Deyncourt Pty Ltd v Scott Mitchell Passmore as Trustee for the S R G Passmore Investment Trust

[2019] ATMO 26

TRADE MARKS ACT 1995

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

Re:Opposition by Deyncourt Pty Ltd to registration of trade mark application 1764507 (33) - KIMBERLEY RUM COMPANY & Boab Device - in the name of Scott Mitchell Passmore as trustee for The S R G Passmore Investment Trust; Ryan Mathew Passmore as trustee for The S R G Passmore Investment Trust; and, Glen Randall Passmore as trustee for The S R G Passmore Investment Trust.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Lord & Co Applicant: Self-represented
Decision:	2019 ATMO 26 Trade Marks Act 1995 Section 52 opposition to registration - grounds under sections 41, 43, 61 and section 62A not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Scott Mitchell Passmore as trustee for The S R G Passmore Investment Trust; Ryan Mathew Passmore as trustee for The S R G Passmore Investment Trust; and, Glen Randall Passmore as trustee for The S R G Passmore Investment Trust (‘the Applicants’) have applied to register the trade mark which appears below:

Application No:         1764507

Priority Date:             13 April 2016

Goods:Class 33: Liquors (alcoholic beverages); Distilled alcoholic beverages; Spirits (beverages); Liqueurs; Pre-mixed alcoholic beverages, other than beer-based; Spirit based cocktails (spirits predominating)

(‘the Goods’)

Trade Mark:               

(‘the Trade Mark’)

1. The Trade Mark was examined as is prescribed by section 31 of the Act and advertised as accepted for possible registration on 1 September 2016 in the Australian Official Journal of Trade Marks.

2. On 29 November 2016, Deyncourt Pty Ltd (‘the Opponent’) filed a Notice of Opposition to the registration of the Trade Mark which, as amended, cites grounds under sections 41, 43, 61 and 62A of the Act.

3. Subsequently these proceedings have followed the timetable below:

   30 January 2017, Applicant filed a Notice of Intention to Defend;

   16 May 2017, Opponent filed Evidence in Support – declaration made by:

   Kalyn Fletcher, Business Manager of the Opponent, made on 15 May 2017 with Exhibits 1 to 3;

   15 August 2017, Applicant filed Evidence in Answer – declarations made by:

   Rohan Passmore, retired, made on 13 June 2017, with Exhibits 1 to 11;
   Ryan Mathew Passmore, Managing Director, made on 15 August 2017, with Exhibits 12 to 20;

   13 November 2017, Opponent filed Evidence in Reply – declaration made by:

   Kalyn Fletcher, Business Manager of the Opponent, made on 13 November 2017.

4. Both parties have been advised of their right to be heard or to make written submissions.  Neither party requested to be heard.  The Opponent filed submissions by its attorneys, Lord and Co.  The Applicants have filed written submissions by Ryan Passmore.

5. Now, in order that the Registrar of Trade Marks can discharge her obligation under section 55 of the Act to decide this matter, it has been passed to me, one of her delegates, for my decision based on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars 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]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

2. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[2] of the opposed application.

Evidence

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

The Opponent

1. Ms Fletcher states that the Opponent has traded since 1995 as Hoochery Distillery in Kununurra in Western Australia.  Hoochery Distillery, she states, makes a range of distilled alcoholic beverages including rum.  She states, “Hoochery Distillery is the only distillery in the Kimberley region at the present time and has had this distinction since it was established in 1995.”  However, these assertions are not corroborated by supporting materials and I weight them accordingly.

2. The Opponent also claims to have used the image of a boab tree on one of its labels; however, this assertion too is not supported by corroborating materials and so I also weight this claim accordingly.

3. Whilst the Opponent places some reliance upon a label which appeared upon the Applicants’ goods, the example of this within the first declaration of Ms Fletcher is a poor copy from the website of a Czech label collector.  That label is illegible.  However, I infer that the label is similar to the one[3] used by the Applicants in around the years 2000 to 2002 (when they were based in the Kimberley):

[3] This is exhibit 6 to Mr Passmore’s declaration.

1. The above label was superseded in 2002 by others which include that which appears at paragraph [30] of this decision, below.

