Havana Club Holding SA and Corporacion Cuba Ron S.A. v 1872 Holdings, V.O.F

[2016] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by Havana Club Holding SA and Corporacion Cuba Ron S.A. to registration of trade mark application no(s) 1572280 – MATUSALEM THE SPIRIT OF CUBA LIBRE– and 1604966 – MATUSALEM EL ESPIRITU DE CUBA – and 1604967 – MATUSALEM EL ESPIRITU DE CUBA LIBRE - filed in the name of 1872 Holdings, V.O.F.

Delegate:	Bianca Irgang
Representation:	Opponent: Peter Hallett of Watermark IP Lawyers Applicant: James Maxwell of Peter Maxwell and Associates
Decision:	2016 ATMO 37 Opposition under section 52 of the Trade Marks Act 1995 – Sections 42, 43 and 61 pressed – s. 61 successful – no need to consider additional grounds.

Background

1. 1872 Holdings, V.O.F (‘the applicant’) filed its trade mark applications on 1 August 2013 and 10 February 2014 respectively in class 33 of the International Classification of Goods and Services. Relevant details of the applications are set out below.

   Trade mark:  MATUSALEM THE SPIRIT OF CUBA LIBRE

   Trade mark application:        1572280

   Filing Date:  1 August 2013

   Specification:  Class 33: Alcoholic beverages (except beer), including, rum, rum liqueurs, rum cocktails and alcoholic beverages containing rum

   Trade mark:  MATUSALEM EL ESPIRITU DE CUBA

   Trade mark application:        1604966

   Filing Date:  10 February 2014

   Specification:  Class 33: alcoholic beverages (except beer), including, rum, rum liqueurs, rum cocktails and alcoholic beverages containing rum

   Endorsements:  The applicant has advised that a translation of the SPANISH words MATUSALEM EL ESPIRITU DE CUBA appearing in the trade mark is METHUSELAH, THE SPIRIT OF CUBA

   Trade mark:  MATUSALEM EL ESPIRITU DE CUBA LIBRE

   Trade mark application:        1604967

   Filing Date:  10 February 2014

   Specification:  Class 33: alcoholic beverages (except beer), including, rum, rum liqueurs, rum cocktails and alcoholic beverages containing rum

   Endorsements:  The applicant has advised that a translation of the Spanish words MATUSALEM EL ESPIRITU DE CUBA LIBRE appearing in the trade mark is METHUSELAH THE SPIRIT OF A FREE CUBA.

2. The applications were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 27 March 2014 and 3 July 2014 respectively. Havana Club Holding SA and Corporacion Cuba Ron S.A. (collectively ‘the opponents’) jointly filed Notices of Intention to Oppose the registration of the trade marks on 27 May 2014 and 2 September 2014. The Notices of Intention to Oppose registration were followed by statements of grounds and particulars on 1 July 2014, 7 October 2014 and 8 October 2014. These documents, all taken together, constitute the Notices of Opposition (‘the Notices’). Thereafter the opponent and applicant served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matters in Canberra on 2 May 2016 as a delegate of the Registrar of Trade Marks. Mr Peter Hallett of Watermark IP Lawyers represented the opponents. The applicant was represented by Mr James Maxwell of Peter Maxwell and Associates.

   Grounds of Opposition

4. The Notices nominated three grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponents to establish one or more of their grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1]

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

5. Prior to the hearing the opponents advised that they would press and provide submissions on the grounds under sections 42, 43 and 61 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s specification of goods, there is no requirement for the other grounds of opposition to be considered.

   Evidence

   6.     The evidence consists of the following declarations:

   Evidence in Support

   ·Mathieu Prot made on 27 October 2014 with annexures 1 to 10 (the “Prot 1 Declaration”)

   ·Catherine Macneil made on 30 October 2014 with annexure 1 (the “Macneil 1 declaration”)

   ·Mathieu Prot made on 2 February 2015 with annexures MP1 to MP9 (the “Prot 2 declaration”)

   ·Haliveth Leon Villaverde made 26 February 2015 with annexures 1 to 5 (the “Villaverde declaration”)

   ·Mike Edkins made on 27 February 2015 (the “Edkins declaration”)

   ·Catherine Macneil made on 2 March 2015 with annexure 1 (the “Macneil 2 declaration”)

   Evidence in Answer

   ·Julian Charles Clulow made on 27 April 2015 with exhibits JCC-1 to JCC-2 (the “Clulow 1 declaration”)

