Endeavour Group Ltd v Southcorp Brands Pty Ltd

[2023] ATMO 127

TRADE MARKS ACT 1995

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

Re:Oppositions by Endeavour Group Ltd to registration of trade mark application number 1906783 (class 33) BIN 2 and 1906784 (class 33) BIN 8 – both in the name of Southcorp Brands Pty Ltd

Delegate:

Adrian Richards

Representation:

Opponent: Gilbert Tsang of Counsel instructed by King & Wood Mallesons

Applicant: Frances St John of Counsel instructed by Herbert Smith Freehills

Decision:

2023 ATMO 127

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 41 and 58 – s 41 ground established – registration of each trade mark refused

Background

1. This decision concerns oppositions under s 52 of the Trade Marks Act 1995 (Cth)[1] by Endeavour Group Ltd (‘Opponent’) to registration of trade mark applications 1906783 and 1906784 (together, ‘Applications’), both in the name of Southcorp Brands Pty Ltd (‘Applicant’). The Applications seek registration of BIN 2 and BIN 8 (together, ‘Trade Marks’) respectively. Both claim wine in class 33 (‘Applicant’s Goods’), and were filed on 13 February 2018 (‘Relevant Date’).

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

2. Ever since they obtained the same filing date, the Applications’ procedural history have run almost as one, and the present oppositions were no exception. Both were examined and advertised as accepted for possible registration on 22 October 2020. Then on 22 December 2020, the Opponent filed a pair of Notices of Intention to Oppose registration of each of the Trade Marks. On 22 January 2021, the Opponent followed this with Statements of Grounds and Particulars (‘SGP’). The Applicants filed twin Notices of Intention to Defend the applications from opposition on 26 February 2021.

3. The Opponent filed Evidence in Support (‘EIS’), which covered both oppositions, on 28 February 2022. The Applicant did the same with its Evidence in Answer (‘EIA’) on 2 June 2022. The Opponent then filed Evidence in Reply (‘EIR’) on 8 August 2022.

4. The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. I heard both oppositions together in my capacity as a delegate of the Registrar of Trade Marks on 30 May 2023. Providing submissions for the Applicant was Frances St John of Counsel, instructed by Jeremy Herz and Katya Udorovic of Herbert Smith Freehills. The Opponent’s submissions were made by Gilbert Tsang of Counsel, instructed by Cate Nagy, Daniel Smith and Victoria James of King and Wood Mallesons. Observing the hearing were officers of both the Opponent and Applicant.

Grounds and onus

1. The SGP nominates ss 41 and 58 as grounds of opposition. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

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

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

Evidence

1. The following evidence was filed during these proceedings:

   EIS

   Declaration of Paul Walton, Director of Pinnacle Drinks at the Opponent made on 25 February 2022, with Exhibit PW-1 (containing Tabs 1 to 7) (‘Walton’).

   EIA

   Declaration of Anna Gabrielle Olsen, Director of Intellectual Property of Treasury Wine Estates Limited made on 2 June 2022 with Exhibits AGG-1 to AGG-14, AGG-16 to AGG-21, AGG-24 to AGG-30 and Confidential Exhibits AGG-15, AGG-22 and AGG-23 (‘Olsen’).

   EIR

   Declaration of Victoria Suzanne James, legal counsel of the Opponent made on 5 August 2022 with Exhibit VSJ-1 (Containing Tabs 1 to 7) (‘James’).

   Declaration by Andrew Caillard, Master of Wine, wine producer, wine writer and author, and consultant to the Opponent made on 8 August 2022 (‘Caillard’).

   Declaration by Michael Fragos, General Manager and Chief Winemaker Chapel Hill Winery Pty Ltd made on 8 August 2022 (‘Fragos’).

Preliminary Matters

1. Prior to considering the grounds of opposition, three matters arise from the procedural history of these oppositions.

2. Firstly, the body text of Walton mentions an Exhibit PW-2. This exhibit was filed with this office under separate cover, with a request that it not be shown to the Applicant. This office responded by explaining evidence not offered on an open basis is not properly filed (there being an obligation on this office to ‘give’ a copy of all evidence to the other party). The Opponent then wrote to this office stating that it will not be relying on the exhibit. As such, so far as it arguably may still be considered to form part of these proceedings, I give Exhibit PW-2 no weight.

3. Secondly, the Opponent has requested an amendment to the SGP under reg 5.12(1)(d) to amend the facts and circumstances forming the basis for the opposition under s 58 for application 1906784 (ie BIN 8). The amendment seeks to add Southern Vales, a wine producer in South Australia, as an alternative first user to the Opponent. Since I have decided this opposition under s 41, and have not needed to consider s 58, no purpose would be served by the amendment. Insofar as this remains a formal request, I refuse it now for want of purpose.

4. Thirdly, in respect of the EIR, the Applicant has objected to all but paragraphs 9 and 10 of James and the entirety of Caillard and Fragos on the basis that the contents of the declarations are not in reply to the EIA.

5. In the Opponent’s oral submissions, Counsel argued that the evidence was in reply and stated as follows:

   • the EIS was prepared before the Opponent knew what evidence the Applicant would rely on for s 41 and s 58;
   • in respect of s 41, it was open to the Applicant not to file any evidence but it chose to file evidence of factual distinctiveness based on evidence of use;
   • the EIR was appropriate to respond to what consumers and traders understand the word BIN to mean when they see BIN 2 and BIN 8 and that BIN is used by others;
   • the Registrar is not bound by the rules of evidence; and
   • the evidence is probative.

6. The Applicant has objected to the EIR on a few bases including that there was no reason this material could not have been put on as part of the EIS and the lack of probative value of the evidence.