The Applicants

1. The Applicants have, individually or collectively, made a range of spirituous liquors since 1998.  The Applicants were, originally, based in the Kununurra area but moved their base of operations to Perth, Western Australia, in around 2006 at about the time that sugar ceased to be commercially grown and milled around the Ord River.  The Applicants exhibit a range of labels, newspaper articles and advertisements to their declarations that show that their labels have been updated to reflect the change in the origin of the Goods and which also support the narratives of the declarations.

Other

1. I will mention now that it is the Opponent’s thesis that the Trade Mark lacks inherent adaptation to distinguish and that its use would be deceptive or confusing if the Goods are not, inter alia, a rum produced within the Kimberley region or with sugar from that region. If these propositions are correct, the grounds under sections 41 and 43, at least, would be established. However, if the Trade Mark is inherently distinctive, or prima facie capable of becoming so, it follows that (as a whole) the Trade Mark, at worst, alludes to the Kimberley region and makes no claim as to the origin of the Goods.  (Or, contrariwise, if the use of the Trade Mark on spirits which are not produced in the Kimberley region would not be likely to confuse or deceive, then neither can the Trade Mark directly refer to the character, quality, or origin, of the Goods).

Section 41

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   The trade mark is not capable of distinguishing the [Goods] in respect of which the [Trade Mark] is thought [sic] to be registered from the goods or services of other persons. Firstly, [sic] the reference to the Kimberley is clearly a geographical indication. The reference to Rum Company is descriptive of the Applicants alleged trading activities. The BOAB tree device included in the [Trade Mark] is representative of a type of tree which is only found in Australia in the Kimberley region. This type of device has been used by a wide range of businesses in Northern Australia to highlight their association with Kimberley region. A substantial number of regional businesses in the Kimberley region gives [sic] a BOAB symbol as part of their promotional material. In fact, the [Opponent] has a rum product with a BOAB tree device in the label. Further, the local member of the West Australian parliament for the Kimberley, Josie Farrer uses a BOAB logo in her letterhead. Other traders would, without improper motive, desire to use the opposed trade mark in relation.

2. I note now that the Opponent’s assertions, above, that:

   a.A substantial number of regional businesses in the Kimberley region gives [sic] a BOAB symbol as part of their promotional material; and

   b.in fact, the [Opponent] has a rum product with a BOAB tree device in the label; and that

   c.… the local member of the West Australian parliament for the Kimberley, Josie Farrer uses a BOAB logo in her letterhead,

are entirely unsupported by corroborating material.

Section 41 - Framework

1. 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).

2. In Kevin Murphy Asia Pte Ltd v Lab Brands Ltd[4] the Registrar’s delegate stated:

   [4] [2018] ATMO 58 at [13].

   In F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. [1965] HCA 72; (1965) 112 CLR 537 at 555 (“Barrier Cream Case”), Kitto J summarised the appropriate inquiry as follows:

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

   The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 (“Cantarella”) endorsed that the proper test for assessing the inherent capacity of a trade mark to distinguish still remains that articulated by Kitto J in Michigan. In doing so, the majority discussed the meaning of Kitto J’s words:

   [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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it”;

   The test as aptly summarized in the Trade Mark Examiner’s Manual at Part 22.3 is:

   In summary, the Cantarella decision makes clear that when considering the inherent  distinctiveness of a trade mark, consideration should first be given to the “ordinary signification” (or “ordinary meaning”) of the words comprising the trade mark to anyone in Australia purchasing, consuming or trading in the relevant goods/services. Consideration should then be given as to the likelihood of other persons desiring to use the words for the sake of their ordinary signification, in keeping with the principles espoused in the Michigan case.

   … As stated by Bennett J in Unilever Australia Ltd v Société Des Produits Nestlé S.A. [2006] FCA 782 at [35]:

   [35] Evidence of use does not assist in the consideration of inherent capacity or adaptability of the expression to distinguish or become distinctive (Samuel Taylor Pty Ltd v Registrar of Trade Marks [1959] HCA 69; (1959) 102 CLR 650 at 658). Evidence of use is relevant only to the question of whether the mark possessed the required capability at the priority date (Austereo at [33]). Evidence that a particular expression has assumed a secondary and distinctive meaning after registration may afford some indication that, initially, the expression had a capacity to become distinctive but as the High Court noted in Samuel Taylor at 657, use in combination with another trade mark makes it “difficult to see how the critical words could have acquired a distinctiveness of their own.”