   ·Claudio I. Alvarez Salazar made on 24 April 2015 with exhibits 1 to 8 (the “Salazar 1 declaration”)

   ·Julian Charles Clulow made on 29 July 2015 with exhibits JCC-1 to JCC-2 (the “Clulow 2 declaration”)

   ·Claudio I. Alvarez Salazar made on 31 July 2015 with exhibits 1 to 8 (the “Salazar 2 declaration”)

   Evidence in Reply

   ·Sophie Register made on 31 July 2015 with Annexure SR1 (the “Register 1 declaration”);

   ·Sophie Register made on 10 August 2015 with Annexure SR1 (the “Register 2 declaration”);

   Opponent’s Evidence

6. The Prot 2 declaration states that one of the opponents, Havana Club Holding SA (“HCH”), is the owner of the trade mark HAVANA CLUB. HCH is a member of the Pernod Ricard group of companies, and has been selling its HAVANA CLUB rums originating from Cuba for many years around the world. According to Mr Prot, its various HAVANA CLUB trade marks are registered by HCH in more than 120 countries and the world sales of its HAVANA CLUB rums exceeded tens of millions of cases in 2011 with double digit growth since 1993.

7. Mr Prot states that the second opponent, Corporacion Cuba Ron S.A. (“CCR”), has been granted the exclusive right to use the Geographical Indication ‘CUBA’ for Cuban rums. According to the Prot 2 declaration this right was granted to CCR by means of the Resolution of 2 April 2012 of the Cuban Office of Intellectual Property. These statements are supported by Annexure MP7 accompanying the Prot 2 declaration. Annexure MP7 contains the Conclusive Examination Report issued by the Head of Department of Trademarks of the Cuban Industrial Property Office on 26 February 2010, regarding the application by CCR for registration of CUBA as a denomination of origin as well as Decision no. 0714/2010 issued by the General Manager of the Cuban Industrial Property Office on 2 April 2010. English translations of the aforementioned documents were also provided in the annexure.

8. Mr Prot outlines the association between Cuba and rum stating that rum is an integral part of the history of Cuba from the end of the 15^th Century, when Christopher Columbus introduced sugar cane to the island. After that the settlers of the island began to distil the sugar cane creating an alcoholic beverage, which from the 17^th Century was known as ‘rum’ (Annexure MP1). Due to a combination of factors including the well-known sugar cane in Cuba, the favourable Caribbean climate, the fertile land and the ‘master rum-makers’, Cuba is known around the world for its rum and is often referred to as the ‘Rum Island’.  Annexure MP1 demonstrates through various articles and publications that Cuba has a well-known and strong reputation for its rum production which dates back many years. Mr Edkins also asserts in his declaration that Cuba is a well-known producer of rum and that the association between Cuba and rum is common knowledge amongst both traders and consumers of rums in Australia. I note that the rum produced in Cuba is known to have particular characteristics and qualities.

9. The Prot 1 declaration asserts that the term CUBA used on or in relation to rum products is recognized by the Cuban Government as a sign indicating that those products originate in Cuba and have a quality and reputation which is specifically attributable to their Cuban origin. The term CUBA has been recognized by the Cuban Government as an indication of geographical origin for rums since at least 1998. This is supported by Annexure MR3 which contains an English translation of the Decree-Act No. 184 of 28 May 1998 (‘the 1998 Decree-Act’) on the National Guarantee Seal of Origin for Export Rum of the State Council of the Republic of Cuba. The 1998 Decree-Act established a national seal of warranty of origin for all rum produced in Cuba for export, so as to guarantee the quality and origin of Cuban rum exports (Annexure MP4). Pursuant to the 1998 Decree-Act, the Guarantee Seal can only be used in relation to rum manufactured in Cuba with Cuban raw materials and must be used on all rum produced in Cuba for export markets. This is also supported by the statements made by Mr Villaverde in his declaration and accompanying annexures 1 through to 4. 

10. Cuban Regulation no. 113/2001 of July 2001 defined the required qualities of Cuban rum, including permitted and prohibited practices for the preparation of Cuban rum, and organoleptic requirement such as smell and flavour, appearance, and physico-chemical characteristics (Annexure MP5). The Decree-Act No. 228 (Annexure MP6) on Geographical Indication published in the Official Gazette of the Republic of Cuba on 22 February 2002 updated the legal protection of Cuban Indications of Origin in accordance with the international obligation of Cuba, following Cuba’s membership of the World Trade Organization in 1995.

