Havana Club Holding SA v Pac-Rim Management Services Ltd

[1998] ATMO 35

TRADE MARKS ACT 1995

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

Re:      Opposition by HAVANA CLUB HOLDING S.A. to the registration of trade        mark applications numbers 670435, 670436, 670437 and 670438 in the name of PAC-RIM MANAGEMENT SERVICES LTD.

Background

The four above-identified applications were filed on 24 August 1995, in the name of Pac-Rim Management Services Ltd (the applicant).  Acceptance of these applications was advertised in the Australian Official Journal of Trade Marks of 8 August 1996.  The trade marks sought to be registered, the services in respect of which the marks were advertised as accepted and the classes of the applications were as follows:

670435   CLUB HAVANNA               Restaurant  42

OF CANBERRA                 

670436   CLUB HAVANNA               Entertainment, nightclub       41

OF CANBERRA

670437   CLUB HAVANA                 Entertainment, nightclub       41

OF CANBERRA

670438   CLUB HAVANA                 Restaurants  42

OF CANBERRA

On 7 November 1996, Havana Club Holding S.A. (the opponent) filed notices of opposition to registration of the trade marks of the four applications.  The grounds of opposition are identical on all the applications.  Of the seven grounds, at the hearing the opponent primarily relied on the grounds based on section 44, that the applicant’s trade marks are either substantially identical with or deceptively similar to the trade marks of the opponent’s registration/application, and on section 60, that use by the applicant of its trade marks on the services specified would be likely to deceive or cause confusion in the trade, having regard to the opponent’s trade mark registration/application and use and reputation of the opponent’s trade marks. 

The serving and filing of the evidence in support on all the applications were completed on 7 November 1997.  The applicant did not file any evidence in answer.  The opponent requested a hearing on the matter, which was held in Canberra on 29 April 1998.  Mr Ian Scott of Watermark, patent and trade mark attorneys of Melbourne, represented the opponent by telephone.  The applicant neither appeared at the hearing, nor made any written submissions. 

Evidence
The evidence in support comprises a statutory declaration, dated 3 November 1997, with exhibits, by Nicholas Blair, who is the marketing manager of spirits at The Orlando Wyndham Group Pty Ltd, a company involved in the manufacture and distribution of wine and other alcoholic and non alcoholic beverages.  This company has been involved in the distribution and sale in Australia of alcoholic beverages produced by the opponent, who is the registered proprietor of a trade mark in Australia in class 33 and has applied for application number 679180 in classes 41 and 42, which is pending.  Mr Blair provides sales value of the opponent’s product rum bearing the HAVANA CLUB trade mark, which has been sold in Australia since July 1994.  As his company has also been responsible for the advertising and promotion of the product in Australia, Mr Blair attaches to his declaration samples of such material and states the expenditure figures. 

Submissions
Mr Scott noted that no acknowledgment of receipt of the notice of opposition and evidence in support had been received from the applicant.  He mentioned further that the applicant had filed no evidence in answer, nor directed any correspondence or any other communication to the opponent since the notices of opposition. 

With reference to Mr Blair’s declaration, Mr Scott pointed to the deponent’s knowledge of the renown of the mark HAVANA CLUB, resulting from its use in respect of rum distributed to a wide range of licensed venues throughout Australia, which specifically included clubs, restaurants and hotels, remarking that most hotels these days have restaurants.  He directed my attention to the details as to the Australia-wide promotion of the HAVANA CLUB products, particularly the details concerning promotion in a kit form on the relevant premises.  From the items comprising such a kit he selected T-shirts and shot glasses, asserting that advertising the mark on these goods demonstrated use of the mark on those items in the course of trade.  He referred to a trade mark application number 447977, now a registration, which had been accepted for inflight magazines offered free to passengers, because they had paid for it as part of the price for a flight ticket.  Relying on this precedent, Mr Scott argued that, even though the opponent’s promotional use was not a genuine use in respect of the trade mark, he believed it was related to the actual goods, rum, and should be clearly considered as such.  Referring to Mr Blair’s declaration further, he noted advertisements of the opponent’s mark in the Australian print media, and the declarant’s lack of awareness of the applicant’s marks having been used in respect of the specified services. 

Mr Scott submitted that the opponent’s evidence established the likelihood of confusion, if the trade marks in question were permitted to co-exist on the Register.  The onus had thus shifted to the applicant to demonstrate that its marks were still entitled to registration, Mr Scott said, but that the applicant had not produced any evidence to show why the trade marks should proceed to registration in view of the opponent’s evidence.  In fact, it had shown no interest in the opposition proceedings, or attempted to defend its applications.  In this regard, Mr Scott cited for my consideration two unpublished Office decisions where the applicant had not filed any evidence in response to the evidence in support: Lazy Daze Clothing Company Pty Ltd v Michael Thomas McAuley, issued on 7 January 1993, and Summerland Exports Pty Ltd v John Andrew Sinclair, issued on 29 November 1994. 

Mr Scott said that the opposition must be upheld and the applications refused on the undisputed evidence on file and on the question of balance of convenience.  Elaborating on his assertion, Mr Scott referred to the evidence, which, he submitted, demonstrated use of the opponent’s mark and its acquired reputation, as opposed to the lack of use of the applicant’s marks, in such circumstances the balance of convenience favouring the opponent. 

In conclusion, he submitted that the opposition to the companion applications should also be upheld and that all the applications ought to be refused, because the services in those applications were related, as indicated by the promotion of the opponent’s trade mark, as well as the places and manner in which the promotion had been carried out.  

The opponent requested costs be awarded in its favour.