Section 41 - Discussion

1. The ground under section 41 of the Act is not well-founded for the following reasons:

   a.The Opponent’s evidence does not establish that the image of a boab tree is commonly used by traders within the Kimberly region of Western Australia; and in any event,

   b.The Trade Mark does not consist of the image of a boab tree, solus, but of a boab tree (with some ‘get-up’ around it) in combination with the words “The Kimberley Rum Company”:

   In Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd[5] Burley J observed, “The trade mark should be viewed as a whole and not dissected into parts. Although this is likely to be a matter of fact for each case, it is notable that several cases have cautioned against the proposition that separate elements should be so distilled; see Diamond T Motor Car Company [1921] 2 Ch 583 at 588, Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 201 FCR 565 at [61], [63].”

   c.And, the words “The Kimberley Rum Company” do not appear, according to their “ordinary meaning”,[6] to refer to the place that the goods are made but rather to the group of people who make the goods.

   [5] [2018] FCA 235; (2018) 129 IPR 482 at [228].

   [6] As per Cantarella.

2. I conclude that the Trade Mark has sufficient inherent adaptation to distinguish the Goods from the similar goods of other traders.

3. The Opponent has not established its ground under section 41 of the Act.

Section 43

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   The [Trade Mark] is likely to deceive or cause confusion because [the Applicants have] a business established in Middle Swan which is a suburb of Perth. The Kimberley Rum Company has never had a commercial distillery operation in Kununurra or the Kimberley region of Australia. The [Applicants’] website states that they started using sugar from Kununurra but it is pointed out that sugar has not been produced in Kununurra for over nine years when the sugar mill closed down.

   The [Applicants] imply that their Cane Fire product is made from sugar cane grown in the Ord River Valley of Kununurra in the Kimberley region of Western Australia. However, the sugar which is used by the [Applicants] to produce their Cane Fire product is made from cane sugar produced elsewhere than the Kimberley region of Australia.

   Further, the cane fire [sic] product produced by the applicants is not a Rum like product in the true sense of the word as stated in the website. By law, Rum must be aged for two years or more on wood to be classified as rum. Thus, it is misleading and deceptive for the applicants to sell their Cane Fire product but to use the business name Kimberley Rum Company in conjunction with this non-Rum product. This has misled customers into thinking the product was a true Rum product but this is not the case.

2. I note that the website which is said to support the assertion in the first paragraph, above, in the Statement of Grounds and Particulars is not that of the Applicants but (as Exhibit 1 to Ms Fletcher’s first declaration establishes) of a tour company called Beer Nuts at the Applicants could not be responsible for errors made on another person’s website.  Further, this is material which not contained within the Trade Mark and accordingly not germane to considerations of whether use of the Trade Mark would be likely to confuse or deceive.

3. There is no evidence before the Registrar which supports the assertion made in the last paragraph of the asserted ground as regards the legality of what may be referred to as being “rum”: the onus is on the Opponent to establish the basis for this allegation.  Further, I gather that the “website” referred to is that of the previously mentioned tour company and thus cannot be a misdescription of any goods by the Applicants (and, if it were by the Applicants, it is not matter contained within the Trade Mark and thus is not relevant to the ground).

Section 43 - Framework

1. Section 43 of the Act provides:

   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.

2. The deliberation here is whether the use of the Trade Mark would (rather than could) be likely to deceive or cause confusion. I emphasise that the cause of the confusion or deception must be, as stipulated by section 43 of the Act, “contained within the trade mark”.

3. In terms of the relevant (second) paragraph within the Statement of Grounds and Particulars, it is the Opponent’s thesis that because of the combination within the Trade Mark of the device of a boab tree and the words “The Kimberley Rum Company” appearing on the Applicant’s CANEFIRE label, the use of the Trade Mark would be likely to confuse or deceive if the goods are not made with sugar emanating from the Kimberley region of Western Australia.

4. I do not believe that consideration of the ground in the context of the Applicant’s CANEFIRE label is appropriate since this use is not something which is intrinsic to the Trade Mark itself.  Further, how an applicant might have historically used a trade mark need not, I consider, form a basis for a delegate of the Registrar’s deliberations which are to consider the situation as at the Relevant Date because circumstances may change (as in here, where the Applicants have moved from the Kimberley region to Perth, Western Australia, and updated its label).

