Highland Heritage Estate (Sales) Pty Ltd v Le Grand Imports/Exports Pty Ltd

[2010] ATMO 4

TRADE MARKS ACT 1995

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

Re:Opposition by Highland Heritage Estate (Sales) Pty Limited to registration of trade mark applications 1147260(33) - STONEFISH – and 1149249(33) - STONEFISH and device - filed in the name of Le Grand Imports/Exports Pty Ltd.

Delegate:

Alison Windsor

Representation:

Opponent:  John Atkin of counsel

Applicant:  Carmen Champion of counsel

Decision:

2010 ATMO 04

S52 oppositions:  grounds under sections 41, 58, 60 and 42(b) pursued - no grounds established – opposition fails – costs awarded against the opponent.

Background

1. Le Grand Imports/Exports Pty Ltd (“the applicant”) filed two applications to register trade marks, current details of which are as follows:

Application No	1147260	1149249
Filing date	16 November 2006	27 November 2006
Goods/Class	Class 33 – Wine, sparkling wine and alcoholic spirits	Class 33 - Wine
Trade Mark	STONEFISH
Acceptance advertised	22 March 2007	29 March 2007

1. The applications were examined as required by section 31 of the Trade Marks Act 1995 (“the Act”) and in due course were advertised in the Australian Official Journal of Trade Marks as accepted for possible registration.

2. On 16 April 2007, Highland Heritage Estate (Sales) Pty Limited (“the opponent”) filed notices of opposition (“the notices”) on both applications. Evidence in support, in answer and in reply were duly served and filed as required by the Act and Regulations (Trade Mark Regulations 1995).  The oppositions were then set down to be heard, the hearing to take place in Sydney on 3 March 2009.

3. A few days prior to the hearing date, the opponent served and filed a declaration which it stated was to be relied upon at the hearing.  The applicant received the declaration the day before the hearing.  The applicant’s representatives advised that they intended to object to allowance or consideration of this declaration, and that they intended to request an adjournment of the hearing in order to consider the material.  The hearing officer delegated at the time to hear the matter, with the agreement of both parties, aborted the hearing on the day and allowed both parties time in which to properly serve and file their respective further evidence.    

4. Once both parties had completed service and filing of their further evidence, the oppositions were again set down to be heard.  For this hearing, I was delegated to hear the parties in Sydney on 10 November 2009.  John Atkin of counsel appeared for the opponent.  Carmen Champion, also of counsel, appeared for the applicant.

Evidence provided

1. The evidence provided by the parties is in respect of both applications consists of the following:

Opponent’s evidence

Statutory Declarations made by Rex Nunzio D’Aquino, director of the opponent

·   D’Aquino 1 with no exhibits or annexures, made 17 September 2007 (Evidence in support)

·   D’Aquino 2 with Annexures A and B, made 24 June 2008 (Evidence in reply)

·   D’Aquino 3 with Annexures A to M, made 24 February 2009 (Further evidence)

Applicant’s evidence

Declarations made by Peter Papanikitas, director of the applicant

·   Papanikitas 1 with Exhibits 1 to 5, made  4 March 2008

(Evidence in answer)

·   Papanikitas 2 with Annexures A to W, made 10 June 2009 (Further evidence)

Grounds of opposition

1. The two notices of opposition are identical, and effectively nominate the following grounds:

   ·   Section 58 – applicant not owner of trade mark

   ·   Section 41 – trade mark not distinguishing applicant’s goods or services

   · Section 42(b) – use contrary to law

   · Section 60 – trade mark similar to trade mark that has acquired a reputation in Australia.

2. It is standard practice for the delegate in these matters to request that the opponent advise of the grounds it intends to pursue at the hearing early enough for the applicant to efficiently prepare its submissions.  On 15 October 2009, via an e-mail, I set out a timetable for the opponent to advise the grounds of opposition it intended to pursue at the hearing and for both parties to provide their summaries of argument.

3. On 29 October 2008 the opponent advised the grounds it proposed to pursue at the hearing.  However, the list it provided included grounds not nominated on the notices, those being grounds under sections 43 and 58A.[1]  The applicant advised that it would object to any amendment of the notices.  I then advised both parties that if the opponent intended pursuing these grounds, a formal application to amend the notices would be required.  Since the application would, of necessity, be received very close to the hearing date, I would take submissions from both parties on the amendment application prior to hearing the substantive oppositions.  

   [1] I note that the ground under 58A would not be allowable in any event because its operation is based upon the application having been accepted under the provisions of subsection 44(4), which is not the case here.

4. In the end, the opponent did not file an application to amend the notices, and its representative did not mention the matter at the hearing.  The grounds pursued were those nominated on the notices and set out previously.

5. The opponent bears the onus of establishing at least one ground of opposition.  The standard of proof is that of the balance of probabilities.[2]  The relevant dates at which the grounds should be established are the priority dates of the applications under opposition.

