Grape Co Australia Pty Ltd v Grapeco Pty Ltd - [2022] ATMO 203

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Grape Co Australia Pty Ltd to registration of trade mark application 2062377 (31) – GRAPECO (Figurative) – in the name of Grapeco Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Ian Horak of Counsel instructed by Phillips Ormonde Fitzpatrick

Applicant: Herbert Smith Freehills

Decision:

2022 ATMO 203

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered – ground established – registration refused

Background

This decision concerns an opposition brought by Grape Co Australia Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Grapeco Pty Ltd (‘Applicant’):

Application Number:

2062377

Filing Date:

13 January 2020

Goods:

Class 31: Fresh fruits and vegetables; Raw and unprocessed agricultural, aqua cultural and horticultural products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; fruit trees; nuts

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
3. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed on 21 October 2020 by a Statement of Grounds and Particulars, later amended (‘SGP’). The SGP as amended raised grounds of opposition under ss 41, 42(b), 60 and 62A. The Applicant filed a Notice of Intention to Defend on 19 January 2021.
Evidence

The Opponent filed the following evidence in support of its opposition:
·Declaration made on 22 April 2021 by Adrian Caia, the Managing Director of the Opponent, with Annexures AC-1 to AC-15 (‘Caia 1’).
·Declaration made on 26 July 2021 by Adrian Caia, with Annexures AC-16 to AC-47 (‘Caia 2’).
·Declaration made on 26 April 2021 by Rodney Ian Lindsay Cruise, Principal, Phillips Ormonde Fitzpatrick, the representatives of the Opponent, with Exhibit RIC-1 to RIC-2 (‘Cruise 1’).
5. The Applicant filed the following evidence in answer:
·Declaration made on 17 September 2021 by Bruno Costantino, the Managing Director of the Applicant, with Exhibits BC-1 to BC-19 (‘Costantino declaration’).
The Opponent filed the following evidence in reply:
·Declaration made on 19 November 2021 by Adrian Caia, with Annexures AC-48 to AC-54 (‘Caia 3’).
·Declaration made on 22 November 2021 by Rodney Ian Lindsay Cruise, with Annexure RIC-3 to RIC-5 (‘Cruise 2’).
The entirety of the evidence filed by the Applicant, including publicly available information such as the public use of the Trade Mark is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Grape Co Australia Pty Ltd v Grapeco Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2022] ATMO 203
Decision Date: 15 November 2022

CaseChat Overview and Summary

Grape Co Australia Pty Ltd (the Applicant) sought to register a trade mark, while Grapeco Pty Ltd (the Opponent) opposed this application. The dispute concerned whether the Applicant's proposed trade mark should be registered, given its similarity to the Opponent's existing trade mark and the goods for which it would be used. The decision was made by Nicholas Smith, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether the Applicant's proposed trade mark was likely to deceive or cause confusion, pursuant to section 60 of the *Trade Marks Act 1995* (Cth). This required the court to consider the similarity of the trade marks, the identity of the goods, the nature of the consumers, and the reputation of the Opponent's existing mark.

The Hearing Officer found that the trade marks were similar, both containing the word "Grapeco," and were intended for identical goods, namely grapes and other fruit. The court reasoned that the average consumer would likely focus on the word "GrapeCo" as the essential feature of both marks, discounting any stylisation or descriptive elements. Given the fast-moving consumer nature of the goods and the direct competition between the parties, the court concluded that consumers familiar with the Opponent's "GRAPECO AUSTRALIA" mark would likely be caused to wonder if goods bearing the Applicant's mark originated from the same source or were marketed under licence. Consequently, the ground of opposition under section 60 was established.

The Hearing Officer refused to register the Applicant's trade mark and ordered that the refusal be recorded one month from the date of the decision, unless a notice of appeal was filed. The Opponent was awarded costs against the Applicant.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

In the present case, the trade marks are undoubtedly similar, each containing the same word ‘grapeco’. They are used for identical goods; the parties are direct competitors and the products sold are likely to be displayed (potentially and in reality) side by side at supermarket and fruit stores. The average consumer, when viewing grapes (and other fruit) bearing the Trade Mark is likely to discount the minor stylisation and grape device, with the word GrapeCo being the essential feature of the Trade Mark. Equally, consumers viewing the GRAPECO AUSTRALIA mark are likely to discount the ‘Australia’ element as geographically descriptive. In the context of the Applicant’s Goods being fast moving consumer products purchased by a large, non-specialist market across Australia, and the similarities between the respective marks, I consider it likely that consumers familiar with the Opponent’s GRAPECO AUSTRALIA mark would see the Trade Mark used for the Applicant’s Goods and be caused to wonder whether it might not be the case that goods bearing the GRAPECO AUSTRALIA mark and goods bearing the Trade Mark come from the same source or that the Applicant’s Goods were marketed under the license of the Opponent.36. I find that, because of the reputation acquired by the GRAPECO AUSTRALIA mark, the use of the Trade Mark in connection with the Applicant’s Goods would be likely to deceive or cause confusion. The Opponent has established the ground of opposition pursuant to s 60 of the Act.Decision and Costs37. I have found the Opponent has established the ground of opposition it raised pursuant to s 60. As the Delegate of the Registrar, I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions. 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. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks15 November 2022

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Application Number:	2062377
Filing Date:	13 January 2020
Goods:	Class 31: Fresh fruits and vegetables; Raw and unprocessed agricultural, aqua cultural and horticultural products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; fruit trees; nuts (‘Applicant’s Goods’)
Trade Mark:	(‘Trade Mark’)