7. The Applicant states that third party use of BIN 2 and BIN 8 was not in issue in the opposition until the EIR, and had it been in the EIS, the Applicant has evidence that would have gone at least some way to answering these three declarations. The Applicant says it did not put that evidence on, because it has been given no opportunity. A tantalising aspect to all of this is that evidence of this sort was plainly submitted by the Applicant to this office during examination of the Applications, since both were accepted under s 41(4).

8. The EIR was an Opponent’s opportunity to reply to the Applicant’s EIA. By its very name, the EIR should be limited to replying to issues canvassed in the EIA. EIR should not be treated as an opportunity to rectify deficiencies in an Opponent’s case:

   The other material has, in my view, been provided in an attempt to rectify deficiencies in the opponent’s case which have been identified by the applicant, rather than to contradict the applicant’s evidence.[4]

   [4] Optech International Ltd v Buxton Micrarium Ltd (1993) 28 IPR 649, 654.

9. In the interests of speedy and fair proceedings, an opponent should as soon as possible state what their case is, preferably in the evidence in support, and put in declarations any evidence which they think may be relevant to that case:

   The general position in regard to onus…reads as follows: ‘When the onus of proof on all issues is on one party, that party must ordinarily, when presenting his case, adduce all his evidence, and may not, after the close of his opponent's case, seek to adduce additional evidence to strengthen his own case.’[5]

   To my mind it is quite wrong in these cases that there should be any sort of skirmishing in regard to evidence, and if an opponent has a case he should straight away state what his case is and should put in declarations dealing with any evidence which he thinks may be relevant to that case. The applicant can then deal with the matter in the normal way, and a lot of time is saved, and the Office can get on with deciding the case. If the opponent does not do that and waits until he sees what the applicant says, then obvious difficulties will result and oppositions will inevitably be drawn out and never finished.[6]

   Here, in my judgment, it should have been obvious to the Opponent from the start that if they were going to succeed … they must in the first instance put in the evidence which they are now seeking to put in reply…[7]

   [5] Ernest Scragg & Sons Ltd's Application [1972] RPC 679, 682 (Graham J).

   [6] Ibid.

   [7] Ibid 683.

10. Under reg 21.15(4), the ‘Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’:

    [a] tribunal of this kind is master of its own procedure, provided that the rules of natural justice are applied. … Tribunals are entitled to act on any material which is logically probative, even though it is not evidence in a court of law.[8]

    [8] TA Miller Ltd v Minister for Housing & Local Government [1969] RPC 91, 93 (Lord Denning MR).

11. The practicalities of not being bound by the rules of evidence have been described in the following terms:

    The requirement that a person exercising quasi-judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant. It means that he must not spin a coin or consult an astrologer, but he may take into account any material which, as a matter of reason, has some probative valuein the sense mentioned above. If it is capable of having any probative value, the weight to be attached to it is a matter for the person to whom Parliament has entrusted the responsibility of deciding the issue.[9]

    [9] R v Deputy Industrial Injuries Commissioner (1965) 1 QB 456, 488 (Diplock LJ).

12. I am not, as a matter of law, compelled to exclude evidence which does not properly constitute evidence in reply. Hence, where evidence is filed in time objections are typically based on its probative value rather than its ‘admissibility’ in the sense often entertained in courts (and other bodies subject to rules of evidence). In Malibu Boats West Inc v Catanese, Finkelstein J stated:

    It should be borne in mind, however, that the proceeding before the registrar was not a curial proceeding and many of the rules that are applicable to courts have no application. That proceeding was an administrative proceeding before a person exercising a statutory function. The only question that arises in relation to the rejection of evidence is whether the decision maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be proper or fair for an administrative decision maker to ignore relevant material while discharging his or her statutory duty. As a result, when the registrar is required to decide whether a mark qualifies for registration, the registrar is not entitled to disregard evidence which bears upon that question.[10]

    [10] [2000] FCA 1141 [24].

13. In the EIS, the Opponent referenced use of the term BIN by third parties.[11] This evidence appears to have been obtained from the results of internet searches. James then provides the following (with my emphasis):

    • Paragraph 7 - Behind Tab 2 of Exhibit VSJ-1 are the following articles which refer to the use of the term BIN on wines…
    • Paragraph 8 - Behind Tab 3 of Exhibit VSJ-1 are extracts from The Canberra Times, showing use of the term BIN by third parties in relation to the following wine goods…
    • Paragraph 12 - Behind Tab 7 of Exhibit VSJ-1 are printouts of webpages showing use of the term BIN by third parties in relation to the following wine goods…

    [11] Walton, [29]-[32].

14. It is clear from a comparison of the EIS and James that the Opponent already had attempted to show use of the term BIN by third parties in the EIS. In the EIR it has thus plainly sought to top up that evidence. In fact, one of the examples of use in James[12] is very similar to that filed in the EIS.[13] This certainly appears as an attempt by the Opponent to rectify deficiencies in the EIS, rather than reply to matters raised in the EIA. The Opponent’s internet search results in the EIR could have been undertaken earlier and the results provided in the EIS.

    [12] Tab 2 of Exhibit VSJ-1.

    [13] Tab 5 of Exhibit PW-1.

15. The SGP alleges that ‘the Applicant has not made any or sufficient use of the [Trade Marks] in Australia such that it can rely on the provisos in sections 41(3) or 41(4)’. The presence of evidence of use in the Applicant's EIA is thus in answer to the opposition, since it answers the issues raised by the SGP and the EIS.

16. Since the Opponent relied on, and particularised, s 41 and s 58 in the SGP and it should have, at the outset, put in evidence considered to possibly be relevant to its case.