   [2] Pfizer Inc v Karam (2006) 70 IPR 599

Discussion

1. The evidence of use provided by both parties is problematic in that the D’Aquino and Papanikitas declarations all contain a significant portion of opinion and inference, rather than hard facts.  Both parties often refer to the same events, but their recollections of these events are quite different.  It is not possible to give significant weight to this kind of evidence. 

2. The actual evidence of sales which has been provided by both parties does not clearly identify what items have been sold and when.  The relationship between the companies that each party owns, their dealings with each other and with the goods bearing the trade marks is likewise not at all clear.  

3. The onus is on the opponent, however, to establish at least one ground of opposition, on the balance of probabilities, before it can claim success in these actions.  I must determine from the information presented to me whether the opponent has achieved this. 

Section 41 – trade marks not capable of distinguishing

1. Delegates of the registrar at the examination stage have decided that each of these trade marks is inherently adapted to distinguish the applicant’s goods.  In order to establish a ground of opposition under the provisions of section 41, the opponent needs to provide information which satisfies me that the trade marks subject of these oppositions do not have that capacity to distinguish the opponent’s goods from the similar goods of other traders.  The opponent has provided nothing pertinent to this matter.  I am satisfied that the original delegates were correct in their assessment of the trade marks, and that the provisions of section 41 were properly applied. 

2. This ground of opposition has not been established.

Section 58 – applicant not owner of trade mark

1. In order to establish a ground of opposition under the provisions of section 58, the opponent needs to establish that:

   ·   the respective trade marks of the applicant and opponent are either identical or substantially identical [3],

   ·   the respective goods of both parties are the ‘same kind of thing’ [4]

   ·   the opponent has the earlier claim to ownership based on use prior to both the application to register and any actual use of the mark by the applicant[5].

   [3] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495

   [4] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

   [5] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

2. The first two dot points are not in question.  Both applicant and opponent are claiming ownership and use of the same or substantially identical trade marks for the same range of goods.  The remaining dot point, however, is not as easy to determine.

3. Both applicant and opponent claim ownership of the trade marks – the applicant via its claim that Mr Papanikitas ‘authored’ the trade mark, and the opponent via a claim that the trade mark was created while Mr Papanikitas was an employee of the opponent.  The parties do not agree on the date at which the creation of the trade mark occurred.  Neither do they agree on Mr Papanikitas’ employment status with the opponent at the time.

4. Both parties also claim first use.  There is evidence provided that wine bottle labels incorporating the trade marks were produced by two different printing firms – one in New South Wales and one in Western Australia - on behalf of the two parties.  I note that the applicant attests that its labels were first produced in 2000 while the documentation supporting the opponent’s version of the labels is dated 2002.  

5. As far as actual use is concerned, the situation is not at all clear.  The applicant claims that it contracted the opponent to produce wine for it under the STONEFISH labels (Papanikitas 1, para 7).  This contractual arrangement dated from September/October 2000 (Papanikitas 2, para 8(c)i). 

6. The opponent states that it did not sell any wine products under the STONEFISH label until November 2000, when it sold goods under the trade mark to an entity known as Cottenham Services Pty Limited (D’Aquino 3, para 6).  The applicant states that this entity was, at the time, a “service provider” for its associated company, Estate Wine Distributors Pty Ltd (Papanikitas 2, para 8(f)i).[6]

   [6] According to Annexure T to the declaration, a service provider finances purchases from wineries; offers warehousing and logistics services, including holding stock in its warehouses; and offers various business services such as taking orders, invoicing and managing accounts as well as debt collection.

7. If the opponent was the applicant’s contract wine producer, then the sales made to Cottenham appear to have been made for and on behalf of the applicant.  The evidence is not absolutely clear, but it appears to point towards the applicant having some right in the trade mark. 

8. Fed into the mix is the fact that the applicant had registered a trade mark prior to November 2000, current details of which are shown in the following table.  I note that the opponent did not oppose this application at the time it was accepted.

Registration No	841673
Filing date	7 July 2000
Goods/Class	Class 33 – table wine (bottled)
Trade Mark
Endorsement	When the trade mark is used for items in the specification of goods other than CHARDONNAY, the word CHARDONNAY in the trade mark will be changed to accord with those other items.

1. Relevant to the existence of this registration is the fact that both parties have put into evidence correspondence between the parties over a legal issue which arose in 2003.  This correspondence may help shed some light on the matter of ownership. 

2. On 29 July 2003, the applicant caused its solicitors to send a letter to the opponent advising that the opponent was in breach of both the Trade Practices Act 1974 (“the TPA”) and the Trade Marks Act 1995 because of its use of the STONEFISH labels without appropriate authorisation.  The opponent responded the next day and said, in reference to the authorisation matter: 

   We are authorized by Mr Peter Papanakitis, a director of Le Grande Import/Export Pty Ltd, to sell Stonefish wines to Estate Wine Distributors …, Estate Services Pty Ltd … and Wholesale Wine Services Pty Ltd trading as Estate Wine Distributors …. This authorization started 1^st July, 01. 

