Foster's Wine Estates Limited v Greg John O'Keefe [Sec=Unclassified]

[2009] ATMO 88

TRADE MARKS ACT 1995

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

Re:Opposition by Foster's Wine Estates Limited to registration of trade mark application 1139553(33) - LITTLE BUBBLES - filed in the name of Greg John O'Keefe.

Delegate:	Claudia Murray
Representation:	Opponent: Ben Fitzpatrick of Counsel, instructed by Allens Arthur Robinson, Patent and Trade Mark Attorneys, Melbourne. Applicant: Not represented at the hearing, no written submissions.
Decision:	2009 ATMO 88 Section 52 opposition – sections 41, 43 and 59 – trade mark capable of distinguishing under subsection 41(3) - opposition unsuccessful on all three grounds – registration proceeding– costs awarded against opponent.

Background

1. Mr Greg John O’Keefe (‘the applicant’) filed trade mark application number 1139553 on 8 October 2006, for the plain words trade mark:

LITTLE BUBBLES

1. The application was filed in class 33 of the International (Nice) Classification of Goods and Services in respect of ‘Alcoholic beverages (except beers); wines and fortified wines’.

2. No grounds for rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination. It was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 8 March 2007.

3. On 8 June 2007, Foster’s Wine Estates Limited (‘the opponent’) filed notice of opposition to registration of the trade mark. Fourteen grounds of opposition were listed in the notice.

4. Evidence in support, answer and reply was duly served and filed. On 19 January 2009, the Office received a request from the opponent for the opposition to be heard in Melbourne. I heard the matter, as a delegate of the Registrar of Trade Marks, on 21 July 2009. Mr Ben Fitzpatrick of Counsel, instructed by Mr Peter Ryan, Senior Associate of Allens Arthur Robinson, Patent and Trade Mark Attorneys of Melbourne, represented the opponent. The applicant’s legal representation throughout the opposition proceedings was Alfreds Attorneys, of Caulfield North, Victoria. However, he chose not to be represented at the hearing, or to have written submissions provided on his behalf.  

   Evidence

5. The evidence in relation to this opposition comprises:

   Evidence in Support

   ØStatutory declaration of Mathew Jordan O’Keefe, with Exhibits MJO-1 to MJO-15, dated 10 June 2008.

   ØStatutory declaration of Peter Dominic Ryan, with Exhibits PDR-1 to PDR-4, dated 10 June 2008.

   ØStatutory declaration of Laura Piva dated 10 June 2008.

   ØStatutory declaration of Emma Wood dated 10 June 2008.

   Evidence in Answer

   ØStatutory declaration of Greg John O’Keefe, incorporating Exhibits I-V, dated 9 September 2008.

   Evidence in Reply

   ØStatutory declaration of Mathew Jordan O’Keefe, dated 10 December 2008.

   ØStatutory declaration of Peter Dominic Ryan, with Exhibits PDR-1 to PDR-12, dated 10 December 2008.

6. Much of the opponent’s evidence comprises various documents intended to demonstrate the importance and desirability of small bubble size in high quality sparkling wines. Mr Mathew Jordan O’Keefe (who is not related to the applicant) is a trade marks attorney employed by Foster’s Group Limited, the opponent’s parent company. He declares that:

   In my position at Foster's Group, I have been trained and educated in relation to issues concerning alcoholic beverages, including still wines and sparkling wines, and am aware in particular that the sparkling wine market in Australia is worth at least $0.6 billion per year.

   In particular, at Foster's Group I have been educated in relation to sparkling wines, and that a key element of sparkling wine is the bubbles, which are clearly visible when sparkling wine is poured into a glass and which are a primary feature of the appearance of the sparkling wine. A sparkling wine is often judged by the size of the bubbles (the smaller the better), their persistence (the longer lasting the better) and their mouth feel (the smoother the better). The effervescence (ie: the bubbling effect) of a sparkling wine is called the "mousse". This has been well documented in numerous academic articles in relation to the bubbling properties of champagne and sparkling wines.

7. Mr O’Keefe then lists and quotes from the variety of technical articles that are annexed to his declaration as Exhibits MJO-2 to MJO-6. For example, he has extracted the following quote from his Exhibit MJO-2, The Physics and Chemistry behind the Bubbling Properties of Champagne and Sparkling Wines: A State-of-the-Art Review (Gerard Liger-Belair) published in the Journal of Agricultural and Food Chemistry (2005) 53, 2788-2802:

   Effervescence (from the Latin fevere: to boil), which is related to gas discharging from a liquid by bubbling, is the main characteristic of Champagne and sparkling wines. Careful observation of a glass poured with Champagne shows bubble trains rising gracefully toward the liquid surface. Since the time of the Benedictine monk Dom Pierre Perignon (1638-1715), Champagne has been the wine of celebration. This fame is largely linked to the elegance of its effervescence and foaming properties. The quality of the product is often related to the size of bubbles formed in the flute. Small bubbles rising slowly through the liquid are much preferred to large bubbles. Bubbles formed in the glass are also responsible for the aspect of the foam ring on the liquid surface, the so-called collerette, which is also an important feature of this product. But, even if there is no evidence yet to believe that bubbles confer any other sensory advantage to the wine, it is often recognized that bubbles play a major role in the assessment of a Champagne wine. Bubble size may also have an effect on flavour release and mouthfeel.[1]

   [1] Statutory declaration of Mathew Jordan O’Keefe, with Exhibits MJO-1 to MJO-15, dated 10 June 2008; paras 15-17.

8. By contrast, the applicant’s declaration, after establishing his credentials as a qualified and experienced winemaker, makes a variety of observations about the state of the Register in terms of trade marks relating to wines and other alcoholic beverages, which contain the word ‘bubbles’, in conjunction with other features. He cites fifteen such examples, and points out that the opponent itself has a registration, number 938305, for the trade mark BUBBLES BY YELLOWGLEN. Further, Mr Greg O’Keefe declares that he personally coined the trade mark LITTLE BUBBLES, having never, despite his experience in the field, previously come across that specific phrase used as a trade mark in relation to wines or other alcoholic beverages. He observes that the opponent originally also opposed his other concurrent applications for the trade marks LITTLE YELLOW BUBBLES, LITTLE RED BUBBLES and LITTLE PINK BUBBLES, but that, following the withdrawal of those oppositions, those trade marks are now registered.

9. Mr O’Keefe then cites searches of the free online encyclopedia, ‘Wikipedia’, which show that, while a search for the meaning of ‘bubble’ throws up (inter alia) a definition of ‘a colloquial term for sparkling wine, particularly champagne’, no entry whatsoever exists for the phrase ‘little bubbles’. He provides examples from the opponent’s own wine tasting notes (Exhibit V) to show that, despite the technical desirability of small-sized bubbles in sparkling wine, the expression ‘little bubbles’ is not used to describe this. He summarises:

   Typically sparkling wine descriptions refer to "bead" for the visible bubbles, "mousse" for the sensation on the tongue and "creaminess" to describe the overall “mouthfeel".

10. Finally, Mr O’Keefe considers the opponent’s position in terms of involved and uninvolved consumers, as discussed by Branson J in C A Henschke & Co v Rosemount Estates Ply Ltd.[2] Involved consumers are those consumers ‘who take a real interest in, and have some knowledge of, the wine they are purchasing’. They form the ‘minority of the wine consumers’. He declares:

    It is clear that when discussing terms such as bead, mousse, bubble size, bubble train, microscopic tartrate crystals, suspended matter, yeast wall cells, bentonite and colloids etc, the Opponents are referring to the involved consumer. Moreover, I suggest this level of detail would only be understood by a small subset of involved consumers.[3]

    [2] [2000] FCA 1539 at [19] para10.

    [3] Statutory declaration of Greg John O’Keefe, incorporating Exhibits I-V, dated 9 September 2008, paras 1-39.

    Grounds of opposition

11. Just prior to the hearing, the opponent indicated that, of the many grounds of opposition listed in its notice, it now intended to rely only upon grounds under sections 41, 43 and 59 of the Act. At this point, for completeness, I find that none of the other grounds listed have been made out.

    Section 41 - Trade mark not distinguishing applicant’s goods or services

12. Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. This issue lies at the heart of the evidence which has been exchanged between the parties. The section relevantly provides:

    (2)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 (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.

    (3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

    (4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

    (5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

    (a)the Registrar is to consider whether, because of the combined effect of the following:

    (i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

    (ii)the use, or intended use, of the trade mark by the applicant;

    (iii)any other circumstances;

    the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

    (b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

    (c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

    Note 1:For goods of a person and services of a person see section 6.

    Note 2: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 (1) and 7(3) and section 8).

13. Mr Fitzpatrick submitted at the hearing that I should find the phrase ‘little bubbles” used in relation to alcoholic beverages to be both laudatory and descriptive. He pointed out that the applicant himself had conceded in his declaration that the term ‘bubbles’ was devoid of any inherent adaptation to distinguish, and argued that the mere addition of the commonly used adjective ‘little’, which the applicant relied upon as giving the trade mark as a whole its capacity to distinguish, could not possibly confer alone that requisite capacity. The phrase ‘little bubbles” had, according to Mr Fitzpatrick, at its best a mere scintilla of inherent adaptation to distinguish, which was certainly not sufficient to satisfy subsection 41(3) of the Act. Under these circumstances, he argued, the applicant should be required to provide significant evidence of use of the trade mark, in order to achieve registration in terms of subsection 41(5).