17. I shall make two more points regarding James. The first concerns its probative value. Much of the printouts in the evidence are after the Relevant Date or are undated. They have little probative value in deciding on the success or failure of the opposition grounds.

18. The second is that this office is aware of various dictionaries, including the Macquarie Dictionary and will routinely take their content into account when deciding on various issues. While James purports to enter the dictionary definition of BIN into evidence, and when it did it so this was arguably not in reply, this procedural issue does not blind me to that definition. The presence of the dictionary definition of the word BIN in the Macquarie Dictionary has been part of these proceedings from the outset—it was reproduced in the SGP. It would be artificial for me to pretend this definition was first introduced in James.

19. I have already agreed with the Applicant that third party use of specifically BIN 2 and BIN 8 (as opposed to BIN in general) was not in issue in the opposition until the EIR and that admitting that evidence would visit serious procedural unfairness on the Applicant. Its probative value at any rate would be slight, being single advertisements from various old newspapers and the like.

20. Only paragraphs 1 to 5 (which introduce the declarant) and paragraphs 9 and 10 (together with their respective Exhibits) in James are in reply. I give the remainder of James no weight.

21. As for Caillard and Fragos, both refer to the use of BIN in the wine industry, which as stated previously in respect of James, appear to be an attempt by the Opponent to rectify deficiencies in the Opponent’s case. I reach the same conclusion in respect of Caillard and Fragos regarding use of the term BIN.

22. Paragraphs 15, 16 and 17 of Caillard and paragraphs 13 and 14 of Fragos refer to use of BIN 2 and BIN 8 by third parties. These paragraphs are arguably in response to the Applicant’s claim in the EIA concerning recognition of BIN 2 and BIN 8 by consumers. Therefore, I find that these 5 clauses are in reply.

23. Only paragraphs 1 to 10 (which introduce the declarant) and paragraphs 15 to 17 in Caillard are in reply. I give the remainder of this declaration no weight.

24. Similarly, only paragraphs 1 to 7 (which introduce the declarant) and paragraphs 13 and 14 in Fragos are in reply. I give the remainder of this declaration no weight.

EIS

1. Walton begins with a summary of the Opponent’s drinks retailing and hospitality business. The Opponent operates a portfolio of complementary brands and businesses including BWS, Dan Murphy’s, Cellarmasters, ALH Group licensed venues, ALH Group retail liquor outlets and wineries including Dorrien Estate.

2. Walton asserts that the Dorrien Estate winery has used the term BIN in relation to wine goods since as early as 2005 in respect of BIN 8 and 2009 in respect of BIN 2. The range of wines include Bin 2 Merlot 2016 and Bin 8 Rose 2016. Walton declares that in addition to the BIN 2 and BIN 8 wine varieties, Dorrien Estate also sells and produces other wine varieties which use the word BIN with a single digit numeral. Walton provides an undated printout of the website showing the range of wines, a range of undated copies of advertisements in unnamed publications with unknown circulation showing one or more in the range of wines and one copy of an advertisement in an unnamed publications dated after the Relevant Date.

3. The Dorrien Estate range of wines are sold through BWS, Dan Murphy’s and Cellarmasters. Walton provides total bottles sold and total revenue for the Dorrien Estate BIN 8 and BIN 2 wines between 2009 and 2022 but does not indicate if these figures are only for Australia, elsewhere or both. Walton also provides the Opponent’s approximate advertising and promotional expenditure in 2021.

4. Walton provides 2 examples of labels of the Dorrien Estate BIN 8 wine namely a sample 2008 vintage label dated in 2008 and an example of the 2020 vintage label and, an example of a label of the 2009 vintage Dorrien Estate BIN 2 wine dated in 2009.

5. Walton asserts that he is aware that the term BIN is commonly used in the wine industry to indicate the location identification number associated with a particular wine, being the area in a cellar in which the wines were historically stored. He provides 3 article printouts from the internet to support this claim. There is no indication of the qualification of the authors of these articles, the source of the information contained within them or whether those authors are well placed to provide a view on the meaning of the word BIN. There is also no evidence of how many times, if any, before the Relevant Date, these articles were read by anyone in Australia. I consider this evidence to have very little probative value.

6. Walton then declares his awareness of the Applicant’s use of the terms BIN 2 and BIN 8 on certain wine goods, and states that the Applicant is only one of a number of wine producers (unrelated to the Applicant) that use BIN-formative terms on wines in Australia. He provides undated screenshots from the Vintage Cellars website and the Dan Murphy’s web site showing a variety of wines which use the term BIN with a numeral. While there are several examples provided, none of the numerals accompanying BIN are 2 or 8.

EIA

1. Olsen begins by explaining that the Applicant is a subsidiary of Treasury Wine Estates Limited. It goes on to explain that all references in that declaration to these two companies will be referred to collectively. That is, in the Applicant’s only evidence in these proceedings, no distinction is made between the Applicant and Treasury Wine Estates Limited. Nothing appears to turn on this, apart from it making the Applicant’s evidence, and therefore these reasons somewhat more opaque than they need to be. I am left with no choice other than to follow the lead in Olsen, and refer to these two entities as though they were one. I will continue to refer to them as the Applicant.

2. The Applicant sells wine across the world under a stable of brands including well established, internationally recognised brands such as Penfolds. The Applicant operates more than 17 wineries throughout the world, including in Australia.

3. Olsen provides information specific to the Penfolds brand. She asserts it has been in use in Australia by the Applicant and its predecessors in title since 1844 in connection with winemaking, wine and related goods and services. Olsen also asserts that Penfolds wines have been promoted and sold extensively in Australia and throughout the world.