   I have checked our sales data and there are no sales of Stonefish wines to any unauthorized persons.

3. The opponent here appears to be admitting and accepting that the applicant has the right to authorize another party to use the Stonefish trade mark.  The wording of this letter supports the applicant’s claim that it is the owner of the trade mark, and that it may have had a contractual relationship of some kind with the opponent, at least in the early days. 

4. In determining whether the opponent has established a ground of opposition, I am required to be satisfied that it has done so.  Because of the uncertainty of the evidence surrounding the authorship of the trade mark and the date of first use, the matter is not really clear cut. 

5. However, given the information I have, I consider it to be more probable than not that the applicant has the first use of the trade mark within Australia, and that the opponent was acting as a contract wine producer on behalf of the applicant.  I consider it to be more probable than not that the applicant was the owner of the STONEFISH label at the priority date of these applications.  Therefore the opponent has failed to establish this ground of opposition.

Section 60 – trade mark similar to one with a reputation in Australia

1. Section 60 of the Act provides:

Trade mark similar to 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) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.

1. To satisfy these provisions the opponent must demonstrate that, at the time of filing of the opposed application, it had a reputation in a trade mark, such that use of the applicant's trade mark(s) would likely cause the public to be deceived or confused. The opponent's trade mark need not be subject of an application or registration, in order to be able to be relied upon under this section.

2. I note that one of the opponent’s associated companies, Fernbrew Pty Ltd, has registered a version of the STONEFISH trade mark in New Zealand, with a priority date in 2004.  It has also registered the word alone and the fishbone device alone as Community Trade Marks, and the word is also registered with OAPI[7].  Not all of these registrations pre-date the applicant’s priority dates.[8]

   [7] African Intellectual Property Organization

   [8] The applicant has recently registered the trade marks in Japan, Singapore, the USA, Hong Kong, Malaysia and Canada, and has two registrations in Australia, both of which predate the applications’ filing dates.

3. These registrations have no value in respect of the opponent’s reputation in Australia.  The relevant test for reputation is that set out by Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 and quoted by Kenny J in McCormick & Company Inc v McCormick (2000)51 IPR 102 at 128:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

4. Justice Kenny continued at 129 with the words:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark as opposed to the product.

5. The opponent has not provided any examples of exposure of its trade mark to the general public.  It has provided no indication of sales volumes or values prior to the relevant date (or indeed after it), nor has it provided any indication of advertising of the product at all.  It has certainly provided copies of invoices which include references to sales of goods under the word STONEFISH, but there is no consolidated information which serves to support a claim for a reputation in Australia.

6. The information provided does not allow me to infer that the opponent has any kind of reputation within the Australian marketplace.  From this I am unable to find any likelihood of deception or confusion resulting from the applicant’s use of its trade marks within the same market.  The opponent has not established this ground of opposition.  

Section 42(b) – use contrary to law

1. Section 42(b) of the Act provides that an application for registration of a trade mark must be rejected if its use would (not could) be contrary to law. The opponent submitted that “use of the trade mark would be likely to confuse or deceive and is contrary to the Trade Practices Act”.

2. I infer from this submission that the opponent is referring to the provisions of section 52 and/or section 53 of the TPA. These sections deal respectively with misleading or deceptive conduct and with the making of false or misleading representations.

3. I have found that the opponent has not established a reputation in its trade mark as required by section 60, and therefore that the applicant’s use of its trade mark is unlikely to result in deception or confusion in the marketplace. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct under s 52 of the TPA than is the case with trade marks likely to deceive or cause confusion under section 60 of the Act.

4. For example, in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, Gibbs CJ noted with respect to s.52 of the TPA (at 688):

   In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

5. Given that the opponent has provided so little hard information about its business, and there is so much uncertainty and ambiguity within its evidence as a whole, it is unable to meet the higher threshold required to make out a case under sections 52 of the TPA. Since I have found that the use of applicant’s trade marks is unlikely to mislead or deceive as would be required to meet the terms of section 52, I similarly find that the use would not amount to false representations in the terms of section 53.

6. I am therefore not satisfied that the applicant’s use of its trade mark would be contrary to law.  This ground of opposition is not established.

Decision

1. The opponent has not established any of the grounds of opposition it pursued.  Trade mark applications nos. 1147260 and 1149249 may therefore 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 the appeal has been discontinued or, in the event of a decision from the Court, that the applications be subject to that decision.

Costs

1. The applicant requested its costs in the event of success, and having succeeded is entitled to them.  I award costs against the opponent according to the official scale, noting the decision made by the Registrar’s delegate in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd (2001 ATMO 78) in respect of the amounts which may be claimed when more than one opposition is heard at the same time.  

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

18 January 2010