11. Mr Prot also points out a number of instances of demonstrated confusion in the marketplace with both consumers and suppliers mistakenly referring to the applicant’s goods branded with the opposed trade marks as originating from Cuba and that this is likely because the applicant’s labels show the term ‘EST.CUBA 1872’ (Annexure MP9).

    Applicant’s Evidence

12. The Salazar 1 declaration outlines the applicant’s formation and history and that he is the great grandson of Evaristo Alvarez. Mr Salazar states that in 1872, Benjamin and Eduardo Camp and Evaristo Alvarez established a distillery in Santiago, Cuba under the name Camp & Brothers, S.A and began producing rum. According to Mr Salazar, Camp & Brothers, S.A. used their knowledge of the production of cognac and perfected a recipe for rum using a secret formula and blending principles. They commenced selling this rum under the MATUSALEM trade mark.

13. In the 1900’s Claudio Alvarez Lefebre joined Camp & Brothers, S.A and the company changed its name to Alvarez Camp & Company (hereinafter called “Ron Alavarez Camp”). Claudio Alvarez Lefebre was trained as a master blender of MATUSALEM rum using the same secret formula perfected in Cuba. Eventually Claudio Alvarez Lefebre took operating control of the company.

14. According to Mr Salazar, in the initial years of the 1900’s MATUSALEM rum became one of the most important in Cuba and was loved by Ernest Hemingway. Both Claudio Alvarez Lefebre and his son, Claudio Alvarez Soriano, died unexpectedly in 1956. Mr Salazar states that the MATUSALEM brand was then left without corporate leadership and was split among the surviving wife and children of Claudio Alvarez Soriano (which included Mr Salazar) until another family member, Gerado Abascale, took operating control of the company.

15. In 1959 Fidel Castro seized control of the Cuban Government in a coup d’etat. In order to protect its brand name, Ron Alvarez Camp established two companies: Ron Matusalem & Matusa of Florida, Inc. (the predecessor in interest to the applicant) and Compania Licorera Oriente Inc. of Puerto Rico. Ultimately both companies merged and became collectively known as Matusalem & Co.

16. In 1965 the Castro regime seized control of Ron Alvarez Camp’s assets. Mr Salazar states that by decision no. 3495 dated 8 July 1965, the Ron Alvarez Camp factory became Cuban state property. By decision no. 273 dated 27 January 1968 the Cuban trade marks of Ron Alvarez Camp were transferred to the Cuban state and ultimately assigned to various Cuban state enterprises. The Camp family movedto Spain and no longer had an active involvement in the production of MATUSALEM rum. Mr Salazar and his family (the descendants of  Evaristo Alvarez hereafter referred to as the “Alvarez family”) relocated to the United States of America and then took steps to establish a rum distillery in Freeport, Bahamas. The Salazar 1 declaration asserts that the Alvarez family has been careful to preserve the traditional MATUSALEM rum recipe originally mastered by Ron Alvarez Camp in Cuba.

17. In 1981 a family dispute divided Ron Matusalem & Matusa of Florida, Inc and the next decade was spent going through litigation between shareholders regarding the control of the company. In 1987, Mr Salazar states that he joined the litigation to obtain control of the applicant’s predecessor in interest, Ron Matusalem & Matusa of Florida, Inc. In May 1995, Mr Salazar took control of Ron Matusalem & Matusa of Florida, Inc. as the majority shareholder. Ron Matusalem & Matusa of Florida, Inc. assigned its commercial and trade mark rights in various international jurisdictions to the applicant.

18. Due to the long and complex history of the applicant, Mr Salazar states that the intention of the applicant in applying for the opposed trade marks is to inform consumers of its Cuban heritage and its efforts to maintain the MATUSALEM brand and the applicant’s efforts to re-establish the MATUSALEM brand at its distillery in the Dominican Republic. The Salazar 1 declaration states that the labels on the MATUSALEM products clearly state that the product is made in the Dominican Republic and that the labels recount the history of the MATUSALEM brand (Exhibit 1 to 3).

19. Mr Salazar states that the applicant manufactures premium rums and that the average consumer of the applicant’s goods would be highly knowledgeable and aware of the origin of the goods and their intrinsic association with the CUBA LIBRE (Free Cuba) movement and the applicant’s long association with Cuba. He states that consumers of the applicant’s rum goods will understand that the trade marks MATUSALEM THE SPRIRT OF CUBA LIBRE means effectively the embodiment of a free Cuba and not a liquor spirit manufactured in Cuba. However, there is nothing in the applicant’s evidence to support this assertion. Paragraph 25 of the Salazar 1 declaration contains the applicant’s financial records for the total annual sale figures in respect of goods provided under the trade marks in Australia since 2009 and until 2014. These figures indicate modest and fluctuating figures over the years.