14. Mr Fitzpatrick continued that the opponent’s evidence established that the phrase ‘little bubbles’ was used in the marketplace in a descriptive and laudatory sense in relation to sparkling wines, a smaller bubble size being indicative of a higher quality product. He argued that the applicant had provided nothing in the way of compelling evidence of use of the trade mark LITTLE BUBBLES, such as would satisfy the requirements of subsection 41(5). Further, Mr Fitzpatrick drew my attention to the applicant’s own descriptive use of the phrase ‘little bubbles’ on his website, as quoted in the opponent’s evidence:

    At GR8 we always like to be at our sparkling best as shown by our little bubbles (after all size really does matter!)[4]

    [4] Statutory declaration of Mathew Jordan O’Keefe, dated 10 June 2008; para 28.

15. Mr Fitzpatrick then concluded:

    This uncontroverted evidence is eloquent testimony of the legitimate desire of other traders in sparkling wines to use the phrase 'little bubbles' to extol the virtues of their produce. It is therefore also powerful evidence as to why it would be inappropriate to allow this term to be monopolised by the applicant (or indeed any other person).

    It is reasonable to infer from this evidence that, at the priority date,

    (a) there were traders in Australia legitimately using the 'little bubbles' phrase in relation to sparkling wines; and/or

    (b) that traders in Australia might have wanted to use the 'little bubbles' without improper motive.

16. Subsections 41(5) and (6) of the Act focus upon evidence of trade mark use. However, if a trade mark is determined to be inherently adapted to distinguish an applicant’s goods or services, then it may be registered under subsection 41(3), without reference to the later subsections of section 41. As Mr Fitzpatrick drew to my attention in his submissions, the manner in which section 41 operates to facilitate a decision of a delegate of the Registrar upon the registrability of a trade mark was examined closely by Branson J in the Oregon case.[5] However, in considering that analysis, the Trade Marks Office Manual of Practice and Procedure comments:

    If the Registrar is able to decide, on the basis of its inherent qualities, that the trade mark is capable of distinguishing the goods or services of the applicant from those of other persons, the matter is resolved in favour of the applicant. This does not mean the Registrar must be in no doubt about the trade mark's capacity to distinguish. The Registrar may have some reservations in the matter but still decide that the trade mark is capable of distinguishing.[6]

    [5] Blount v Registrar of Trade Marks (1998) 83 FCR 50, 40 IPR 498.

    [6] Trade Marks Office Manual of Practice and Procedure, Part 22, paragraph 3.2.

17. As the applicant pointed out in his declaration, no ground of rejection in terms of section 41 was raised against this application during examination. Shanahan’s 4th edition[7] discusses the interesting interplay between the presumption of registrability and the onus upon an opponent in cases such as this:

    It is difficult to establish any ground for opposition without evidence and where the ground for opposition is a ground for rejection, which was not sufficient to prevent acceptance of the application, the difficulty is compounded. The opponent must by evidence or other means displace the presumption of registrability. The absence of evidence may of itself tell against an opponent. In Re Le Vi SpA v Carter Holt Harvey Ltd[8]  [Fresh Linen for air fresheners] the Registrar's delegate observed that the opponent had provided no evidence in support of a contention that other traders would honestly wish to use the words of the applicant's trade mark and that "[g]iven its intimate knowledge of the relevant trade, this seems a relatively telling oversight. The opponent should be in the most favourable of positions to obtain persuasive evidence that traders in its field have real and proper motives to use the words".

    [7] Shanahan’s Australian Law of Trade Marks and Passing Off 4^th ed, 2008 at [50.2005].

    [8] RE.LE.VI. SpA v Carter Holt Harvey Limited [2002] 56 IPR 105 at 111 (Reg).

18. Here, the opponent has provided a not insignificant body of documentation about the nature of bubbles in sparkling wine for my consideration. However, I do not find within it the kind of compelling evidence of Australian traders’ need to use the specific phrase ‘little bubbles’ to describe their goods that, if such evidence existed, ‘one of the world’s leading premium wine companies’[9] should have been in the very best position to gather. Instead, the opponent asks me to infer the need to use that phrase from the evidence it has provided, and seeks to particularly rely upon a single light-hearted (if perhaps ill-advised) throwaway line from the applicant’s own website. I decline to find for the opponent on this tenuous basis.

    [9] Statutory declaration of Mathew Jordan O’Keefe, dated 10 June 2008; para 6.

