E&J Gallo Winery v Kristy Booth

[2019] ATMO 2

TRADEMARKSACT 1995

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

Re:Opposition  by  E&J  Gallo  Winery  to  registration  of  trade  mark  application 1771163 (33) - APOTHECARY GIN - in the name of Kristy Booth.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: Davies Collison Cave Pty Ltd Applicant: Gestalt Law Pty Ltd

DECISION:

2019 ATMO 02

Trade Marks Act 1995

Section 52 opposition to registration – trade marks not deceptively similar, sections 44, 43, 60, 62A and 42 not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Kristy Booth (‘the Applicant’ or ‘Ms Booth’) filed an application to register the trade mark which appears below:

Application No:         1771163
Priority Date:             17 May 2016
Goods:  Class 33: Spirits (beverages); Still spirits

Trade Mark:               APOTHECARY GIN (‘the Trade Mark’)

1. The Trade Mark was examined as is required by section 31 of the Act and, on 13 October 2016, advertised as accepted for possible registration in the Australian Official Journal of Trade Marks.

1. On 13 December 2016, E&J Gallo Winery (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark. Thereafter, the opposition process has followed the timetable set out below:

13 January 2017 – Opponent files a Statement of Grounds and Particulars – grounds under sections 44, 60, 42, 43, and 62A of the Act.

7 February 2017 – Applicant files a Notice of Intention to Defend;

15 May 2017 – Opponent files Evidence in Support – declarations of:

Katherine Louise Kemp, Trade Mark Researcher of Davies Collison Cave, made on 3 May 2017 together with Exhibits KK-1 to KK-2;

Jon French, Regional Vice President & General Manager of the Opponent, made on 12 May 2017 together with Exhibits JF-1 to JF-15;

21 August 2017 – Applicant files Evidence in Answer – declaration of:

Ms Booth, made on 21 August 2017 together with Exhibits KB-1 to KB-7;

30 October 2017 – Opponent files Evidence in Reply – declaration of:

Katherine Louise Kemp, Trade Mark Researcher of Davies Collison Cave, made on 30 October 2018.

1. Subsequently the parties were informed of their right to be heard or to make written submissions. Neither party requested to be heard. The Opponent has filed written submissions by its trade mark attorneys, Davies Collison Cave. The Applicant has not filed written submissions.

1. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been allocated 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. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date2 of the opposed application and I note that where sections 44 and 60 specify the “priority date” that is here the same as the filing date.

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

Evidence

The Opponent

1. The Opponent is, I infer because it is not expressly stated in Mr French’s declaration, a USA based vintner. The Opponent owns a number of Australian trade mark registrations consisting of, or incorporating, the word APOTHIC. The most relevant to the ground under section 44 is that appearing below:

Registration No:         1656510
Priority Date:             5 November 2014
Goods            :          Class 33: Alcoholic beverages (except beers)
Trade Mark:               APOTHIC

(‘the Apothic Trade Mark’)

1. Other variants of the above trade mark are registered by the Opponent in Australia in respect of the same goods: 1342300 APOTHIC RED; 1656511 APOTHIC DARK; and, 1753539 APOTHIC CRUSH (with the Apothic Trade Mark, collectively ‘the Opponent’s Trade Marks’).

1. The Opponent, states Mr French, exports wines under the Opponent’s Trade Marks from the USA to Australia – in my consideration, these wines may be characterised as budget-priced blended wines.

1. Much of Mr French’s 800-odd pages of evidence appears to be either relevant only to the market in the USA, and/or not bear a date, and/or to post-date the Relevant Date. That evidence which is relevant to these proceedings includes invoices to a retailer in Australia, packaging of APOTHIC RED wine, and, two or three mentions in the Australian press prior to the Relevant Date. Printouts of Australian retailer Dan Murphy’s website showing the use of the trade mark APOTHIC RED are, by the date of reviews on the printouts, from January 2017 which is after the Relevant Date.

1. Whilst printouts of the Opponent’s website from the Internet Archive WaybackMachine dated 11 February 2016, before the Relevant Date, are exhibited to Mr French’s declaration, the extent to which this website was accessed by Australians is not high at around 1,200 ‘visits’ and (as the report that shows these figures is as up to 4 May 2017) approximately a third of these ‘hits’ are after the Relevant Date.

