GOOD DRINKS AUSTRALIA LTD

[2024] ATMO 45

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2345263 (class 33) – PINKY’S SUNSET - in the name of GOOD DRINKS AUSTRALIA LTD

Delegate:

Timothy Brown

Representation:

Applicant: Martin O’Sullivan of O’Sullivans Patent and Trade Mark Attorneys

Decision:

2024 ATMO 45

Trade Marks Act 1995 (Cth) – section 33 – reg 4.15A considered – trade mark deceptively similar to earlier registered trade mark – trade mark application rejected.

Background

1. This decision concerns a trade mark application filed on 3 April 2023 by GOOD DRINKS AUSTRALIA LTD (‘Applicant’) to register the following trade mark:

   Trade Mark Number: 2345263  (‘Application’)

Trade Mark:  PINKY’S SUNSET              (‘Trade Mark’)

Priority Date:  3 April 2023

Specification:  Cider; Cider coolers (beverages); Low alcohol cider; Sparkling cider (alcoholic); Alcoholic beverages, except beer (‘Applicant’s Goods’)

1. The Application was examined as required by section 31 of the Trade Marks Act 1995 (Cth)[1] and a ground for rejection was raised under section 44(1) on the on the basis that the Trade Mark was deceptively similar to the following protected international trade mark:

   [1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

   Trade Mark Number:  1058032

International Registration Number:         840684

Trade Mark:  (‘Earlier Trade Mark’)

Holder:  Liquidity, Inc

Filing Date:  22 April 2005

Convention Priority Date:  22 October 2004

Class 33:  Alcoholic beverages not including wines

1. The examiner explained that the Trade Mark closely resembles the Earlier Trade Mark because both trade marks incorporate the word PINKY as a distinctive identifying feature. The examiner also noted that Applicant’s Goods are either the same or similar to the alcoholic beverages specified in the Earlier Trade Mark.

2. The Applicant responded disputing the ground for rejection. In the Applicant’s view, there was no basis to conclude PINKY was the distinctive identifying feature of either trade mark because in the context of alcoholic goods, PINKY refers to the colour of the beverages. The Applicant contended that this was evident from the website ‘ where the Earlier Trade Mark was used in connection with pink coloured beverages. A screenshot from this website is reproduced below:

3. The Applicant also submitted that the differences between the trade marks are significant enough that it is unlikely consumers would be caused to think alcoholic beverages provided under the Trade Mark would derive from or otherwise be connected to the owner of the Earlier Trade Mark.

4. Following the Applicant’s response, the examiner maintained that Trade Mark and the Earlier Trade Mark were deceptively similar.  The examiner emphasised that the trade marks shared a net impression of the name ‘Pinky’, and that the possessive apostrophe in the word PINKY’S indicated that the Trade Mark is more likely to be interpreted as a name rather than a reference to the colour pink. In the examiner view, this meant that PINKY was a distinctive identifying word shared by both trade marks and that it retained its identity within the Earlier Trade Mark.

5. Having reached an impasse, the Applicant exercised its right to be heard and an oral hearing was scheduled. As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 7 December 2023. The Applicant was represented by Martin O’Sullivan of O’Sullivans Trade Marks and Patent Attorney’s.

6. As a starting point, I note that the grounds for rejection will be considered afresh and that s 33 embodies a presumption of registrability, which provides that the Registrar must accept an application for registration unless satisfied that there are grounds under the Act for rejecting it or the application has not been made in accordance with the Act.

Regulation 4.15A

1. Regulation 4.15A relevantly provides:

2. For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or

   (ii)a trade mark in respect of which the Registrar has received notification of an IRDA;

   held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.

1. A ground for rejection under reg 4.15A will exist if the Earlier Trade Mark meets the following requirements:

1. It is in the name of a person other than the Applicant;

2. It has a priority date which is earlier than the Trade Mark’s priority date;

3. It is in respect of similar goods and/or closely related services to the Applicant’s Goods; and

4. It is substantially identical with, or deceptively similar to, the Trade Mark.

1. The Earlier Trade Mark is registered by another person and has a convention priority date of 22 October 2004, which is earlier than the priority date of the Trade Mark, 3 April 2023.

2. The Applicant concedes that the goods of the respective trade marks are similar. For completeness, I agree, noting that the Earlier Trade Mark is registered in respect of ‘alcoholic beverages not including wines’, which are the same or similar to all of the Applicant’s Goods in Class 33.

Comparison of Trade Marks

1. Whether two trade marks are substantially identical is determined by a side by side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emergers from the comparison.[2] In my view, the Trade Mark is not substantially identical to the Earlier Trade Mark. The essential feature of the Earlier Trade Mark is the word PINKY. Although one of the essential features of the Trade Mark is the word PINKY’S, a possessive form the essential feature of the Earlier Trade Mark, the additional word SUNSET is sufficient to differentiate the trade marks when compared side by side. I am satisfied that there is not a total impression of resemblance between the trade marks.

   [2] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

2. Section 10 defines ‘deceptive similarity’ in the following terms:

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[3]

   [3] [1963] HCA 66, [13].

2. The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.[4] Accordingly, an allowance is made for imperfect recollection of the trade marks.[5] The impression comes from the trade marks in their entirety,[6] and is informed by the look, sound and ideas conveyed by the trade marks.[7]

   [4] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [5] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [6] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [7] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

3. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[8] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[9]

   [8] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

   [9] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

4. The Applicant advanced several reasons why the Trade Mark should not be considered deceptively similar to the Earlier Trade Mark. Attention was drawn to (i) the stylised cursive font of the Earlier Trade Mark and the absence of any stylisation in the Trade Mark, (ii) the descriptive nature of the term ‘pinky’, (iii) the visual and aural differences caused by the absence of the words PINKY’S and SUNSET in the Earlier Trade Mark, and (iv) the distinct net impression of trade marks. Considering the foregoing, the Applicant submits there is not likely to be any real danger of confusion between the trade marks.

