Idyll Wine Co Pty Ltd v 1821 Wines Pty Ltd

[2022] ATMO 137

TRADE MARKS ACT 1995

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

Re:Opposition by Idyll Wine Co Pty Ltd to registration of trade mark application 2071010 (33) – Twisted Pixie – in the name of 1821 Wines Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Piper Alderman

Applicant: Andrew Sykes of Counsel instructed by Bedelis Lawyers

Decision:

2022 ATMO 137

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44, 58 and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Idyll Wine Co Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of 1821 Wines Pty Ltd (‘Applicant’): 

Application Number:

2071010

Filing Date:

22 February 2020

Goods:

Class 33: Alcohol for drinking; Alcoholic beverages (except beer); Alcoholic beverages containing fruit; Alcoholic beverages containing wine; Alcoholic cocktails; Alcoholic mixed drinks; Alcoholic punches; Baijiu (Chinese distilled alcoholic beverage); Carbonated beverages (alcoholic, except beers); Distilled alcoholic beverages; Fruit based alcoholic beverages; Liquors (alcoholic beverages); Low alcohol cider; Low alcohol cocktails; Low alcohol spirits; Low alcohol wine; Pre-mixed alcoholic beverages, other than beer-based; Sparkling cider (alcoholic); grain-based distilled alcoholic beverages; sugarcane-based alcoholic beverages

(‘Applicant’s Goods’)

Trade Mark:

Twisted Pixie
(‘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 by a Statement of Grounds and Particulars on 19 October 2020 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 18 December 2020. 

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 19 March 2021 by Andrew Byers, Executive Director of the Opponent, with Annexures AB-1 to AB-5 (‘Byers 1’).

   ·Confidential Declaration made on 19 March 2021 by Andrew Byers (‘Byers 2’).

   ·Declaration made on 22 March 2021 by Timothy John O’Callaghan, partner at Piper Alderman, the Opponent’s representative, with Annexures TOC-1 to TOC-12 (‘O’Callaghan Declaration’).

   5.  The Applicant filed the following evidence in answer:

   ·Declaration made on 26 April 2019 by Penelope Taylor, Company Director of the Applicant, with a number of unnumbered attachments (‘Taylor Declaration’).

   6.  The Opponent did not file evidence in reply.

   7.  The parties have requested an oral hearing in this matter.  The matter was set down for a hearing on 19 July 2022 and the matter was allocated to me.  In line with usual practice, correspondence was sent to the parties on 9 May 2022 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 5 July 2022 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 12 July 2022 (‘Applicant’s Submissions’).  At the hearing Tim O’Callaghan of Piper Alderman represented the Opponent and Andrew Sykes of Counsel instructed by Bedelis Lawyers represented the Applicant, each appearing by video conference.

   8.  I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

2. The Opponent is an Australian company specialising in wine, cider and other beverage production.  

   10.     The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods
1879846	FAT PIXIE	12 Oct 2017	Class 32: Alcoholic beers; Beer; Black beer; Pilsner beer; Root beer; non alcoholic beverages in this class Class 33: Alcoholic beverages (excluding beer) and wine products; wine, spirits and liqueurs

11.     The relevant claims/statements in Byers 1 and Byers 2 are summarised below.  Much of the material in Byers 1 and 2 postdates the relevant date and hence does not need to be summarised in any great detail:

·     The Opponent produces single vineyard wines from some of Australia’s most well-known regions.  In addition it produces alcoholic cider and ginger beer under the Opponent’s Trade Mark.  The Opponent commenced use of the Opponent’s Trade Mark in August 2018, with further varieties of cider/ginger beer being launched in 2019.

·     The Opponent has promoted its cider and ginger beer products under the Opponent’s Trade Mark since 2018 from its website at and through social media.  Additionally the Opponent’s Trade Mark has been featured in various Australian publications. 

12.     The O’Callaghan Declaration consists of annexes providing further support to the statements made by Mr Byers as to the degree of marketing and promotion engaged in by the Opponent under the Opponent’s Trade Mark.  I consider the Opponent’s advertising spend to be unimpressive given the size of the market but its sales figures prior to 2020 are significant. 