1. Further, whilst some 230 pages of social media printouts are exhibited to Mr French’s declaration, without detailed analytics of where the page’s 280,000 followers reside, this evidence is not of great weight in these proceedings.

1. There are also approximately 450 pages of evidence containing articles mostly in foreign publications which mention one or more of the Opponent’s Trade Marks; however, many of these articles are from after the Relevant Date. If this evidence is claimed by the Opponent to establish “spillover” reputation in terms of ConAgra Inc v McCain Foods (Aust) Pty Ltd3, (‘Conagra’) it is not clear to what extent any of the many foreign articles in publications such as Convenience Store News, Calgary Herald, or Toronto Star that mention the Opponent’s Trade Marks might have been accessed or viewed by Australians.

1. Additionally, Mr French appears to give the retail value of goods sold in Australia under the APOTHIC RED trade mark as at the date that he made his declaration (12th May 2017) – not the value up to the Relevant Date (17 May 2016). The Opponent’s marketing/advertising expenditure in Australia is similarly uncertain as at the Relevant Date.

1. Mr French states:

The APOTHIC mark was selected on the basis of its evocation of the mysterious place, Apotheca, where vintners stored their most coveted concoctions in 13th century Europe. My Company's wine blends offered under the APOTHIC mark fuse Old World intrigue with modern sophistication.

The APOTHIC trade mark was first used by my Company in 2009 in the USA. A review of my Company's 2008 vintage offered under the APOTHIC trade mark is attached as Exhibit JF-2.

The APOTHIC trade mark was first used in Australia by my Company in 20154 and has been used continuously since that date to identify wine products by my Company.

The Applicant

1. Ms Booth states that she has 20 years’ experience as a distiller and operates a distillery named Killara Distillery in Hobart.

3 [1992] FCA 159; (1992) 33 FCR 302; 106 ALR 465; (1992) 23 IPR 193; [1992] AIPC 90-892; [1992] ATPR

(Digest) 46-095; [1992] ASC 56-159 at [116] to [118].

4 The first use in Australia appears to have been in December 2015.

1. Ms Booth is the daughter of Mr Bob Lark who runs a well-known whisky distillery in Hobart. Ms Booth states:

I am trained as a distiller. In 2004 I received a scholarship from the Institute of Brewing and Distilling (IBD) (located in London) for further study in distilling in Scotland. When I became the head distiller for Lark Distillery in 2003 at the age of 23 I was one of the world's youngest female distillers. In my role as distiller for Lark Distillery, the distillery won awards including:

Best Other Whisky in the world whisky awards 2009 - Barrel LD100 (distilled by me)

Award 2010 Barrel LD131 (distilled by me) 2014 Telstra Australian Small Business Award

In 2016 I formed my own business, namely my own distillery, Killara Distillery in Hobart, Tasmania. Killara Distillery is one of the few distilleries world-wide to be owned and operated by a female. Killara Distillery is a boutique distillery producing premium quality, hand crafted single malt whisky and other premium spirits.

[…]

I selected the name APOTHECARY GIN because of the idea of the word "apothecary". In particular, I understood that the word was an old term referring to a person who dispenses medicine. Attached as exhibit KB-1 is the search result for the word "apothecary" using the Australian resource Macquarie Dictionary (macquariedictionary.com.au). This lists the meaning of "apothecary" as follows:

Noun (plural apothecaries)

(formerly)   someone   who   sold   drugs   for   medicinal   purposes;   the forerunner of the modern chemist or pharmacist.

Section 44

Grounds

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

The Trade Mark is substantially identical with or deceptively similar to the [Opponent’s Trade Marks], which have an earlier date of priority than the Application and which are registered or applied for with respect to similar goods/services and/or closely related goods/services covered by the Application and, therefore, registration of the Application would be contrary to Section 44 of the Act and/or Regulation 4.15A of the Regulations. The Trade Mark has not been used by the Applicant to satisfy the requirements of Section 44(3) and/or 44(4) and/or 4.15A(3) and/or 4.15A(5).