20. Mr Salazar states that the opponent has applied for a trade mark application no. 1677248 HAVANA CLUB ESSENCE OF CUBA, which is currently being opposed by the applicant. He goes on to explain that the opponent uses trade marks on some of its class 33 alcoholic goods which incorporate the expression “ESSENCE OF CUBA” and that they are crafted with ‘Havana Club’ but that the place of manufacture is listed on the back of the bottles as a “Product of Germany” (Exhibits 5 to 7). He states that the opponent’s HAVANA CLUB ESSENCE OF CUBA trade mark does not indicate the country of origin for its alcoholic goods. However, I do not see how this information relates to the present matters, notwithstanding it may be relevant to the applicant’s opposition against registration of trade mark application no. 1677248.

21. The Clulow 1 declaration lists a number of trade marks on the Register which incorporate the word CUBA and asserts that this shows that the applicant’s trade marks should also be granted registration and allowed to co-exist with other trade marks incorporating the word element CUBA. However, I note that of the four trade mark “registrations” listed by Mr Clulow, only two are for alcoholic beverages in class 33 and only one of those trade marks (Trade Mark Registration no. 1139249 CUBAN CUT) is actually registered. I note that the Register has very limited instances of trade marks containing the word CUBA for goods in class 33 or its associated goods classes. 

    Discussion

    Section 61 – Trade Mark containing or consisting of a false geographical indication

22. S 61 of the Act states:

    61  Trade mark containing or consisting of a false geographical indication

    (1)  The registration of a trade mark in respect of particular goods (relevant goods) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods (designated goods) originating in:

    (a)  a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or

    (b)  a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;

    if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.

    (2)  An opposition on a ground referred to in subsection (1) fails if the applicant establishes that:

    (a)  the relevant goods originated in the country, region or locality identified by the geographical indication; or

    (aa)  the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or

    (b)  the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or

    (c)  the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:

    (i)  1 January 1996; or

    (ii)  the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;

    whichever is the later; or

    (d)  if the registration of the trade mark is being sought in respect of wine or spirits (relevant wine or spirits)—the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.

    (3)  An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

    (a)  although the sign is a geographical indication for the designated goods, it is also a geographical indication for the relevant goods; and

    (b)  the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

    (4)  An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

    (a)  the sign consists of a word or term that is a geographical indication; and

    (b)  the word or term is a common English word or term; and

    (c)  the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

    Note 1:       Forapplicant, predecessor in titleand geographical indicationsee section 6.

    Note 2:       Fororiginate (in relation to wine only) see section 15.

23. Section 6 defines a geographical indication as:

    geographical indication, in relation to goods, means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.

24. The opponents submit that the use of the applicant’s trade marks would contravene s 61 because the opposed trade marks contain the word CUBA which is a recognised geographical indication as per:

    ·   the 1998 Decree-Act establishing a national seal of warranty of origin for all rum produced in Cuba for export, so as to guarantee the quality and origin of Cuban rum exports (Annexure MP4 accompanying Prot 2 declaration);

    ·   Cuban Regulation no. 113/2001 of July 2001 which defined the required qualities of Cuban rum, including permitted and prohibited practices for the preparation of Cuban rum, and organoleptic requirement such as smell and flavor, appearance, and physico-chemical characteristics (Annexure MP5 accompanying Prot 2 declaration).

    ·   the Decree-Act No. 228 (Annexure MP6 accompanying Prot 2 declaration) on Geographical Indication published in the Official Gazette of the Republic of Cuba on 22 February 2002 which updated the legal protection of Cuban Indications of Origin in accordance with the international obligation of Cuba.

1. The designated goods in the Decree-Acts and Cuban Regulation no. 113/2001, namely rum, are identical to some of those covered by the applicant’s specification of goods in class 33.

2. The applicant has argued that the word element CUBA is merely part of larger composite trade marks that when combined with other elements found in the opposed trade marks, namely, the words MATUSALEM and SPIRIT OF and EL ESPIRITU DE that would, the applicant submits, on the balance of probabilities be unlikely to be interpreted by rum consumers as meaning an alcohol originating in, or designating, CUBA.