The Applicant

13.     The relevant claims/statements in the Taylor Declaration can be summarised as set out below:

·     The Applicant was incorporated in 2019 with the aim of making uniquely flavoured alcoholic and non-alcoholic drinks, which it primarily does under the brand NATIVE SODA.  When the Applicant applied for the Trade Mark, the declarant was unaware of the Opponent’s Trade Mark. The Applicant’s Twisted Pixie brand is to be used for a line of drinks that mixes Australian botanical flavours with wine, ferments and other spirits.  The declarant chose the Trade Mark because ‘twisted’ refers to twisting existing flavours and ‘pixie’ refers to the declarant’s childhood nickname.

·     The declarant considers that confusion is unlikely because the Opponent’s product is a cider-based drink targeting men and the Applicant’s intended product is a spirit/wine drink targeting young women.  There will also be different packaging, container size and messaging.   

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 58, 60 and 62A however in its oral submissions indicated that it no longer pressed the grounds under s 42(b) or 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   15.     The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is the filing date 22 February 2020 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

2. The relevant provisions are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), 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)it is substantially identical with, or deceptively similar to:

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

   (ii)             a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   (2)..

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   
   
   

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)              the similar goods or closely related services; or

   (ii)             the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   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.

   17.     To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

3. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.  As the Applicant has not used the Trade Mark on anything other than a minimal basis, I find that the provisions of ss 44(3) or 44(4) will not be satisfied.  If the three requirements of s 44(1) are satisfied then I will find the ground of opposition under s 44 established.

4. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has a priority date that is earlier than the relevant date.  Furthermore I am satisfied that the Opponent’s Trade Mark is registered for similar goods, being Alcoholic beverages (excluding beer) and wine products, as the Applicant’s Goods (which generally fall under the category of alcoholic beverages, including wine products).   The first and third requirements are satisfied.

   Substantially identical and/or deceptively similar

5. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   [4] (1963) 109 CLR 407, 414.

   21.     The Trade Mark and the Opponent’s Trade Mark are set out below:

   TWISTED PIXIE  FAT PIXIE                  

   22.     On a side-by-side comparison there are clear differences, namely the first word in each mark  which means that a total impression of dissimilarity emerges from a comparison of the respective marks. I do not accept the Opponent’s submission that the word ‘pixie’ is the essential feature in both marks; both words in the respective marks play a role.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

   23.     The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. 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 [trade mark].[5]

   [5] Ibid [13].

   24.     Justice Jacobson in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

   [10] [2012] FCA 1022, [37]-[46].

6. In the present case each of the marks consist of two words, the second of which is the word ‘pixie’ and the first of which is an adjective that applies to the noun ‘pixie’.  While each of the adjectives is a negative descriptor (i.e. an overweight pixie or a warped or unnatural pixie), the adjectives are neither synonyms, antonyms or words commonly associated with one another (TWISTED PIXIE does not have the same relationship to FAT PIXIE as FAT PIXIE would have to HEFTY PIXIE or THIN PIXIE, nor does it consist of associated adjectives such as GREEN PIXIE and BLUE PIXIE).

7. Both parties have made submissions, supported by extensive case law, as to whether the respective marks are deceptively similar.  I start by noting that I do not accept the Opponent’s submissions that the word ‘pixie’ is the essential feature in each of the respective marks; rather I consider that both words in each mark play a role in distinguishing the goods offered under that trade mark from goods offered by competitors.  This distinguishes the current case from a number of decisions quoted by the Opponent that I and other hearing officers have issued in the past finding s 44 established when the respective trade marks consisted of one distinctive element (such as QUANTUM, RICHMOND, or BEHIND THE) and one descriptive element that was not distinctive in the eyes of the consumer (GROUP, PARK/GROVE or MUSIC/SONG).  The mere fact that the words ‘fat’ and ‘twisted’ are adjectives does not make them merely descriptive or otherwise unable to operate as an essential feature of the relevant trade marks.

1. I note the case law referred to by both sides, but each case must be decided on its own facts. The question before me is whether, considering the surrounding circumstances, a number of consumers familiar with the FAT PIXIE mark for the Opponent’s Goods would, when seeing the Trade Mark on the Applicant’s Goods, be caused to wonder if the respective products come from the same source.