1. I observe now that the references in the Opponent’s Statement of Grounds and Particulars to “services” and to “closely related goods” are not relevant to these proceedings. In its submissions the Opponent also seeks (in addition to the Opponent’s Trade Marks) to rely on registration 1704121 APOTHIC INFERNO which was not included amongst those listed in the Statement of Grounds and Particulars. As the Statement of Grounds and Particulars is phrased “The Trade Mark is substantially identical with or deceptively similar to the following Trade Marks …” and 1704121 APOTHIC INFERNO is neither listed amongst those included thereunder and nor was the Statement of Grounds and Particulars amended by the Opponent, the Opponent may not rely on 1704121 APOTHIC INFERNO in these proceedings (not that its inclusion would have altered the outcome of my decision).

The Act

1. Section 44 of the Act relevantly provides:

44  Identical etc. trade marks

(1)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)    the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:     For deceptively similar see section 10. Note 2:              For similar goods see subsection 14(1). Note 3:              For priority date see section 12.

Note4:     The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. To found this ground it is thus incumbent upon the Opponent to establish each of the following:

That the priority dates of the of Opponent’s Trade Marks are earlier than that of the Trade Mark (‘the First Requirement’); and

The goods are either the same goods or goods of the same description5 (‘the Second Requirement’); and

The trade marks relied upon by the Opponent are either substantially identical or deceptively similar to the Trade Mark (‘the Third Requirement’)

Submissions

1. In brief, the Opponent submits that the first two of the above requirements are met. The Opponent also argues that the trade marks under consideration are substantially identical and, if not, are deceptively similar based on the Opponent’s perception that they share the same, or very similar, elements.

Consideration

1. The First Requirement is obviously satisfied since each of the Opponent’s Trade Marks has a priority date earlier than that of the Trade Mark.

1. As to the Second Requirement: the specifications of goods of the Opponent’s Trade Marks are “Alcoholic beverages (except beers)”. The word “beverages” means according to The Macquarie Dictionary:

noun any kind of drink, other than water, especially a hot drink or an alcoholic drink.

1. As the Applicant’s “Spirits (beverages); Still spirits” all fall within the specification “Alcoholic beverages”, the Second Requirement is satisfied.

1. Turning to the Third Requirement, the Opponent alludes to the test in Shell Co of Australia v Esso Standard Oil6 (‘Shell’), and submits that the parties’ trade marks are substantially identical stating:

The APOTHIC Marks and the Applicant’s Mark viewed side by side are: APOTHIC | APOTHIC + X | APOTHECARY GIN. These marks are near identical marks. The first seven letters of both trade marks and the defining feature of the mark are all the same except for one letter which is the sixth letter which while visually different is phonetically equivalent. This minor difference is obscured being in the middle of each mark and might be easily overlooked by consumers, particularly given the number of APOTHIC prefixed marks of the

5  Subsection 14(1) provides that goods are similar to other goods if they are the same goods or of the same description as those other goods.

6 (1963) 109 CLR 407 at [12].

Opponent. The word 'GIN' as being descriptive can be discounted in this comparison.

1. In Shell at [12] Windeyer J stated:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex  parte

O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

1. I consider that it is appropriate that, if the word “Gin” within the Trade Mark is to be to an extent discounted in the comparison as a non-essential feature, the descriptive words “Red”, “Dark”, and “Crush” within the Opponent’s Trade Marks should also be largely discounted as being descriptive and non-essential features in relation to the parties’ goods. The comparison is thus, in essence, between the putative trade marks APOTHIC and APOTHECARY. These trade marks are obviously quite different and distinct from each other despite having some features in common. Each of the words “apothic” or “apothecary” is an essential feature of the parties’ trade marks and those words are different in both appearance and meaning. In my consideration, it is illogical to view the letter- strings “apothe” or “apothec” as being an essential feature of the Trade Mark as this kind of analysis is a movable feast. If, for example, the letter-strings “apothe” or “apothec” are to be viewed as “prefixes” and essential features of the Trade Mark, why is this not also true of the suffixes “ary” or “cary” or (for that matter) the prefix “apo” and the suffix “thecary”?

1. The trade marks of the parties are not substantially identical.

1. In relation to deceptive similarity, Windeyer J said in Shell:7

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

7 Op cit at [13].

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. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p

106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "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" (1937) 58 CLR, at p 658.

1. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd referred to earlier authorities and summarised the principles to be applied in the assessment of deceptive similarity: 8

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths9 at [49]; Australian Woollen Mills10 at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s11 at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

8 [2012] FCA 1022, [38]-[46].