3. The applicant has applied for the below three trade marks :

   1572280 “MATUSALEM THE SPIRIT OF CUBA LIBRE”

   1604966 “MATUSALEM EL ESPIRITU DE CUBA”

   1604967 “MATUSALEM EL ESPIRITU DE CUBA LIBRE”

   Trade Mark Application No.(s) 1604966 and 1604967

4. Firstly I will deal with the two trade mark applications which are in Spanish, trade mark application nos. 1604966 and 1604967. With both trade marks, the word CUBA is the element which immediately strikes the eye and is the element of the mark that is likely to be taken away and remembered. This is because CUBA is a word which is recognized and understood in the English language and the word that the general non-Spanish speaking Australian consumer is likely to focus on and remember when confronted with a phrase in Spanish. Australian consumers of rum would be familiar with the word CUBA as denoting geographical origin, particularly given the evidence adduced by the opponents that Cuba is well known by consumers as the Rum Island and has a strong reputation as a producer of rum (Annexure M-P1).

5. The applicant has argued that the trade marks contain a number of words in addition to CUBA and that the Australian consumer is unlikely to focus on the word CUBA and believe that the goods originate from Cuba. I do not agree with the applicant. Given that Spanish is the national language of Cuba, I think that the trade marks being in Spanish is likely to further emphasise the most recognizable and understandable word is “CUBA” in the Australian consumer’s mind and strengthen their belief that the goods originate from Cuba. However, the applicant’s rum has not been produced in Cuba since at least the early 1960s. It has been produced on other islands in the Caribbean since that time and is currently produced in the Dominican Republic.

6. I am satisfied that the word CUBA appears as a dominant element in the trade marks. I am therefore satisfied, having regard to the evidence of the Prot 2 declaration and annexures MP4 through to MP6 that CUBA is a geographical indication for rum (the designated goods) which are goods identical to, or similar to alcoholic beverages (except beer), including, rum, rum liqueurs, rum cocktails and alcoholic beverages containing rum covered by the opposed trade marks.

   Trade Mark Application No. 1572280

7. Considering this trade mark, MATUSALEM THE SPIRIT OF CUBA LIBRE, it is clear that an Australian consumer may be able to comprehend a number of different meanings which are attributable to the trade mark. For instance, MATUSALEM is the Spanish word for “METHUSELAH” but it is unlikely that the general Australian consumer would be aware of this although a small number may understand that the word MATUSALEM is a Spanish word.

8. From my own knowledge I am aware that CUBA LIBRE is the name of a cocktail which originated in Cuba and whose main ingredients are rum and coke. The Cuba Libre is a cocktail which is most commonly known and referred to as a “Rum and Coke” by the Australian public. It is not widely known or referred to as a Cuba Libre in Australia. In this context, “The Spirit of Cuba Libre” on rum could literally be taken to be descriptive and indicate that the rum goods are the spirit used in the famous “Rum and Coke” cocktail. It could also potentially refer to the free Cuban spirit which the applicant has stated it is intended to convey.

9. In any event, I am satisfied that the words which the Australian non-Spanish speaking consumer is likely to understand and derive a meaning from, in a trade mark which is absent any flourishes or graphic devices to emphasis one word or phrase over another, are the words THE SPIRIT OF CUBA. While the word MATUSALEM is at the beginning of the trade mark and a striking word without an English meaning, I believe that it only serves to protect the trade mark from a section 41 objection rather than a section 61 objection. The strong, striking and widely understandable elements in the trade mark include the word CUBA. As stated earlier in relation to the applicant’s other two trade marks, it is likely that an Australian consumer would know that Cuba is a famous producer of rum and link Cuba’s reputation with producing rum to the word CUBA on a bottle of rum and believe that the rum originated from Cuba. This is particularly so when it is common practice in the Australian marketplace for alcoholic beverages to contain geographical indicators on their labels. For example, as far as rum itself is concerned Bundaberg Rum®, Beenleigh® and Ron Santiago de Cuba® come to mind. It would be likely than an Australian consumer would see the word CUBA in the applicant’s trade mark and draw a likely conclusion that the rum originated in Cuba when the applicant’s evidence clearly demonstrates that its rum goods have not been produced in Cuba for at least 50 years.

10. I am satisfied that the word CUBA appears as a dominant element in the trade mark. Therefore, as with the applicant’s other two trade marks discussed above, I am satisfied that CUBA is a geographical indication for rum which are goods identical to, or similar to those covered by the opposed trade mark.

    Section 61 and overcoming an opposition

11. There are a number of ways in which the applicant may overcome a ground of opposition under s 61. For the sake of completeness I will go through those grounds individually below.