1. Olsen refers to the use of BIN numbers by the Applicant and its predecessors in title[14] and asserts that they have been used as trade marks on the labels of Penfolds wines since at least 1953. Olsen also asserts that as a result of longstanding use and promotion, the Penfolds BIN numbers have acquired distinctiveness as trade marks, functioning as exclusive indicators of origin of Penfolds wines.

   [14] Further references to Applicant will include the Applicant’s predecessors in title.

2. Olsen asserts that the Penfolds wine labels within its BIN range ‘differ very little save for a clear indication of the different BIN number, identifying a different sub-tier of wine within the Penfolds range’. Olsen provides examples of the BIN 2 and BIN 8 marks applied to labels of Penfolds wine as well as an example showing all wines in the BIN range. None of these examples are dated.

3. In relation to BIN 2, Olsen asserts that the Applicant’s adoption and first use of term occurred in Australia in 1953 on Grange Shiraz. An excerpt from the Penfolds collector’s guide titled Penfolds: The Rewards of Patience Edition 8, published in 2020 in Australia and authored by Andrew Caillard (‘Rewards of Patience’), is annexed in support of this.

4. Olsen then goes on to assert that in 1960, the Applicant first applied the BIN 2 trade mark to a commercial release of Shiraz Mataro (also known as Shiraz Mourvédre) in Australia. Olsen provides photographs of a bottle of the 1960 vintage of the BIN 2 Shiraz Mataro and a further excerpt from Rewards of Patience referencing this release.

5. Olsen then asserts that the BIN 2 Shiraz Mataro has been produced in Australia by the Applicant continuously for each vintage since 2001. Olsen provides label artwork dated in 2003 for the 2001 vintage of Penfolds BIN 2 Shiraz Mourvédre to support this claim.

6. For the BIN 8 trade mark, Olsen asserts that its first use in Australia was 2003 for the Penfolds BIN 8 Cabernet Shiraz. Olsen asserts that the Applicant has continuously produced this wine for each vintage in Australia ever since.

7. Olsen declares that BIN 8 was adopted as a trade mark by the Applicant because the wine uses older oak previously used for BIN 389, BIN 128 and BIN 28 – with the numeral ‘8’ providing the common thread. The BIN 8 mark therefore deriving its number from the wine’s shared relationship with those three earlier offerings. Olsen provides the label artwork dated in 2004 for the 2003 vintage of the Penfolds BIN 8 Cabernet Shiraz.

8. Olsen asserts that the advertising and promotion of BIN 2 and BIN 8 in Australia has been extensive and continuous since at least 2003. Olsen provides annual advertising expenditure in Australia from 2015 to 2019 for BIN 2 and BIN 8. This expenditure is extensive, especially for BIN 2. The advertising methods are stated to include print and online advertising in newspapers, magazines and catalogues, advertising on websites and social media platforms Instagram (created 24 October 2013) and Facebook (created 12 January 2013) and promotion at wine shows, wine tastings and exhibitions.

9. Olsen provides screenshots obtained from the Internet Archive Wayback Machine showing use of BIN 2 on the Penfolds Australian website from as early as 2003 until at least 2008 and use of BIN 8 from as early as 2004 until at least 2008 and screenshots from the current Penfold’s website in 2019 and 2022.

10. Olsen also provides photographs showing marketing of the Applicant’s 2018 release of BIN 8 at Vintage Cellars stores and in advertising materials and screenshots of posts from the Penfolds Instagram account showing use of the BIN 2 and BIN 8 marks from 4 March 2014 until at least 22 October 2021 and the Penfolds Facebook page showing use of BIN 2 and BIN 8 marks from 3 March 2014 until at least 15 April 2017. I note that not all this evidence is dated before the Relevant Date.

11. Olsen asserts that the Trade Marks have accrued a substantial reputation in respect of the wine through extensive use, promotion and acclaim in Australia which is recognised by both the wine industry and relevant consumers. Olsen provides a summary of some of the awards and accolades that have been attributed to the Applicant’s BIN 2 wines for the vintages of 2010 to 2015 and BIN 8 wines for the vintages 2012 to 2014 in Australia.

12. Olsen provides the annual wholesale value of wine sold in Australia under Trade Marks from 2015 to 2019 and annual sales volumes in Australia from 2013 to 2020. The figures for each are very significant.

13. Olsen asserts that the Opponent has been a customer of the Applicant for many years, including in respect of the Applicant’s BIN 2 and BIN 8 wines, and that the Applicant has sold and promoted these BIN 2 and BIN 8 wines through the Opponent’s businesses including at Dan Murphy’s, BWS and Langton’s auction platform. Olsen provides printouts obtained online on 31 May 2022 from Langton’s web site showing the sales of various vintages of the Applicant’s BIN 2 and BIN 8 wines. I note that the printouts are dated after the Relevant Date.

14. Olsen declares that the BIN 2 and BIN 8 marks are readily recognised by consumers as denoting the Applicant’s Penfolds BIN 2 and BIN 8 wine and provides Google search printouts from May 2019 and June 2022 showing the results for a search for BIN 2 WINE and BIN 8 WINE. I note that the printouts are dated after the Relevant Date.

15. Olsen states that the Registrar of Trade Marks has previously recognised that marks that take the construction ‘BIN + numeral’ are capable of distinguishing wines and functioning as trade marks and provides extracts from the Register of Trade Marks showing several trade marks in the formula BIN + numeral in the names of the Applicant’s entities and in the names of third parties.

EIR

1. James provides background information in paragraphs 1 – 5. Paragraphs 9 and 10 and their associated exhibits provide Google search printouts from July 2022 of BIN 2 WINE and BIN 8 WINE, with an operator excluding results for Penfold(s).