Discussion
Section 44 - substantially identical or deceptively similar trade mark
Subsection 44(2) reads as follows:

Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)       it is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar   services or closely related goods; or

(ii)  a trade mark whose registration in respect of similar services or   closely related goods is being sought by another person; and

(b)       the priority date for the registration of the applicant’s trade mark in           respect of the applicant’s services is not earlier than the priority date        for the registration of the other trade mark in respect of the similar           services or closely related goods.

Section 10 of the Act defines a deceptively similar mark if it so nearly resembles the other mark that it is likely to deceive or cause confusion. 

The trade mark of the opponent’s prior registration number 263564 is shown here:

It is registered in class 33 in respect of “all kinds of alcoholic beverages in this class, including liqueurs and rum”.  The opponent’s application number 679180 was filed after the present applications.

In light of the criteria expounded in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 and Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 concerning substantially identical or deceptively similar trade marks, there does not seem to be any question that the applicant’s marks and the mark of the opponent’s registration are neither identical nor substantially identical. Considered in isolation when the marks are no longer compared next to each other, and the matter depends on an impression or recollection of the marks which would be likely to impact on the minds of the prospective consumers, I believe, however, the applicant’s and the opponent’s marks to be deceptively similar.

The dominant part in each of the marks consists of the words CLUB HAVANNA, CLUB HAVANA and HAVANA CLUB, coupled with the words OF CANBERRA in the applicant’s marks and the device of a statue holding a staff in the opponent’s mark occupying a subordinate position.  Given that the most obvious verbal description of these marks could be attributed to the dominant word features, the common idea expressed by those words and the “imperfect recollection” principle discussed in cases such as Rysta Ltd’s Appn (1943) 60 RPC 87, there would exist a possibility of deception or confusion of the marks if the applicant’s services were considered to be closely related to the goods covered by the opponent’s registration. I do not think this is likely to occur in the present circumstances, and to support my contention, I rely on the well established tests in this regard of Romer J in Jellinek’s Application 63 RPC 59.

The nature and use of alcoholic beverages obviously differs from restaurant, entertainment and nightclub services.  While alcoholic drinks are usually available and served in restaurants and nightclubs and some places of entertainment, they are not normally produced and supplied to those venues by the same persons who offer services of the kind nominated by the applicant.  In the present case there is no suggestion that any alcoholic beverages are offered by the applicant for separate purchase to be taken away by customers, as opposed to being consumed on the applicant’s respective premises.  The trade outlets for the applicant’s services therefore do not coincide with the opponent’s goods.  For all these reasons, it is considered that the services specified in the present applications are not closely related to the goods encompassed in the opponent’s registration number 263564. 

Thus, in my estimation, the opponent’s grounds of opposition in relation to section 44 must fail. 

Section 60 - trade mark similar to the trade mark that has acquired a reputation in Australia

60.  The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)   it is substantially identical with, or deceptively similar to, a trade mark that,         before the priority date for the registration of the first-mentioned trade      mark in respect of those goods or services, had acquired a reputation in      Australia; and

(b)   because of the reputation of that other trade mark, the use of the first-        mentioned trade mark would be likely to deceive or cause confusion.

I have already indicated that I consider the applicant’s and the opponent’s marks to be deceptively similar.  Mr Blair’s statement that the alcoholic beverages bearing the opponent’s mark have been sold to a wide range of wholesale and retail liquor outlets throughout Australia, as well as liquor licensed premises, is not supported by concrete evidence.  From the presented evidence, it appears that, before the filing of the present applications, use in Australia of the opponent’s registered mark occurred only in respect of rum, the use having commenced only in 1994.  The opponent’s decision at the end of 1994 to advertise and promote the mark for rum by way of distributing a kit comprising various items, which displayed the mark at 200 licensed premises in Australia, seems to have resulted in boosting sales of the product in 1995 to $32,766.45, which, apparently, was followed by a considerable fall in the subsequent year.  Together with the turnover for 1994, the total sales of the product at the end of 1995, amounting to $32,917.45 (before excise and sales tax) show only a very modest exposure of the goods on the relevant market for a short period, given that the average retail cost of the opponent’s bottle of rum was $25.00.  It is noted that the advertising in newspapers, magazines, display material and other promotional material has largely been conducted by the opponent subsequent to the present applications and therefore could hardly enhance the reputation of its mark in respect of rum prior to the applications.  Having regard to these factors, there has not been a wide awareness of the opponent’s mark in Australia as at 24 August 1995. 

No evidence has been placed before me as to the marks in suit having caused deception or confusion in light of the alleged reputation enjoyed by the opponent’s product.  Similarly, Mr Blair’s opinion that, by virtue of the opponent’s extensive advertising and promotion as well as sales of the product rum in licensed establishments, any member of the public consuming a HAVANA CLUB rum drink in a nightclub or restaurant bearing the subject marks would perceive a link in the form of a licence between the producer of the rum and the applicant, has not been substantiated by any testimony from the persons concerned. 

Neither the evidence nor the opponent’s submissions have persuaded me that, in light of the opponent’s use and advertising of the mark containing the words HAVANA CLUB, purchasers of the opponent’s rum are likely to infer a connection between this product and the services nominated by the applicant.  Consequently, I find no basis for the opponent’s ground in terms of section 60.

Conclusion
I have found that the opponent has not been successful on any of the grounds relied upon in the evidence and submissions.  I therefore dismiss the opposition.  Subject to any appeal of this decision, all four of the above applications should proceed to registration. 

As the applicant did not file any evidence, nor did it attend the hearing, or forward to the Office written submissions in relation to the opposition, I award no costs in its favour. 

Vija Zars
Hearing Officer
22 July 1998