12. Under s 61(2) the opposition fails if the applicant establishes:

    (a)  the relevant goods originated in the country, region or locality identified by the geographical indication; or

    (aa)  the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or

    (b)  the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or

    (c)  the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:

    (i)  1 January 1996; or

    (ii)  the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;

    whichever is the later; or

    (d)  if the registration of the trade mark is being sought in respect of wine or spirits (relevant wine or spirits)—the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.

13. In regards to ss 61(2)(a), (aa), (b) and (d) it is clear from the opponents’ evidence that the word CUBA is recognized as a geographical indication for rum and that it continues to be a geographical indication for rum. It is likewise apparent that the applicant’s goods are not manufactured in Cuba and have not been for at least 50 years but that the rum is manufactured in the Dominican Republic. It is also clear that the Dominican Republic does not contain a geographical region called CUBA, and nor is CUBA the customary name of a variety of grapes used in the production or rum. Therefore, ss 61(2)(a), (aa), (b) and (d) are not open to the applicant to resist the opposition under s 61(1).

14. Turning to s 61(2)(c), I note that although the applicant’s evidence demonstrates that it has been using its MATUSALEM trade mark on rum goods since the 1870s it is unclear exactly what trade marks the applicant was using at that time and whether or not they are the trade marks that the applicant has currently applied for. Therefore, the applicant cannot establish a defense under s 61(2)(c).

15. Under s 61(3) the opposition fails if the applicant establishes:

    ·That, although the sign is a geographical indication for the designated goods (rum) it is also a geographical indication for the relevant goods (defined in s 61(1) as the goods actually covered by the opposed application); and

    ·That the applicant has not used and does not intend to use, the opposed trade mark in a way that is likely to deceive or confuse members of the public as to the origin of any of the goods covered by the opposed application.

16. As mentioned earlier, the applicant’s goods are manufactured in the Dominican Republic which does not use CUBA as a geographical indication for rum so this ground fails at the first hurdle.

17. Under s 61(4) the opposition fails if the applicant establishes that:

    ·the sign consists of a word or term that is a geographical indication; and

    ·the word or term is a common English word or term; and

    ·the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

18. In this regard even if the applicant was able to satisfy me of the first two points it is at the third point at which the applicant inevitably stumbles and ultimately fails to establish this defense.

19. The applicant has stated that it does not use the trade marks on its rum in a way that it likely to deceive or confuse members of the public as to the origin of the relevant goods. Mr Maxwell, the representative of the applicant, argued that both involved and uninvolved purchasers of rum products will inspect labels and see that the product is in fact rum, made in the Dominican Republic. He states that a label indicating rum and made in the Dominican Republic clearly demonstrates that the origin of the rum is not Cuba. Mr Maxwell reminded me that the applicant’s labels on the back of the bottle all contain the history of the applicant and that the applicant is not attempting to deceive or confuse consumers as to the origin of its goods (Exhibits 1 to 3 accompanying the Salazar 1 declaration).

20. The above statements made by the applicant may be true when I consider the applicant’s evidence and most notably the labels the applicant applies to its rum product. The labels do contain wording to the effect that the rum goods are made in Dominican Republic. However, there are a number of instances of actual demonstrated confusion in the marketplace with both consumers and suppliers mistakenly referring to the applicant’s goods branded with the opposed trade marks as originating from Cuba (Annexure MP9 accompanying the Prot 2 declaration). While the applicant may not have intended to cause deception or confusion as to the origin or its goods, it has still used its trade marks in a way which has caused deception and confusion in the marketplace as to the origin of the relevant goods.

21. Moreover, the applicant has not applied for the complex composite labels containing additional words, flourishes and graphic and which identify the actual country of manufacture. Rather, the applicant has applied for three plain text trade marks which prominently feature the geographical indication CUBA and I am satisfied that it is likely that an Australia consumer faced with the opposed trade marks is likely to believe that the origin of the goods is Cuba.

22. Therefore, the applicant has been unable to establish a defense in terms of s 61(4).

23. I am satisfied that all three opposed trade marks are likely to deceive and confuse members of the public as to the origin of the applicant’s rum goods. On balance I am satisfied the opponents have made out the s 61 ground of opposition.

    Decision

24. Section 55 of the Act provides:

    55  Decision

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

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

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

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

    Note:          Forlimitationssee section 6.

25. I find that the opponents have met the onus upon them, in terms of the ground of opposition under s 61. Accordingly I refuse to register trade mark application no(s). 1572280, 1604966 and 1604967.

    Costs

26. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    21 June 2016