2. Relevantly to the discussion that will follow, Caillard asserts his awareness of the Applicant’s use of the word ‘BIN’ alongside numerical identifiers on certain wine goods, including on wines that he considers have reached a level of fame such that he would consider them ‘household names’, such as BIN 28, BIN 128, BIN 389, BIN 407, and BIN 707. He then asserts that because of the historical basis of and descriptive nature of the word ‘BIN’, the use of the word 'BIN' alongside a single digit number is not exclusive to the Applicant. He declares that there are a significant number of other wineries using the word 'BIN' alongside a numerical or alpha-numerical identifier in relation to wine, particularly 'BIN 2' and 'BIN 8'. He declares his awareness of other wine labels use the terms 'BIN 2' and 'BIN 8' in order to refer to specific wines within their range, long before the Relevant Date. On this basis he does not think that either now or at the Relevant Date, 'BIN 2' or 'BIN 8' distinguish or are capable of distinguishing the Applicant's wines from wines of other wine producers. Caillard does not provide any evidence to support his opinion. Rather he refers to the exhibits to the declarations filed or to be filed alongside his declaration as evidence in this opposition as examples of use.

3. Fragos provides background information in paragraphs 1 – 7 about his experience and qualifications. Since February 2004, he has worked at Chapel Hill winery.

4. Fragos states he frequently and regularly interacts with other wine related business and individual wine customers and is not aware of any instances where a customer has used either 'BIN 2' or 'BIN 8' to refer to a wine made by a specific winemaker. He also claims his awareness that both 'BIN 2' and 'BIN 8' are, and were at the Relevant Date, used by a range of different winemakers. Fragos does not provide any evidence to corroborate these statements.

Discussion

Section 41

1. Section 41 provides:

   Trade 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. A crucial issue in analysing a potential ground of opposition under s 41 requires consideration be given to the extent, if any, of a trade mark’s inherent adaptation to distinguish the goods and services. According to Kitto J in Clark Equipment Co v Registrar of Trade Marks this is assessed:

   [B]y 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[15]

   [15] [1964] 111 CLR 511, 514.

3. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[16] explained that the test for inherent distinctiveness under s 41 involves a two-step process. Firstly, to ascertain what is the ordinary signification of the trade mark in Australia to persons who will purchase, consume or trade in the goods.[17] Secondly, once the ordinary signification is established, to ask whether other traders might legitimately desire to use the trade mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of the same or similar goods.

   [16] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).

   [17] Ibid [71].

4. What will inform this enquiry is how the word or words are understood by the target audience, being those who purchase, consume or trade in the goods and services. The relevant enquiry is whether the trade mark as a whole (ie the combination of elements in the manner in which they are arranged) is capable of distinguishing the relevant goods or services. When the trade mark consists of several elements, the enquiry is not whether each element is separately registrable.[18] Nor is it a requirement that the words comprising a trade mark be totally meaningless for a trade mark to be registrable.[19]

   [18] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380 (Lawrence J).

   [19] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 [34] (Wilcox J).

5. The SGP relevantly alleges that the Trade Marks are not inherently adapted to distinguish the Applicant’s Goods from the goods of other traders. The reasons offered therein were:

   • The word BIN in its ordinary signification is a reference to the location where wine is kept or stored, with these storage vessels numbered to distinguish and record where a specific wine was stored within the winery; and
   • BIN is directly descriptive, non-distinctive and generic for wine describing a particular bottling, usually of above average quality.
   • Therefore BIN 2 and BIN 8 describes a character or quality of wine and should therefore be available to other traders for use and is actually in use by other traders in the ordinary course of their business and without any improper motive in connection with similar goods.
   • Further, there has been no use or insufficient use by the Applicant of the Trade Marks such that it can rely on the provisos in sections 41(3) or 41(4) of the Act.

6. The Opponent submits that the evidence demonstrates that as at the Relevant Date the term ‘BIN’ when used alongside a number (such as 2 or 8) in relation to wine had at least the following two ordinary significations.

   • One of many ‘bottlings’ or ‘blends’ so that ‘BIN 2’ or ‘BIN 8’ is used as a generic term by winemakers to identify a particular ‘bottling’ or ‘blend’ of wine –with each unique BIN number representing a different wine within the range.
   • A physical storage area in a wine cellar where the wine is held and stored before its release for sale.