5. The Earlier Trade Mark is comprised of the word PINKY rendered in a stylised cursive font that resembles thorns. On the other hand, the Trade Mark consist of the words PINKY’S SUNSET in plain text. From a visual and aural perspective, the Applicant emphasised that only the word PINKY is common to each trade mark, and even then, the word is represented in a possessive form within the Trade Mark and in a distinct stylised form in the Earlier Trade Mark. These differences are relevant considerations, but not determinative. Both trade marks use PINKY as the first word of the trade marks. Commonly, the beginning of a trade mark is the more memorable aspect of a trade mark.[10] Furthermore, the possessive form of PINKY’S in the Trade Mark does nothing to alter the pronunciation or visual impact of the word. Consumers would readily recognise and pronounce PINKY and PINKY’S as the same word despite the possessive form and the differences that stem from the stylisation of the Earlier Trade Mark. The presence of word SUNSET is noticeable and not to be dismissed, however, it does not diminish the visual and aural resemblance between the trade marks that stem from the word PINKY.

   [10] See: London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264, 279 (Sargent LJ).

6. The Applicant’s submissions posit that PINKY is likely to be construed by consumers as descriptive of the colour pink rather than, as proposed by the examiner, a person called ‘Pinky’.  I agree with the Applicant that the consumers would not necessarily associate the Trade Mark with a person called ‘Pinky’. ‘Pinky’ is a term with a variety of meanings and potential references in the minds of consumers. I accept that PINKY/PINKY’S may be a reference to the colour the colour pink or descriptive of something with a pink tinge. It may also be a variant of the word ‘pinkie’ and construed by consumers as a reference to the little finger of a hand.  

7. The Applicant submits that due to the descriptiveness of ‘pinky’, it is appropriate to pay less attention to the word. This could also be said for the term ‘sunset’. Terms such as ‘sunrise’ or ‘sunset’ may be used to describe the colour gradient of a cocktail, such as in the case of a gin sunset or tequila sunrise.  In any event, it is true that non distinctive elements of a trade mark should be afforded less weight for comparative purposes.[11] However, as observed by the Full Court in Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel,[12] ‘the authorities do not say where there is a common descriptive element in marks that the component is to be ignored for the purposes of comparison’.[13]

   [11] Re Broadhead’s Application (1950) 67 RPC 209, 215 (Evershed MR).

   [12] [2021] FCAFC 8 (McKerracher, Gleeson and Burley JJ).

   [13] Ibid [78].

8. In my view, PINKY forms a prominent component of both trade marks. It is the sole element of the Earlier Trade Mark, and despite the possessive form, it is wholly incorporated and retains its identity within the Trade Mark. The Applicant contends that the phrase PINKY’S SUNSET would be understood by consumers as a reference to a sunset at a place called PINKY’S. While this may be a potential idea conveyed by the Trade Mark to consumers, there is no evidence that indicates PINKY’S is a place or location, or that consumers are likely to understand it as something other than its ordinary meanings. In my view, the word SUNSET does not have a clear meaning when combined with the word PINKY’S. SUNSET may be understood separately according to its ordinary meaning, but together with PINKY’S it does not convey an idea that it conceptually distinct from PINKY.

9. Deceptive similarity is concerned with the impression of each trade mark based on the imperfect recollection of ordinary consumers. In this context, differences between the trade marks may be imperfectly recalled or may not sufficiently alter the overall impression produced by the trade marks in their entirety. In this case, neither the thorn-like stylisation of the word PINKY in the Earlier Trade Mark, or the presence of the word SUNSET and the possessive form of PINKY in the Trade Mark are sufficient to mitigate the likelihood of confusion between the trade marks. In my view, consumers with an imperfect recollection of the Earlier Trade Mark would be caused to wonder whether goods bearing the Trade Mark are in some way connected to the Earlier Trade Mark.

10. For these reasons, I am satisfied that the Earlier Trade Mark is deceptively similar to the Trade Mark. Accordingly, a ground for rejection exists under reg 4.15A(1).

11. For completeness, the Applicant has not filed any evidence that would permit a finding of honest concurrent use or prior use under the Regulations.[14] Nor has the Applicant drawn my attention to any other relevant circumstances that may be considered under reg 4.15A(3)(b).

    [14] See: regs 4.15A(3)(a) and 4.15A(5).

Decision

1. Section 33 of the Act provides:

   Application accepted or rejected

   (1)  The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)  the application has not been made in accordance with this Act; or

   (b)  there are grounds under this Act for rejecting it.

   Note: For this Act see section 6.       

   (1)    The Registrar may accept the application subject to conditions or limitations.

   Note: For limitations see section 6.

   (3)    If the Registrar is satisfied that:

   (a)  the application has not been made in accordance with this Act; or

   (b)  there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   (4)    The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note: For applicant see section 6.

2. I am satisfied that on the balance of probabilities that there is a ground for rejecting the application to register the Trade Mark under regulation 4.15A.

3. Accordingly, under section 33(3) of the Act, I reject trade mark application number 2345263. If the Registrar is served with a notice of appeal within one month of the date of this decision, I direct that the disposition of the application be in accordance with the court’s direction or order.

Timothy Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

6 March 2024