9 Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

10 Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

11 Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating12 at 594 – 595.

Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].

1. It is apparent that the APOTHIC/APOTHECARY elements of the parties’ trade marks are differently derived. Mr French, in his declaration, states that “The APOTHIC mark was selected on the basis of its evocation of the mysterious place, Apotheca, where vintners stored their most coveted concoctions in 13th century Europe” whereas the Applicant states that she selected the Trade Mark because of its dictionary denotation of the old-fashioned forerunner of a pharmacist.   The words “apothic” and “apothecary” thus have different

   meanings and connotations.

12 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

1. I do not consider, as discussed above, that the elements “apothic/apothec” function as a discernible “prefix” within either of the parties’ trade marks. In the instance of the Apothic Trade Mark, it functions as the sole element of that trade mark. In the instances of the Opponent’s Trade Marks, the element “apothic” functions as the distinctive element. However, in the Trade Mark the element “apothec” is not discernible as a discrete entity within that trade mark.

1. The Apothic Trade Mark, whilst it might call the word “apothecary” to mind, is also very obviously distinct from that word. In my consideration, most people who are aware of the Apothic Trade Mark would view a trade mark consisting of, or containing, the word “apothecary” as being, or connoting, something different and as not indicating a connection between the parties or their goods in the course of trade. In other words, the ordinary person might notice a similarity stemming from the commonality of the “apoth” portions of the parties’ trade marks but would not be confused or deceived because of that. Neither is it likely, in my estimation, that the Apothic Trade Mark would be misremembered or imperfectly recalled as the Trade Mark or vice versa.

1. The same is a fortiori true of the Opponent’s Trade Marks which also contain the descriptors “Red”, “Dark”, and “Crush” when compared to the Trade Mark which also contains the word “Gin”.

1. In my consideration the trade marks of the parties are not deceptively similar.

1. As the Opponent has not established the Third Requirement, the ground under section 44 of the Act is also not established.

Section 60

Statement of Grounds and Particulars

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

The Opponent has been using its APOTHIC Trade Marks in commerce in the USA in relation to alcoholic beverages, since as early as 2009. Since this time, the sale of alcoholic beverages bearing the APOTHIC Trade Marks has expanded on a global basis, including sales in Australia since 2015.

The Opposed Trade Mark is deceptively similar to the Opponent's APOTHIC Trade Marks and is applied for in relation to the same goods as those of the

Opponent's goods. Due to its longevity and exclusivity of use, the Opponent has established substantial goodwill and extensive reputation in its APOTHIC Trade Marks both in Australia and throughout the world.

In light of the Opponent's acquired reputation in its APOTHIC Trade Marks, the use of the Opposed Trade Mark by the Applicant would be likely to deceive or cause confusion. Such use would therefore be contrary to Section 60 of the Act.

The Act

1. Section 60 of the Act provides:

60  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.

1. In order to found the ground under section 60 the Opponent must establish that:

The trade mark(s) upon which it relies had, at the priority date, a reputation such that

The use of the Trade Mark would confuse or deceive.

1. I also note that it is not necessary for a trade mark to be registered for it to engage the provisions of section 60. To make it more plain that I am considering the common law use of a trade mark by the Opponent rather than the use of a registered trade mark by the Opponent I will term that trade mark “APOTHIC Red” as it is the one for which the Opponent has demonstrated use in Australia.

Submissions

1. The Opponent submits:

As attested in the French Declaration, the APOTHIC mark was first used abroad in 2009 and has been used continuously for wine products since that time. The wine consuming market is familiar with wine names both locally and abroad. The sale of the wine through Dan Murphy's means it is wide spread across Australia in 200 Dan Murphy stores. The confidential exhibits attest to sales and promotion. We submit that the use made of the APOTHIC mark for its particular

goods has been more than sufficient to establish the requisite degree of reputation prior to the filing of the Opposed mark. We note the comments in the Booth Declaration as to her professional and personal knowledge of the alcohol industry and the hearsay comments associated therewith and note the basis of these observations to be generally refiled [sic] by the Kemp2 Declaration and to be generally irrelevant in the face of the significant evidence to the contrary including the confidential sales data.