5. In the context of the Goods, the Trade Mark (considered in isolation from how the Applicants might have historically have used it) suggests that the goods on which the Trade Mark is used are spirituous liquors made by some people who call themselves “The Kimberley Rum Company”.  The Trade Mark makes no claim for any connection with the Kimberley region other than that, or indeed for the goods to be “rum”.  It is difficult to apprehend, based on the  evidence before the Registrar, how the Trade Mark would be likely to confuse or deceive on these bases.

1. However, I include a reproduction of the Applicants’ CANEFIRE label, below, which the Applicant has used in substantially similar forms since 2006:

1. This label has the side panels which appear below:

1. It is axiomatic with regard to “deception or confusion” as far as it relates to deliberations under section 44 of the Act that “What confusion or deception may be expected is to be based upon the behaviour of ordinary people. As potential buyers of goods they are not to be credited with high perception or habitual caution. Exceptional carelessness or stupidity may be disregarded.”[7] The same precept should apply to considerations of “confusion or deception” under section 43 of the Act.

   [7] Australian Woollen Mills Ltd v F.S. Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 at 658.

2. It is my view that only the exceptionally careless would be likely to be confused or deceived by either the Trade Mark or (although this is not germane to my decision) the label on which it appears.

3. The Opponent has not established its opposition under section 43 of the Act.

Section 61

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   The trade mark predominantly recites "The Kimberley Rum Company''. However, the applicants do not have a distillery in the Kimberley region and the opponent company has the only distillery that has ever existed in the Kimberley region. In fact, the opponent company has a product called "Kimberley Moon" which is a White Rum.

   The opponent company is the only producer of rum in the Kimberley region. Thus, it is submitted that the trade mark contains a sign that it is a geographic indication for goods originating in the Kimberley region. As outlined above, this is false.

Section 61 - Framework

1. Section 61 of the Act provides:

   61Trade mark containing or consisting of a false geographical indication

   (1)The registration of a trade mark in respect of particular goods (relevant goods) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods (designated goods) originating in:

   (a)a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or

   (b)a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;

   if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.

   (2)An opposition on a ground referred to in subsection (1) fails if the applicant establishes that:

   (a)the relevant goods originated in the country, region or locality identified by the geographical indication; or

   (aa)the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or

   (b)the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or

   (c)the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:

   (i)1 January 1996; or

   (ii)the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;

   whichever is the later; or

   (d)if the registration of the trade mark is being sought in respect of wine or spirits (relevant wine or spirits)—the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.

   (3)An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

   (a)although the sign is a geographical indication for the designated goods, it is also a geographical indication for the relevant goods; and

   (b)the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

   (4)An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

   (a)the sign consists of a word or term that is a geographical indication; and

   (b)the word or term is a common English word or term; and

   (c)the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

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

   Note 2:For originate (in relation to wine only) see section 15.

2. The expression “geographical indication” within section 61 has the meaning defined in section 6 of the Act:

   geographical indication, in relation to goods, means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.

3. The first hurdle under section 61 that an opponent must cross is to establish that the sign upon which it relies is a “geographical indication” that conforms to the above definition.

4. It follows that, as the Opponent has not filed any evidence that a sign within the Trade Mark denotes a given quality, reputation or other characteristic of any particular goods within the Goods which is essentially attributable to their geographic origin, the Opponent has not crossed that hurdle and cannot establish the ground under section 61.

5. The ground under section 61 is not established.

Section 62A

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   The trade mark is opposed on the ground that the application was made in bad faith. The applicants know well that they have little or no association with the Kimberley region and certainly do not produce rum in that region. Further, they do not use any materials such as sugar which originates from the Kimberley region. The trade mark is an attempt to cloak the applicant's product in a misleading guise as being Rum originating from the Kimberley region of Australia. Thus, the trade mark is designed to mislead purchasers into believing that the product is derived from the Kimberley region which is clearly not the case. Further, the product as sold, is not a rum product at all.

Section 62A – Framework

1. Section 62A provides:

   62AApplication made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The ground as stated is, in essence, a recapitulation of the ground under section 43 of the Act and is not established for the same reasons.

Decision

1. Section 55 of the Act relevantly 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.

2. The Opponent has not established a ground of opposition.

3. 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 that the disposition of the application should be in accordance with the court’s order or direction.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
25 February 2019