Diageo Australia Limited v Spirits International NV

[2006] ATMO 7

TRADE MARKS ACT 1995

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

Re:Opposition by Diageo Australia Limited to registration of trade mark application 917900(33) SPI RUSSKAYA & Device proceeding in the name of Spirits International NV.

Delegate:

Iain Thompson

Representation:

Opponent

Unrepresented, did not appear but put in written submissions

Applicant

Patrick Flynn instructed by Tim Clarke of Mallesons Stephen Jaques.

Decision:

1.s52 opposition: deceptive similarity – sections 44 and 60 opposition not established

2 Costs ordered against opponent.

Background

1. Spirits International NV ('the applicant') has filed an application to register a trade mark, current details of which are:

   App No:  917900

   Filing Date:  27 June 2002

   Acceptance Date:  22 May 2003

   Goods:Class: 33  Alcoholic Beverages (beers not included); vodka; spirits

   Trade Mark:  

   Endorsements:  The applicant has advised that the translation of the Russian word RUSSKAYA is RUSSIAN WOMAN or FROM RUSSIA or RUSSIAN.

2. I note now that the word RUSSKAYA is a transliteration from the Cyrillic word русская appearing in the trade mark and is the feminine form of the Russian masculine word RUSSKI which means ‘Russian’.

3. On 22 August 2003, Diageo Australia Limited ('the opponent') filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The Notice cites most of the grounds available under the Trade Marks Act 1995 (‘the Act’).

4. Evidence in support was served and filed as allowed by the Act and Regulations thereto. There is no evidence in answer.

5. A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Sydney, on 19 October 2005. Patrick Flynn instructed by Tim Clarke of Mallesons Stephen Jaques represented the applicant. The opponent relied on written submissions by its solicitors, Freehills Patent & Trade Mark Attorneys and did not appear. The submissions address sections 44 and 60 of the Act and I now find that those other grounds mentioned in the Notice have not been established.

   Evidence

6. I will not dwell on the evidence in support of the opposition at length since it does not appear to be seriously challenged by the applicant.  Suffice to say that it establishes that the opponent has used the trade mark LEMON RUSKI in Australia since 1997 in respect of lemon flavoured vodka cocktail mixers.  The opponent has also sold a number of other vodka mixers with other flavours under the trade marks CRANBERRY RUSKI, ORANGE RUSKI, LIME RUSKI and GRAPEFRUIT RUSKI.  However, I would assess that the bulk of the opponent’s sales and advertising has been in relation to the trade mark LEMON RUSKI which has a reputation in Australia.[1] 

   [1] McCormick & Company Inc v McCormick [2000] FCA 1335

7. Further, the opponent has a number of registrations of the trade marks relevant to the above.  These include:

   Reg Number  739529

   Priority date:  18 July 1997

   Goods/Services:  Class: 33   Alcoholic beverages including wines, spirits, vodka, pre-mixed alcoholic beverages, blended alcoholic beverages, wine based beverages

   Trade Mark:  RUSKI

   Endorsements:  Provisions of subsection 41(5) applied.

   Reg Number  739530

   Priority date:  18 July 1997

   Goods/Services:  Class: 33   Alcoholic beverages including wines, spirits, vodka, pre-mixed alcoholic beverages, blended alcoholic beverages, wine based beverages

   Trade Mark:  LEMON RUSKI

   Endorsements:  In use, the descriptive word LEMON appearing within the trade mark will be altered to reflect the predominant flavour of the goods in relation to which the trade mark is used.

   Reg Number  739979

   Priority date:  23 July 1997

   Goods/Services:  Class: 33   Alcoholic beverages including wines, spirits, vodka, pre-mixed alcoholic beverages, blended alcoholic beverages, wine based beverages

   Trade Mark:  

   Endorsements:  In use, the descriptive word LEMON appearing within the trade mark will be altered to reflect the predominant flavour of the goods in relation to which the trade mark is used.

   Issues

8. Given that the opponent had pre-existing registrations and a reputation in its trade mark LEMON RUSKI at the priority date of the opposed application, and essentially the same goods or goods of the same description, the question which is pivotal to this issue in terms of both section 44 and section 60 is whether the trade marks RUSKI and LEMON RUSKI are deceptively similar to the opposed trade mark.

   Deceptive Similarity

9. Section 10 of the Act defines ‘deceptive similarity’ in the following terms:

   10  Definition of deceptively similar

   For the purposes of this Act, 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.

10. The start point for the consideration of deceptive similarity is the familiar one of trade mark law.  In Shell Company of Australia Co Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (reversed on appeal but not on this principle) Windeyer J said:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in 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 impressions that such persons would get from the defendant's television exhibitions.

11. This test is similar to that applied by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, at page 658:

    In deciding this question, the marks ought not, of course, to be compared side by side. 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, their 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.

12. The “impression or recollection which is carried away and retained”, referred to above, include the effects of any ‘imperfect recollection’ of the trade mark: Aristoc Ltd v Rysta Ltd [1945] AC 68.

13. The comparison is to take place in the context of the likely marketplace for the goods and the surrounding circumstances are to be taken into account.  In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, Parker J said:

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

14. Further, I am to consider the likely effect of the use of the trade marks in a fair and normal manner as per the following from Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8:

    Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.

    15.   Accordingly, what I am to consider is:

    ·     The trade marks not side by side

    ·     Used in a fair and normal manner

    ·     Whether they have an essential feature

    ·     The idea of the trade marks

    ·     The trade marks as wholes

    ·     The effects of imperfect recollection

    ·     Within the relevant marketplace

    ·     Taking account of the surrounding circumstances

    16.   The consideration is one which is on the balance of probabilities, although the opponent should clearly establish its opposition to my satisfaction.[2]

    [2] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, Lomas v Winton Shire Council [2003] AIPC-91-839, Kowa Company Ltd v N V Organon [2005] FCA 1282 paragraph [139].