We refer to our submissions above in respect of the similarities of both the goods and marks of the Opposed Mark with prior registrations. We submit that the likelihood of deception or confusion between the APOTHIC Marks and the Opposed Mark is increased by the Opponent’s longstanding use of its Apothic Marks for wine products.

Discussion

1. In McCormick & Co Inc v McCormick (‘McCormick’) Kenny J asked: 13

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

1. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)14 was to be: 15

   ... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   (Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). 16

13 [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

14 The word “reputation” was not used in subparagraph 28(a) of the superseded Act. All that was required for

subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

15 [2000] FCA 1587; (2000) 50 IPR 1.

1. Regarding the measurement of reputation, in McCormick Her Honour went on to state:17

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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that 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. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a

$100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. As I have mentioned, the declaration of Mr French supports use in Australia by the Opponent of the trade mark APOTHIC Red on red wines prior to the Relevant Date.

1. Based on the imprecise confidential advertising and sales figures provided by the Opponent, and keeping in mind that the goods sold under the APOTHIC Red trade mark are a budget wine, I would characterise the reputation of the Opponent’s Trade Marks in Australia as

   being very modest in an industry which has a total annual value of domestic sales (based on Australian winemaker receipts) of around $3.3 billion.18 The extent to which that trade mark was known by Australians was, at the Relevant Date, very limited: some gauge of the extent of the reputation of the APOTHIC Red trade mark is that (on the figures supplied by the Opponent) if the goods bearing the APOTHIC Red trade mark were (as is submitted by the Opponent) sold through each of 200 Dan Murphy stores in Australia and this was

   throughout the claimed period of use of about a year and a half up to Mr French making his declaration, each store would have sold at an average rate of around six dozen bottles a year or under two bottles a week.

16 [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

17 Op cit at [86].

18        type="1">

I have already found that Mr Wilson’s evidence does not establish any extent of “spillover” reputation in Australia in terms of Conagra.

1. Accordingly, the reputation of the APOTHIC Red trade mark in Australia at the Relevant Date was, on the evidence before the Registrar, slight and in relation to red wine.

1. The next question to be addressed is whether because of the reputation of the APOTHIC Red trade mark referred to in the preceding paragraphs the use of the Trade Mark by the Applicant would be likely to deceive or cause confusion.

1. The words “confuse” and “deceive” refer to two different mental states. In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd19 Richardson J, in the New Zealand Court of Appeal:

‘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.

1. In Radio Corp Pty Ltd v Disney20 Rich J said of the word “confusion”:

In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute.  Confusion involves indefiniteness of ideas.

1. Concerning the factors which may be considered in the assessment of the likelihood of confusion or deception, in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi21 the Registrar’s delegate observed:

19 [1979] RPC 410, at 423.

20 [1937] HCA 38; (1937) 57 CLR 448 at 454.

21 [2012] ATMO 124 at [40].

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

1. In making the assessment I also have regard to the fact that the Opponent’s goods, wines, are usually sold in a dedicated area of a retailer whereas spirituous liquors are sold in a different discrete area. As the Opponent submits, albeit in relation to the ground under section 43:

The liquor known as gin is well known and understood, and is made available for sale to customers in discrete sections of alcoholic retailers where it is clearly identified, and sold with other products of the same type. It is usual in most liquor retail outlets [for] the various distillate spirits to be sold in defined shelf space and collected  according  to  type  such  as  gin,  whiskey,  rum,  vodka, et cetera.

1. Further, the slight reputation of the APOTHIC Red trade mark is in relation to a budget- priced red wine.  Spirits are generally more expensive than are budget wines.

1. Having regard to the differences between the parties’ goods and their different price-points, the distinct areas within retailers in which the parties’ goods are sold, the short period of use in Australia of the APOTHIC RED trade mark of some five months before the Relevant Date, the slightness of the reputation of the Opponent’s APOTHIC RED trade mark, and the differences between the parties’ trade marks which I have discussed above, I do not consider that there was, at the Priority Date, a likelihood of confusion or deception in terms of section 60 of the Act arising from the Applicant’s use of the Trade Mark.

