Jack Daniel's Properties, Inc v Boondy Pty Ltd

[2008] ATMO 52

TRADE MARKS ACT 1995

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

Re:Opposition by Jack Daniel's Properties, Inc to registration of trade mark application 1003429(33) - OLD #15 - filed in the name of Boondy Pty Ltd.

Delegate:	T.E. Williams
Representation:	Opponent: Khajaque Kortian, solicitor, Spruson & Ferguson Applicant: Ian Forno, Trade Mark Consultant, written submissions
Decision:	2008 ATMO 52 S 52 opposition: s44 and 60, 43 and 59 not established. Registration proceeding

Background

1. Boondy Pty Ltd has applied to register a trade mark being the sign OLD #15.  The application is made in respect of wines, spirits and liqueurs including port wines.  It has been examined at the Trade Marks Office and advertised as having been accepted for possible registration.  This however is opposed by Jack Daniel’s Properties, Inc (“the opponent”)

2. The parties have used the process under the trade mark regulations to file and serve evidence in support of, and answer to, the opposition. Ultimately, under section 55 of the Trade Marks Act 1995 (“the Act”), the Registrar of Trade Marks is required to decide whether to register the application.  The opponent requested a hearing but was, subsequent to this, granted leave to serve and rely on further evidence, to which I will come in due course.  Ultimately, I was assigned to hear and decide the matter.  What follows is my decision, made under delegation from the registrar.

3. The matter was originally listed for hearing in Sydney to suit the convenience of the opponent, the applicant intending to rely on written submissions.  However, due to the last-minute discovery of the material that comprises the further evidence, I directed that the matter be heard in Canberra with the opponent to forfeit an entitlement to claim its costs in attending at the rescheduled hearing.  The opponent, represented by Khajaque Kortian, solicitor and principal of the attorney firm of Spruson and Ferguson, thus appeared by telephone.  As is normal in such a matter, Mr Kortian augmented his oral submissions by the filing of very thorough written submissions.  The applicant’s trade mark consultant, Ian Forno, filed fulsome written submissions which Mr Kortian addressed at the hearing.

   Grounds Considered

4. Mr Kortian accepted that the onus is on the opponent to establish at least one ground of opposition, but only on the balance of probabilities.  As per Gyles J in Pfizer v Karam, [2006] FCA 1663, this appears to be the correct interpretation. It will be simplest if I address the evidence in terms of the grounds on which Mr Kortian relied.

   Sections 44 and 60 – deceptively similar trade marks?

5. These grounds may be readily disposed of, without need to quote the quite divergent provisions in question.  Both sections hinge on the resemblance, or otherwise, of the trade mark sought to be registered to either (for s 44) the opponent’s registered trade mark 766397, see below, or (for s 60) to a trade mark, in this case the same trade mark, that has been used.

   Applicant’s motivation.

6. Mr Kortian sought to rely heavily on evidence that, he said, shows the applicant has an established and obvious pattern of coining, registering or applying to register trade marks derived from well known alcoholic drinks or from beverage trade marks.  He specifically relied on:

   • SUTTON GRANGE & Grape Device (a lapsed application, 1049538, according to Mr Kortian, but see below);
   • COSMIC JAGER BOMB (Registration No. 1164880)  The relevance to this matter is said to lie in the fact that Mast-Jagermeister AG, for whom the opponent’s attorneys  also act, has registered the trade mark JAGER and apparently issued a cease and desist letter in respect of rights asserted to arise on a basis that is not revealed in the evidence.
   • SLIPPERY NIPPLE  (Registration No. 983026), for words which Mr Kortian asserts to be the name of a well known and apparently non-proprietorial mixed drink
   • CLAYTONS VAT 7 (Application No. 1161017)

7. The applicant has not brought in any answering evidence to counter the claim arising from the further evidence.  It has had the opportunity to do so but Mr Forno claimed that the applicant had let this material go uncontested rather than add further delay by bringing in its own answering evidence. 

8. Mr Forno, in objecting to the introduction of the material on which Mr Kortian relied, claimed that:

   With respect to the application number 1049538 for SUTTON GRANGE, application for registration was made on 6 April 2005 and promptly withdrawn on 12 May 2005 before a report was issued - when the applicant discovered that there was another trade mark incorporating those words in the market place. This is hardly the action of a dishonest trader.

   In the case of the applicant's application 1161017 CLAYTONS VAT 7 in Class 33, I would make the point that there are no registrations of the word CLAYTONS in that class.  However, there are two registrations in class 32 for Cadbury Enterprises Pte Limited for non-alcoholic beverages. Any inferences derived are speculative in any case and any potential citations of these marks against the application are best left to the examiner of the application.  The references quoted by Mr Kortian of the "meaning" of CLAYTONS are again fascinating but not authoritative.  The entry in Wikipedia is not to be relied upon, for the reasons that I have previously stated.  The choice of the mark for alcohol cannot, in any case, be regarded as dishonest or "shady".  There is no blameworthy conduct here - merely Mr Kortian 's badly made implications.

9. I think it is, even so, quite arguable that Mr Kortian is correct in his uncharitable assertion, at least to the extent that the applicant is in the business of making astute references to well-known trade marks, and of getting as much past the examiner of trade marks as is possible.  I would not, however, say that this establishes any more malign motivation than an intention to sail close to the wind with regard to proprietorial matters, and to gain proprietorial rights over generic terms where possible.

   Comparison of trade marks

10. Let me, simply for the purpose of argument, set Mr Kortian’s argument as above at its highest and take it as established for the purposes of what follows on the question of the comparison of trade marks.   