7. Reliance for these propositions is placed on a number of factors including:

   • The meaning of BIN in the Macquarie Dictionary. In this regard, I accept that the Macquarie Dictionary definition of BIN with respect to wine is “a particular bottling, usually of above average quality”. I also accept that there is no separate definition of BIN 2 or BIN 8 in the Macquarie Dictionary.
   • The Applicant’s own use of the signs BIN 2 and BIN 8 in its own promotional materials. My reading of this evidence is that it falls short in establishing generic use of BIN 2 and BIN 8.
   • Olsen stating ‘[t]he Penfolds wine labels of the BIN range differ very little save for a clear indication of the different BIN number, identifying a different sub-tier of wine within the Penfolds range.’ That is to say, that the trade mark in operation is Penfolds, and not either of the Trade Marks. In my opinion, this quote must be read in the context of the previous paragraph 17 regarding Penfolds’ BIN numbers having ‘acquired distinctiveness as trade marks’ ‘as a result of their longstanding use and promotion’, rather than in isolation. Therefore, I do not agree with the Opponent’s reading that Olsen’s own conception of the term ‘BIN’ is that it is well understood to be a mere reference to one of a range of other varieties of wines sold under the Penfolds brand.
   • The Opponent’s use of the signs BIN 2 and BIN 8 under the Dorrien Estate wine brand. The evidence relied upon here was discussed above at [47] of these reasons. This evidence too falls short in establishing that there is generic use of BIN 2 and BIN 8.
   • How retailers and/or distributors use the term ‘BIN’ in 5 examples of “Bin End Merlot”, “Merlot Bin End”, “Bin End Rosé”, “Bin Ends Rosé” or “Rosé Bin End” in the evidence discussed above at [47] of these reasons. Further the terms appear to be used as alternatives to other terms such as stocktake sale, sale mixes, cellar clearance mix amongst others. This does not establish that there has been generic use of BIN 2 and BIN 8.
   • The suggestion that the practice of using BIN numbers in relation to wine for this purpose occurs most often amongst Australia winemakers. The evidence relied upon is discussed above in paragraph [50] of these reasons. Again, this evidence falls short in establishing generic use of the specific numbers of BIN 2 and BIN 8.
   • The Applicant’s evidence referring to the launch of the first of Penfolds’ now-familiar Bin wines, being originally named after the storage area in the cellars where they were aged. The launch of the Penfold’s Bin wines was many years ago and this evidence therefore falls short that at the Relevant Date, BIN 2 or BIN 8 could also be understood by those purchasing, consuming or trading in wine to be a reference to the fact that the wine has been stored in the winemaker’s cellar or storage area in a location denoted in the winemaker’s inventory as ‘BIN 2’ or ‘BIN 8’.
   • The Macquarie Dictionary definition of BIN as “a partitioned stand used by a winemaker for storing wine in bottles”.
   • The 3 article printouts discussed above in Clause 50 which I have previously concluded are of little probative value.

8. The Applicant’s submissions claim that the marks are sufficiently inherently adapted to distinguish wine on the following bases:

   • This office has previously recognised that marks that take the construction ‘BIN + numeral’ are capable of distinguishing wines and functioning as trade marks. It is well-established that in arriving at a determination of trade mark matters the Registrar can take notice of evidence as to the state of the Register and give appropriate weight to that evidence.[20] While I can take notice of the state of the Register as a relevant factor to be taken into account that a number of ‘BIN + numeral’ marks are registered, I note that none of these earlier marks are for the word BIN + a single numeral. I therefore do not find the existence of these earlier registrations particularly persuasive.
   • ‘BIN 2’ and ‘BIN 8’ are not a direct reference to the wine. ‘Shiraz’ would be such a direct reference. BIN 2 and BIN 8 are at most a covert or skilful allusion to wine.
   • ‘BIN 8’ was adopted as a trade mark because the numeral ‘8’ provided a common thread with BIN 389, BIN 128 and BIN 28 wines.
   • The very significant reputation of the Applicant’s other BIN + numeral marks makes it more likely that consumers who see BIN 2 and BIN 8 will understand them to act as badges of origin. However, while there is evidence that other BIN + numeral marks are used by the Applicant, there is little in way of supported evidence that these other BIN + numeral marks have very significant reputations.

   [20] The HD Lee Company Inc v Tracey Taylor [2013] ATMO 49 (Hearing Officer Spence).

9. On the question of ordinary signification, there is a continuum of distinctiveness, from highly descriptive trade marks to highly distinctive trade marks. This continuum was described in Dodds Family Investments Pty Ltd (formerly Solar Tint Pty Ltd) v Lane Industries Pty Ltd in the following terms:

   Just as the distinction between descriptive and fancy names is not a distinction of law so too it is wrong to see the distinction in black and white terms. The reality is that there is a continuum with at the extremes purely descriptive names at the one end, completely invented names at the other and in between names that contain ordinary English words that are in some way or other at least partly descriptive. The further along the continuum towards the fancy name one goes, the easier it will be for a plaintiff to establish that the words used are descriptive of the plaintiff’s business. The closer along the continuum one moves towards a merely descriptive name the more a plaintiff will need to show that the name has obtained a secondary meaning, equating it with the products of the plaintiff (if the name admits of this — a purely descriptive name probably will not) and the easier it will be to see a small difference in names as adequate to avoid confusion.[21]

   [21] (1993) 26 IPR 261, 269 (Gummow, French and Hill JJ).

1. When assessing marks for inherent distinctiveness, consideration of their ordinary signification should not only be whether they have a direct reference to the character and quality of goods.[22]

   [22] Verrocchi v Direct Chemist Outlet Pty Ltd [2015] FCA 234 (Middleton J).

2. In light of the evidence and submissions of the parties, I am required to decide whether BIN 2 and BIN 8 possesses any ordinary signification and, if they do, whether or not other traders might think of BIN 2 and BIN 8 and want to legitimately use them for that ordinary signification and not necessarily to denote trade origin.

3. Here the Macquarie Dictionary definitions of BIN with respect to wine and particularly the definition ‘a particular bottling, usually of above average quality’ carry with them significant force. Therefore, the word BIN has a direct reference to wine but BIN solus is, of course, neither of the Trade Marks.

4. I also cannot ignore my own knowledge that numerals are commonly used in everyday language to indicate the kind, quality, quantity (particularly quantity) or some other characteristic, of goods.

5. As noted above, BIN 2 and BIN 8 do not have dictionary definitions and the marks here are not BIN solus. It is necessary to consider the Trade Marks as a total composition, rather than the individual constituent elements in isolation,[23] and then assess whether there is a direct reference to the character or quality of wine.

   [23] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [61] (Dodds-Streeton J).