19. My decision here reflects earlier decisions of delegates of the Registrar such as Southcorp Limited v Barwick Wines Pty Ltd[10] (Crush for wine) and Fortuity Pty Limited v Ereneos (Renos) Savvides[11] (Trim For Life for food supplements and books). In the latter decision, Hearing Officer Iain Thompson remarked:

    I do not see any problem with the trade mark in terms of subsection 41(3) of the Act. It is certainly strongly suggestive, but, to my mind, there is an indefiniteness of meaning when an analysis of the trade mark is attempted. Such indefiniteness, and the lack of any real evidence from Fortuity, leave me satisfied that other traders have no real need to use the words in the normal course of trade. I am very conscious of the reasoning adopted by the Registrar's delegate in Ciba-Geigy Australia Ltd v Eli Lilly and Co (1983) 2 IPR 353 [YIELD for fungicides, herbicides and insecticides]: the desirability of some trade marks arises after they have been coined on the realisation, by others, that the trade mark is very effective. One must exercise caution not to reason one's way back from this perception to the conclusion that, because of this effectiveness, other traders have a need to use the words in the normal course of trade.

    [10] [2006] ATMO 68 (28 July 2006).

    [11] [2000] ATMO 89 (16 August 2000).

20. I believe that the opponent has applied a similar exercise of ‘reasoning its way back’ in this instance. As the evidence shows, there are many examples of trade marks containing the word ‘bubble’ (including the opponent’s own) co-existing on the Register. They are all evocative of the goods to which they are applied, and the applicant’s trade mark is no different in this regard. However, I have not been convinced that the really quite esoteric connection between the technically desirable size of bubbles in sparkling wine is fatal to the trade mark’s capacity to distinguish the applicant’s goods in terms of subsection 41(3) of the Act. The opponent has not succeeded in its ground of opposition under section 41.

    Section 43 – Trade mark likely to deceive or cause confusion

21. Section 43 provides:

    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.

22. Examples of the kinds of circumstances most clearly intended to be addressed by the section occurred in the VITAMIN[12] and ORLWOOLA[13] cases. In those cases, there was a danger the public might make a reasonable, but incorrect, assumption about a product based upon the trade mark, which could not easily be confirmed or discounted by even close inspection of the product.

    [12] J. Kitchen & Sons Pty LTD v Inman (1939) 9 AOJP 1383 (Reg).

    [13] Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.).

1. Mr Fitzpatrick made the briefest of submissions in relation to this ground, relying upon his previous arguments that if the phrase ‘little bubbles’ was descriptive and laudatory of sparkling wines, then conversely use of that term in respect of non-sparkling wines and other alcoholic beverages covered by the application would be mis-descriptive.

2. I have not accepted the opponent’s arguments in relation to section 41, and it follows that I would also be unlikely to find its converse arguments in terms of section 43 compelling. Whether there exists a real danger of the public of being deceived or confused by use of the applicant’s trade mark on the non-sparkling beverages covered by its specification of goods is not readily apparent, and the opponent has provided no evidence in support of its contention. I find the ground of opposition under section 43 has not been made out.

   Section 59 - Applicant not intending to use trade mark

3. Section 59 deals with an applicant’s intention to use its trade mark:

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)     to use, or authorise the use of, the trade mark in Australia; or

   (b)     to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:   For applicant see section 6.

4. Mr Fitzpatrick submitted that the filing of a trade mark application raises a presumption of an intention to use, but that such a presumption is rebuttable with slight evidence.[14] He pointed to the applicant’s own references to his goods in his declaration and on his website as ‘sparkling wines’ as representing the requisite slight evidence of the applicant’s lack of intention to ever use his trade mark on any other goods. I do not accept this argument. The opponent has fallen far short of making even a slight case for the applicant’s lack of either an intention to use at the time of filing, or of a genuine intention to use the mark on other goods in his specification in the future. An applicant is entitled to wait for the conclusion of an opposition process, and subsequent registration, before using its trade mark on any of its goods. An observation by the opponent about what the applicant has not said about his use of the trade mark to date is not sufficient evidence to rebut the presumption of intention to use created at filing.

   [14] Americana International Limited v Suyen Corporation [2008] ATMO 4.

5. The opponent has not met its initial burden to shift the onus under section 59 to the applicant. The ground of opposition under section 59 has not been established.

   Decision

6. Subsection 55(1) of the Act provides:

   (1)     Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

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

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

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

7. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the appropriate standard of proof required in terms of a ‘balance of probabilities’.[15] His findings upon that issue, arrived at after an exhaustive consideration of the relevant authorities, have recently been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.[16]

   [15] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599.

   [16] [2009] FCA 891 (18 August 2009), paragraphs 22-27.

8. I find that the opponent has not met the onus upon it, in terms of any of its grounds of opposition. The trade mark may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

   Costs

9. The opponent has requested its costs. However, it is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark opponent, Foster's Wine Estates Limited.

   Claudia Murray
   Hearing Officer
   Trade Marks Hearings
   30 October 2009