1. The Opponent has not established its ground under section 60 of the Act.

Section 42

Statement of Grounds and Particulars

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

The Opponent has been using its APOTHIC and APOTHIC family of trade marks (APOTHIC Trade Marks) in commerce in the USA in relation to alcoholic beverages, since as early as 2009. Since this time, the sale of alcoholic beverages bearing the APOTHIC Trade Marks has expanded on a global basis, including sales in Australia since 2015.

Due to its longevity and exclusivity of use, the Opponent has established substantial and valuable goodwill in its APOTHIC Trade Marks both in Australia and throughout the world.

Based on the Opponent's reputation in its APOTHIC Trade Marks, any use of the Opposed Trade Mark by the Applicant would be misleading or deceptive and/or constitute false representations contrary to Sections 18 and 29 of the Australian Competition and Consumer Act 2010 (Cth). Such use may also constitute common law passing off in respect of the Opponent's reputation and goodwill and would therefore be contrary to law under Section 42(b) of the Act.

1. I note now, in relation to the above assertion, that Mr French’s declaration does not establish use in Australia in relation to any alcoholic beverage other than wine and evidence of that use is limited to the APOTHIC Red trade mark in relation to red wine.

The Act

1. Section 42 of the Act relevantly provides:

42    Trade mark scandalous or its use contrary to law

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

(b)  its use would be contrary to law.

1. The onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.22

1. As the Registrar’s delegate observed in Ingeus Australia Pty Ltd and Ingeus Pty Ltd v Qantas Airways Ltd:23

29. In the present matter the Opponent failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,24   I  am  satisfied  that  the

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

23 [2018] ATMO 23 at [29].

24 See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd  [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

Opponents have also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

30. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.25 Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:26

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.

1. It follows that the Opponent has not established its opposition under section 42 of the Act.

Section 43

Statement of Grounds and Particulars

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

The Opposed Trade Mark contains the word GIN, which is one particular type of spirit. Consequently, any use by the Applicant of the Opposed Trade Mark in relation to goods which are not gin would be likely to deceive or cause confusion contrary to section 43 of the Act.

The Act

1. Section 43 of the Act provides:

43    Trade 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.

1. To found the ground under section 43 the Opponent must establish that the Applicant’s use of the Trade Mark in relation to the particular goods would (not ‘could’) be likely to deceive or cause confusion.

25 [2003] FCA 104, [107].

26 [1989] FCA 506, [40] (citations omitted).

Submissions

1. The Opponent submits:

In the context of the APOTHECARY GIN mark, we submit that where the trade mark consists of or contains a description of goods, deception or confusion is likely to result if the trade mark is used for goods which are not of that description. The APOTHECARY GIN mark contains promptly [sic] the word GIN. The clear connotation is that the goods sold by reference to that mark will be gin. Gin is defined by the Macquarie dictionary as "an alcoholic beverage obtained by redescent spirits with flavouring agents especially juniper berries, orange peel, and jelica root et cetera". The liquor known as gin is well known and understood, and is made available for sale to customers in discrete sections of alcoholic retailers where it is clearly identified, and sold with other products of the same type.

Discussion

1. It is useful to initially observe that the Opponent appears to be arguing for the invalidity of at least one of its own registered trade marks; for example, 1342300 APOTHIC RED is registered for “Alcoholic beverages (except beers)” and thus could be deceptively used by the Opponent on white wines, sparkling whites, rosés, or spirituous liquors which are included within that specification of goods. Of course, the Opponent would not be likely to do this and, likewise, neither would the Applicant be likely to use the Trade Mark in the manner suggested by the Opponent.

1. Under the Trade Marks Act 1955, it was the practice of the Registrar to enter onto the Register an endorsement in the form of a “claim to vary” in situations where a description within a trade mark (extrinsic to its essential feature), such as the words “gin” or “red” here, was a description of substantially narrower compass than that of the specification of goods. Such claims to vary read along the lines of “In use the description ‘gin’ within the trade mark is varied to accord with the application of the trade mark to other goods contained within the specification”.