    17.   The central and most memorable feature of the trade marks of the parties is the words RUSKI and RUSSKAYA.  Indeed, in registration 739529 it is the only feature within the trade mark.  The opponent points to a number of decisions which establish the fact that customers will use the word within a ‘word and device’ trade mark when ordering a product: as American Trading & Shipping Co Ltd’s Appn (1936) 6 AOJP 1194 and Re Application byHardings Manufacturers Pty Ltd (t/a Wyandra Industries) (1987) 8 IPR 147. And, submits the opponent, aural similarities between trade marks may give rise to confusion or deception – notwithstanding the fact that the trade marks contain device elements which are quite dissimilar: Wendy's International Inc v Wendy's Supa Sundaes Pty Ltd [2001] ATMO 30; Bull SA v Micro Controls Ltd (1990) 19 IPR 299; Stingray Surf Co Pty Ltd v Lister (1997) 37 IPR 306.

    18.   In addition to the central feature of the trade marks being similar, they carry a similar idea – that of a Russian origin or ‘flavour’ to the goods bearing the trade mark – the goods both being, or containing, vodka which is widely perceived as being the national spirituous drink of the Russians.

    19.   The initial syllable in the dominant feature of the trade marks is aurally identical.[3]

    [3] In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264; Gardenia Overseas Pte Limited v. The Garden Company Limited (1994) AIPC 91-096 (1994) 29 IPR 485

    20.   Then again, the applicant’s trade mark contains, prominently, the Russian word русская which transliterates as RUSSKAYA.  Although this Cyrillic word is the feminine form of the word for ‘Russian’[4] it is improbable that most Australians would recognize it as such and it is strongly graphically stylized within the applicant’s trade mark which may be significant in how the trade marks of the parties are recollected.

    [4] This word is one of the few which break the ‘rule’ that words rendered in Cyrillic do not repeat the same letter twice in a row – the reason for this breach is historical: the Russ (Pусс) are the tribe from which Russia takes its name.

    21.   However, I consider that the opponent’s concerns about deception or confusion arising from the applicant’s use of the trade mark are, although understandable, ill-founded.  ‘RUSKI’ is a word which has passed into English (The Oxford English Dictionary) as being slang for the word ‘Russian’.  The word RUSSKAYA appearing in the applicant’s trade mark is properly applied in the feminine form to ‘vodka’ (the word ‘vodka’ being a feminine noun in Russian).  However, here the principle enunciated in Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 59 RPC 127 becomes relevant.[5]  It is difficult to establish deceptive similarity based on indicia which lack inherent distinctiveness and are innocently required by other traders to describe the origin or characteristics of the relevant goods or services.  Vodka is closely associated with Russia, to the extent that it is popularly regarded by Australians as the Russian national spirituous drink.  It is natural that many traders will use the word RUSSKAYA, or variants of that word, either to indicate that the goods are Russian, or to evoke images or ideas associated with Russia.  In the applicant’s trade mark the description of origin is a transliteration of the Russian русская meaning ‘Russian’.  In the opponent’s trade mark it is an English language slang word, RUSKI, which means ‘Russian’.  While the opponent undoubtedly has a limited monopoly, via registration 739529, of the word RUSKI in relation to the registered goods, the registration does not give the opponent a monopoly over that idea.  In Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA, the Full Bench of the Federal Court observed:

    [5] See also Conde Nast Publications Pty Ltd v Virginia Taylor [1998] 864 FCA (VOGUE/EUROVOGUE) and Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA (SPORTS CAFÉ & DEVICE/THE CIRCUIT SPORTS CAFÉ)

    But to hold that the appellant's device mark would thereby become deceptively similar to the cited mark would have the practical effect of giving the proprietor of the cited mark a monopoly over any mark which conveyed such an idea. This would contravene the Cooper Engineering principle[6].

    [6] Cooper Engineering Co. Pty. Ltd. v. Sigmund Pumps Ltd. (1952) 86 CLR 536

    22.   Thus, while there is both a commonality of idea and a similarity between the trade marks, this similarity is founded on a characteristic of the goods which is apprehended by most people who will understand why these words are used.  Thus the differences which exist between the words are sufficient for the ordinary person to distinguish between the trade marks.  In other words, the similarity between the trade marks, if noticed, will be recognized by most people as being, basically, different ways of saying the same thing and not as indicating a common source or connection between the goods – other than that they might both originate in Russia. 

    23.   On this basis, the trade marks are not deceptively similar.

    24.   I consider also that a person acquainted with the Russian language who recognizes that the words are the phonetic equivalents of the masculine and feminine of the same word will also recognize that the words are different, particularly since the use of the word RUSSKI (masculine) or its phonetic equivalent RUSKI in relation to vodka (feminine) is grammatically inappropriate.  This is particularly likely in view of the fact that the word RUSSKI is one which breaks the convention that words in Cyrillic lettering contain no double lettering: apart from the fact that the word RUSKI is one in the English language, it is obviously wrong as a transliteration from Russian.

    25.   The differences between the trade marks are the greater when the other features of the applied for trade mark are considered.

    26. I do not consider that the trade marks are deceptively similar and the opponent cannot, thus, establish its opposition in terms of sections 44 and 60.

    Decision

    27. Section 55 of the Act provides:

    55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

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

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

    Note:  For limitations see section 6.

    28.   No ground of opposition has been established and the trade mark application may 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.

    Costs

    29.   Costs may follow the event and I order costs against the opponent at the official scale.

    Iain Thompson

    Hearing Officer

    Trade Marks Hearings

    Xx January 2006