6. In my opinion, a winemaker is most likely to describe a particular bottling by using a single digit numeral with the word BIN. Logically, if it is the first of the winemaker’s bottling, a winemaker would tend to use BIN 1, the second BIN 2 etc. There is a lower likelihood that winemakers would choose to use 2 or 3 digit numerals at random rather than to follow the natural sequence of numbering beginning at 1. Therefore, it strikes me that BIN 2 and BIN 8 are in this way apt for normal description.[24]

   [24] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177, [34] (Wilcox J).

7. When counting anything we generally will start at 1. Little imagination is required in choosing the numerals 2 and 8 in the present context. The numbers being so low, their addition as a single numeral to the word BIN could not, in my estimation of it, convert BIN 2 and BIN 8 from having no distinctiveness, to some. To consumers and traders BIN 2 signifies the second of a winemaker’s bottling be it for an average or higher quality wine and BIN 8, the eighth. I put both BIN 2 and BIN 8 at the highly descriptive end of the continuum of distinctiveness. Given this reasoning, BIN 2 is obviously slightly further toward the highly descriptive end than BIN 8 but for present purposes there is little practical difference apart from the level of evidence likely required under s 41(3).

8. The Opponent has provided evidence of its own use of BIN 1, 2, 3, 4, 6, 7, 8, 9, 10,11 and 14 and evidence of use by others[25] such as BIN 1, 6, 7, 27, 55, 121, 242, 382, 444, 888 and 3000.[26] While much of the Opponent’s evidence of use of BIN + numeral marks is undated or after the Relevant Date, it has some relevance to assessing the probability that, as at the Relevant Date, other traders would want to use the Trade Marks, or something like them. While this evidence can be given only limited weight and is in no sense decisive of the principal issue about the extent to which a mark is inherently adapted to distinguish, it tends to indicate that there was, at the Relevant Date, some likelihood that other traders would want to use the marks in the ordinary course of their businesses and with no improper motive and, therefore, to diminish one’s estimation of the extent to which the marks are inherently adapted to distinguish wine.[27]

   [25] James [9]-[10], Caillard [15 ]–[17] and Fragos [13]–[14].

   [26] Walton ,[22] and Exhibit PW-1.

   [27] Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [101]-[102] (Kenny J).

9. I am satisfied that BIN 2 and BIN 8 are thus ordinarily used to indicate the kind, quality, quantity or the like of a wine and there is a very high likelihood that other traders will legitimately desire to use them (or marks closely resembling them) in relation to wines for their ordinary signification, in the ordinary course of their business. I am accordingly satisfied that BIN 2 and BIN 8 are not inherently adapted to distinguish the Applicant’s Goods from similar wines of other traders so as to qualify for registration on that basis alone.

10. Since I consider that BIN 2 and BIN 8 are not to any extent inherently adapted to distinguish, s 41(3) applies. This means that I must assess whether the Applicant has used of each the Trade Marks respectively to such an extent that one or both do in fact distinguish the Applicant’s Goods as being those of the Applicant.

11. Mere evidence of use of a sign does not establish its distinctiveness for trade mark purposes. Thus, the mere use of BIN 2 and BIN 8 by the Applicant does not, of itself, establish that those words distinguish the Applicant’s wine from the wine of other persons.

12. In British Sugar plc v James Robertson & Sons Ltd, Jacob J observed:

    There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is The Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. of Canada Ltd. in the Privy Council and the United Kingdom case The Shredded Wheat Co. Ltd. v. Kellogg Co. of Great Britain Ltd. in the House of Lords. In the former case Lord Russell said.

    “A word or words to be really distinctive of a person’s goods must generally speaking be incapable of application to the goods of anyone else.”

    It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader. This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.[28]

    [28] [1996] RPC 281, 302 (citations omitted).

13. Section 41(3)(b) recognises that a trade mark may be descriptive but still also distinctive if, at the filing date (which here is the Relevant Date), it has acquired a new and secondary meaning different from its primary descriptive one.[29]

    [29] Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks (2015) 114 IPR 81 (Yates J).

14. The acquisition of this secondary meaning depends on a number of factors including:

    • the way each of the Trade Marks has been used by the Applicant;
    • how the particular market has been educated concerning that use; and,
    • how the market perceives each of the Trade Marks in denoting the goods in respect of which they are used.[30]

    [30] Re Cell Therapies Pty Ltd (2020) 158 IPR 331 (Hearing Officer N Smith).

15. Section 41(3) is concerned only with the Applicant’s use in the period up to the Relevant Date. This point is of particular importance in the present case when considering the evidence. The evidence includes the Applicant’s promotional activities both before and after the Relevant Date.[31] Only the evidence of those activities before the Relevant Date is relevant to an inquiry conducted under s 41(3).

    [31] See, eg, Olsen Exhibits AGG-6 and 8, AGG-14 and AGG 18.

16. The Opponent submits that the Applicant’s evidence shows that, at all times, the terms ‘BIN 2’ and ‘BIN 8’ when used in relation to the Applicant’s wines, have never appeared or been used other than in close proximity to the brand ‘Penfolds’ and therefore there is no (or insufficient) evidence to establish that as at the Relevant Date, consumers regarded the terms BIN 2 or BIN 8 alone as a badge of origin in the sense that they would rely on those words alone as an indication of trade origin. The Opponent also argues that the Applicant’s use of the Trader Marks has been descriptive.

17. The Applicant submits that the presence of Penfolds does not mean the Trade Marks are not being used as trade marks. The Applicant relies on a number of authorities including Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd where the High Court said:

    Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[32]

    [32] [2023] HCA 8, [25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

18. The Applicant’s submissions also refer to Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd,[33] which concerned, inter alia, the use of BAROSSA SIGNATURE together with the trade mark JABOBS CREEK on wine labels. Whilst the labels on the wine bottles in that case were quite different to the present evidence, they do share similarities in that the respective house marks JACOBS CREEK and PENFOLDS appear prominently above the sub brands BAROSSA SIGNATURE and BIN 2 or BIN 8.