1. Since the commencement of the Act such claims may be viewed as being implicit in the particular registrations.

1. The case-law relied upon by the Opponent to support this ground either pre-dates the commencement of the Act or is of the ilk of Rubelli Spa v Virtual Couch Industries Sdnp

Bhd27 (‘Rubelli’). In Rubelli the trade mark consisted of the Italian surname “Rubelli” superimposed upon the likeness of the Italian Flag and its use would have been confusing as it connoted that the goods came from Italy whereas they did not: as a result the delegate found that the use of the trade mark would, not could, be likely to confuse or deceive – the connotation was not (as are the words “red” or “gin” in the present circumstances) discrete from the essential elements of the particular trade mark: the connotation was contained within the essential elements and was not severable from them.  Likewise in the cases relied

upon by the Opponent such those concerning the trade marks “Portalto”,28  “NuGrape”,29

and “Bubbleup”30 – the connotations are within the essential features of those trade marks, not in some obviously descriptive matter that occurs alongside the essential features from which those trade marks’ identities derived which could be varied in the application of those trade marks to the different goods within their specifications.31

1. Accordingly, whilst the Trade Mark could be used in a confusing or deceptive manner, there is no evidence before me which suggests that it is likely that it would be used in this way and that the Applicant would not vary the use of the word “gin” in the application of the Trade Mark to other goods within its specification of goods as might be appropriate.

1. The Opponent has not established its ground under section 43 of the Act.

Section 62A

Statement of Grounds and Particulars

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

The Opponent has been using its APOTHIC Trade Marks in commerce in the USA in relation to alcoholic beverages, since as early as 2009. Since this time, the sale of alcoholic beverages bearing the APOTHIC Trade Marks has expanded on a global basis, including sales in Australia since 2015.

The Opposed Trade Mark is deceptively similar to the Opponent's APOTHIC Trade Marks and is applied for in relation to the same goods as those of the Opponent's goods. Due to its longevity and exclusivity of use, the Opponent has established substantial goodwill and extensive reputation in its APOTHIC Trade

27 (2011) ATMO 3.

28 ”PORTALTO” Trademark [1967] RPC 617.
29 National Nugrape Co’s Application (1971) 41 AOJP 3483.

30 Seven-Up Co v Bulle Up Co Inc (1987) 9 IPR 259.

31 See also Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.).

Marks both in Australia and throughout the world. In light of the Opponent's noted reputation, it is likely that the Applicant would have been aware of the APOTHIC Trade Marks at the time of filing the Application.

Given that the Opposed Trade Mark is deceptively similar to the Opponent's APOTHIC Trade Marks, it can be inferred that at the filing date, the Applicant adopted the Opposed Trade Mark in order to gain a benefit by appropriating the Opponent's APOTHIC Trade Marks. The Applicant ought to have known at the time of filing that it was not entitled to apply for registration of the Opposed Trade Mark in Australia, therefore the Application was filed in bad faith contrary to section 62A of Act.

The Act

1. Section 62A of the Act provides:

62A Application made in bad faith

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

Discussion

1. In terms of the ground as posited in the Statement of Grounds and Particulars and my discussion of the section 60 ground, this ground cannot be established.

1. I have observed, above, that “… (on the figures supplied by the Opponent) if the goods bearing the APOTHIC Red trade mark were (as is submitted by the Opponent) sold through each of 200 Dan Murphy stores in Australia and this was throughout the claimed period of use of about a year and a half up to Mr French making his declaration, each store would have sold at a rate of around six dozen bottles a year or under two bottles a week.”

2. There are estimated to be about 2468 wineries in Australia.32 It would, in my view, be most unlikely that wine-makers in Australia would be aware of all of the trade marks used by other Australian vintners – let alone be aware of the trade mark of an imported wine with a slight reputation in Australia.  This must be truer of a person who is not a wine-maker but is a distiller.

1. It is accordingly not clear on this basis that the Applicant must have noticed the Opponent’s Trade Marks prior to the Relevant Date and, in her declaration, Ms Booth states that she did

32        Further, and in any event, mere knowledge of another person’s trade mark(s) prior to the filing of an application does not on its own constitute bad faith.33

1. The Opponent has not established its grounds under section 62A of the Act.

Decision

1. Section 55 of the Act relevantly provides:

55  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.

1. The Opponent has not established its opposition to registration.

1. 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.

Costs

1. The Opponent has requested its costs in this matter. As, however, the Opponent was not the successful party it is appropriate that I award costs against the Opponent at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 15 January 2019

33  See, for example, Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, at [147]; and

Dunlop Aircraft Tyres Ltd v The Goodyear Tire & Rubber Co [2018] FCA 1014 at [245] to [253].