGLE without confusion, there is no evidence this is the case. In my view, while some people may be able to differentiate between the respective marks, a number of purchasers could also be deceived as to the origin of the respective wines. Although some wine consumers are sophisticated and wine purchases may involve deliberate choices, often guided by visual or written cues, these are not the only wine customers in Australia. There are also wine consumers who engage with a bottle and label, a menu, or otherwise order wine aurally in circumstances which generally involve fairly fleeting engagement, devoid of close scrutiny. Further, there may indeed be circumstances where wine can be ordered by a consumer in a noisy bar or restaurant.

    59.    The Applicant submits that a substantial number of persons must be deceived or confused and the Opponent has not shown this. I do not agree that a substantial number of persons must be deceived or confused. It is sufficient if, as a result of the use of the Trade Mark, there is a real, tangible danger that a number of persons (rather than a substantial number of persons) will be caused to wonder whether it might not be the case that the two products come from the same source.[26]

    [26] Southern Cross (n 4).

    60.    In respect of the Applicant’s submission that the Applicant’s intended use is confined to its hospitality venues such as the Hotel, the relevant comparison is between the reputation of the Word Mark derived from actual use of that mark, and a notional normal and fair use of the Trade Mark in respect of wine.

17. I am satisfied that there is a real and tangible risk of a substantial number of consumers of the Applicant’s Goods, knowing of the Word Mark, being induced, left in doubt, deceived, confused or caused to wonder whether the goods offered under the Trade Mark have the same origin or are connected in some way to the Opponent’s Wines and therefore the s 60 ground of opposition has been established.

18. Having found the s 60 ground of opposition established, it is unnecessary that the remaining ground under s 44 be considered.

    Decision

19. Section 55 relevantly provides:

    Decision

    (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:          For limitations see section 6.

    64.    The Opponent has established on the balance of probabilities the ground of opposition under s 60. I accordingly refuse to register the Trade Mark. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

    65.    The Opponent has sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Anne Makrigiorgos

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    11 August 2025