    [33] [2016] FCA 1515 (Charlesworth J).

19. The Applicant also submits that the existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark.

20. The Applicant’s evidence shows that BIN 2 and BIN 8 have at times been used as trade marks and therefore as indications of origin by the Applicant. The prominence and centrality of the terms in, for example, the Applicant’s website listings from 2006, show that these cannot simply be read down as a purely descriptive element. That is, while the word ‘Penfolds’ appears on all the BIN 2 and BIN 8 wine bottles, in marketing and advertising of those wines there is clearly use of BIN 2 and BIN 8 solus.[34] The evidence also shows that the range of the Applicant’s other BIN + numeral marks are all used in a similar manner[35] – namely as a designator of origin.

    [34] Olsen Exhibits AGG-11 and 12, posts dated 2014, 2105 and 2017 from AGG-18 and a post dated 2014 from AGG-20.

    [35] Olsen Exhibits AGG-4 and 5.

21. The Opponent’s evidence asserts that some of the Applicant’s BIN + numeral wines are considered to have reached a level of fame such that they are considered household names such as BIN 28, 128, 389, 404 and 707.[36] If I accept this, then the corollary is that that consumers are already aware that some BIN + numeral marks are badges of origin. BIN 2 and BIN 8 are in a prominent and central position on the Applicant’s wine labels depicted in a different contrasting font and size to Penfolds.[37]. Below the BIN 2 and BIN 8 marks are the varieties of wine. I agree with the Applicant that the words (“SHIRAZ MATARO”, etc) tell the consumer the variety of wine, and ‘BIN 2’ and ‘BIN 8’ together with ‘PENFOLDS’, tell the consumer who is supplying the wine.

    [36] Caillard [15].

    [37] Olsen Exhibits AGG 9 -12 and 16.

22. The Applicant has provided very significant sales volumes for BIN 2 and BIN 8 from 2013 to 2020 and very significant wholesale values from 2015 to 2019. The Applicant has also provided significant advertising and promotional expenditure for the same period. Figures from after the Relevant Date cannot be taken into account, but even if they could (ie if I were assessing this evidence under s 41(4)) they would ultimately not have helped the Applicant much.

23. While the Applicant claims that BIN 2 and BIN 8 wines have been marketed and advertised extensively throughout Australia since 2003 by means including print advertising and online advertising, very limited examples of this advertising and promotion before the Relevant Date have actually been provided in evidence. These examples are limited to some online advertising and promotion going back to 2003 (for BIN 2) and 2004 (for BIN 8) until 2008,[38] one example of a 2018 BIN 8 release at Vintage Cellars,[39] some awards,[40] some Instagram posts from 2014[41] and Facebook posts from 2014.[42] Notably absent among the marketing efforts asserted in Olsen are examples of advertising in newspapers, magazines and catalogues, advertising on the Applicant’s website(s) after 2008 and promotion at wine shows, wine tastings and exhibitions, examples of retailer advertising, other public relations events such as the release in 2018 at Vintage Cellars and in store displays.

    [38] Olsen Exhibits AGG 11-12.

    [39] Olsen Exhibit AGG 16.

    [40] Olsen Exhibit AGG-21.

    [41] Olsen Exhibit AGG-18.

    [42] Olsen Exhibit AGG-20.

24. Further, while the Applicant claims that its BIN 2 and BIN 8 wines have been sold and promoted for many years and continue to be sold and promoted through the Opponent’s businesses including at Dan Murphy’s and BWS, no evidence of this has been provided.

25. While the evidence and materials provided by the Applicant show the way the Trade Marks has been used by the Applicant, they fall short as to how the particular market has been educated concerning that use and how the market perceives the Trade Marks in denoting the wine in respect of which they are used.

26. The evidence and materials provided by the Applicant do not demonstrate, to the extent necessary, that BIN 2 or BIN 8 no longer convey their inherent descriptive meaning but instead distinguish the Applicant’s wine from the wine of other persons. The evidenced use by the Applicant prior to the Relevant Date has certainly not eclipsed the primary descriptive nature of, or the ordinary signification of, the terms BIN 2 and BIN 8.

27. Given this lack of evidence I remain satisfied that, given the highly descriptive nature of the Trade Marks, at the Relevant Date consumers in the market for wine likely did not view the Trade Marks alone as a badge of origin separate from their descriptive nature.

28. I am aware that the Applications were accepted under s 41(4) after evidence of use was filed by the Applicant while they were under examination. I note that even though the Applicant was informed by this Office on 3 March 2022 that if it wished to rely on any evidence filed in the course of examination, such evidence was required to be filed as part of its evidence in answer. For whatever reason, the Applicant did not do this. Whether or not this evidence would have assisted the Applicant’s case, particularly regarding how the wine market has been educated concerning that use and how the wine market perceives the Trade Marks in denoting the wine in respect of which they are used, remains unknown.

Decision

1. Section 55 relevantly provides:

   Decision

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

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

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

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

   Note:          For limitations see section 6.

2. The Opponent has established the ground of opposition pursuant to s 41 of the Act. As such I refuse to register the Trade Marks.

Costs

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. Accordingly, in respect of the opposition to trade mark 1906783 I award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations. For the opposition to trade mark 1906784 I award reduced costs against the Opponent under s 221 of the Act in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[43]

   [43] [2001] ATMO 78 (Hearing Officer Williams).

Adrian Richards

Hearing Officer

Delegate of the Registrar of Trade Marks

29 August 2023