2. The Applicant submits that the marks are visually and aurally dissimilar, with a different first word, and a different number of syllables, such that given the nature of the goods, it is unlikely that a person, when looking for a FAT PIXIE product, would be given a TWISTED PIXIE product.  I accept the Applicant’s submissions on that point.  Furthermore I find that the marks, while sharing a degree of conceptual similarity (in that they consist of a negative descriptor of a pixie), are not so similar that consumers are likely to be confused into thinking that TWISTED PIXIE is a related product to the Opponent’s FAT PIXIE product (as opposed to a mark such as HEAVY PIXIE or THIN PIXIE).  As noted in the Applicant’s Submissions, the Opponent does not have a monopoly in trade marks consisting of ‘[adjective] pixie’ and I am not convinced that the limited conceptual similarity of the marks is sufficient to outweigh the obvious visual and aural distinctions in the mind of the consumer.  Furthermore, in the absence of additional evidence, including use of another ‘adjective PIXIE’ mark by the Opponent I am not prepared to find that the mere shared use of the word ‘pixie’ would cause consumers to think that it was one of the Opponent’s family of ‘adjective PIXIE’ trade marks. I am not satisfied that the respective marks are deceptively similar.

3. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 58

   30. Section 58 is reproduced below:[11]

   [11] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12] (Hearing Officer Wilson).

   Section 58 Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

   31.     The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[12]

   · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[13] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[14]

   32. The ground based on s 58 was particularised in the SGP as follows:

   The Opponent has used its trade mark, FAT PIXIE, in respect of Class 32 and Class 33 goods (including ciders, ginger beers and wine products) since at least September 2017, being a date earlier than the priority date of the Opposed Trade Mark ie 22 February 2020 (Priority Date) and before any use by the Applicant of the Opposed Trade Mark in Australia.

   33. Given that I have found under the s 44 ground that the Opponent’s Trade Mark is not substantially identical to the Trade Mark, the Opponent has failed to satisfy the first factor. As the Opponent must establish all three factors to succeed in the s 58 ground of opposition, I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.

   Section 60

   [12] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) ALR 495.

   [13] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   [14] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

4. Section 60 is reproduced below:

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

   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.

5. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[15]

   [15] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

6. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[16]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [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. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[17]

   [16] [2000] FCA 1335, [81].

   [17] (1992) 33 FCR 302, 343.

7. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[18]

   [18] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

8. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[19] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[20]

   [19] (2000) 50 IPR 1.

   [20] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

9. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   Idyll Wine Co Pty Ltd had, before the priority date of the Opposed Mark, acquired a reputation in Australia, in trade marks that consist of or contain the words FAT PIXIE or PIXIE in relation to a range of goods including ciders, ginger beers and wine products, (the FAT PIXIE goods). Use by the Applicant of the Opposed Mark in Australia would be likely to deceive or cause  confusion.

10. I am satisfied on the evidence before me that the Opponent’s Trade Mark had, before the relevant date, acquired a very limited reputation in Australia for cider and ginger beer, sufficient for the requirements under s 60(a). I reach this conclusion observing the relatively short amount of time (18 months) of use of the Opponent’s Trade Mark and the limited advertising spend. However, the level of sales of goods under the Opponent’s Trade Mark prior to the relevant date is impressive and find it sufficient to establish a very limited reputation in FAT PIXIE for ciders notwithstanding the limited time of use and modest promotion undertaken by the relevant date. While there is evidence of marketing undertaken after the relevant date, this is not relevant to the operation of s 60(a) of the Act. For completeness I find that the Opponent had acquired no reputation in PIXIE solus; all use by the Opponent was of the Opponent’s Trade Mark.

11. It is not sufficient that the Opponent merely establishes that its trade mark has a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[21]

    [21] (1937) 58 CLR 641, 658.

12. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

    A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[22]

    [22] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

13. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[23]

    [23] [2012] ATMO 124, [40] (Hearing Officer Thompson).

14. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[24]

    [24] [2016] FCA 729, [142] (Yates J).

15. In the present case I am not satisfied that by reason of the limited reputation established in the Opponent’s Trade Mark at the relevant date, that use of the Trade Mark for the Applicant’s Goods would be likely to deceive and cause confusion.  The marks are not deceptively similar, the reputation of the Opponent’s Trade Mark was limited, and there are no specific circumstances surrounding the sale of goods under the Opponent’s Trade Mark and Trade Mark that persuade me that confusion is likely notwithstanding the differences between the respective trade marks outlined in paragraph 28 above.   

16. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Decision and Costs

17. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 2071010 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

18. The Applicant 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 Opponent under s 221 in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    17 August 2022