11. I will immediately set aside Mr Forno’s argument that the hash symbol in the applied-for trade mark introduces any ambiguity into its verbal usage.  The applicant’s evidence shows that, in fact, the trade mark that it relevantly uses is OLD NUMBER 15.  The applicant relies on the use of the latter trade mark as “showing the Old #15 mark as it is used in the market place”.  I think it would be unreasonable to put much faith in the “ambiguity” argument when both my best estimate of how this trade mark would be seen and recalled, and the applicant’s own conduct, lean in the other direction.

12. In comparing the trade marks, I note that the applicant uses this trade mark on bourbon whiskey, which is quite close in nature to the opponent’s well-known JACK DANIEL’S product, a Tennessee whiskey.  This, at one level, is simply illustrative of the fact that, for s 44 purposes, the applicant seeks registration for effectively the same goods as those for which the opponent’s trade mark 766397 is registered, “alcoholic beverages, including whiskey and premixed alcoholic cocktails”.  At another level, it illustrates that the trade marks need to be compared in a context of the ordinary ways in which such goods, including whiskey, are bought and sold.

13. Again, as part of the relevant context, I must allow for the probability that the goods in question would be sold in similar looking bottles, as Mr Kortian argued.  He made much of the opponent’s assertion that its relevant product is sold in what the opponent calls its “signature bottle”.  Having looked at the example of what this entails, vis a vis the applicant’s product, see below, I fail to see that this advances the opponent’s case much beyond the ordinary and notional comparisons under s 44. 

14. It will not be necessary to decide if, for s 60 purposes, the opponent has made use of a trade mark OLD NO 7 BRAND, as shown on page 2 of this decision, such that, in Australia, it had a reputation.  According to the evidence, not all JACK DANIEL’S whiskeys are the same.  The opponent’s product sold by reference to OLD NO 7 BRAND is, I infer, the most common of its relevant products but there are variants, of indeterminate volume, such as the GENTLEMAN JACK and SINGLE BARREL lines.  Mr Forno argued that that the opponent has no separable reputation in the relevant trade mark.  I think Mr Kortian is perhaps right in that, through the years of marketing of the opponent’s JACK DANIEL’S product, in ways that include the sale of variants without reference to the OLD NO 7 BRAND trade mark, some reputation in OLD NO 7 BRAND is perhaps inevitable.  The (unquantified) distribution of caps bearing the device OLD NO 7 BRAND solus would be consistent with this but, as always, reputation for s 60 purposes needs to be established either by evidence of facts, or by evidence that gives a fair basis from which to make the necessary inference.  I will therefore make no finding on the reputation question.

15. Where the opponent’s case entirely falls down is that the competing trade marks are simply not “deceptively similar”, the common (and fatally-lacking) ingredient in both s44 and s60.  That term is defined by s10, as follows:

    10. 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.

16. Even if, for the purposes of argument, I give full weight to the alleged malevolent intent of the applicant in adopting its trade mark, and allow for imperfect recollection, I cannot find that the resemblance between the two is likely to deceive or confuse.  The word “old” is common in the trade in liqueurs, spirits and wines.  There was some debate about Mr Forno’s submissions on what the existence of other registrations including the word “old” might establish, but the essence of Mr Kortian’s argument is that there is a dearth of trade marks of the form OLD NUMBER (X).  Leaving aside trade mark registration 574751, which is as follows:

    I accept that there are none.

17. I put no weight at all on the “survey” conducted by the applicant.  Five stereotyped declarations and eight completely informal surveys would shed no light at all on the relevant standard, which would ordinarily lie in “the habits and observation of men considered in the mass”[1].  Mr Kortian was rightly quite scathing in his criticism of this material.  Aside from the fact that I have no idea if the declarations are, perhaps, but a carefully selected set of those canvassed by the applicant, the number involved could prove nothing about the norms of public perception on this issue, or any other[2]. 

    [1] Australian Woollen Mills Limited v F S Walton and Company Ltd [1937] HCA 51; (1937) 58 CLR 641, Dixon and McTeirnan, JJ

    [2] The declarations are also framed in a way that would tend to negate any separate reputation in the trade mark OLD NO 7 BRAND.

18. The survey forms are of little use.  They ask the question “would you think that Jack Daniels bourbon whiskey and Old # 15 bourbon whiskey are related and associated in any way?”  Firstly, the question posed is not the one that faces me.  The opponent has registered a trade mark consisting entirely of the sign OLD NO 7 BRAND, and it is (leaving aside the remaining elements of sections 44 and 60) against this trade mark that I am to assess the applied-for trade mark.  Even if the right question had been asked, the survey forms would inevitably have led those filling them out to record their sober evaluation of the issue, where, as Mr Kortian pointed out, I am required by section 10 to consider also the issue of the mere causing of confusion.

19. There is broad agreement, in the written submissions, on the law applicable.  Neither advocate was able to refer me to an analogous decision either of this office or of a court.  As Mr Kortian argued in his written submissions, a summary of the relevant criteria to be considered in terms of “deceptive similarity” is provided by French J in Registrar of Trade Marks v. Woolworths (45 IPR 411 at 428) as follows, his emphasis added:

    (i) To show that a trade mark is deceptively similar to another, it is necessary to show a real tangible danger of deception or confusion occurring, ie. the probability of deception or confusion must be finite and non-trivial. A mere possibility is not sufficient.

    (ii) 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.

    (iii) 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/or services in question come from the same source.

20. I do not believe that French J was suggesting, in referring to "some people", that it would be sufficient if a mere handful of people would be left in doubt.  Firstly, I do not believe that French J was attempting to modify his previous stipulation, for which there is long-standing authority including in a case to which he had just referred, that the doubt that must afflict the "ordinary" person must be a "reasonable" one.  Secondly, the formulation requiring that the number of people affected by doubt or confusion be "substantial" has been repeatedly endorsed, see for instance Smith Hayden's application and Kendall Company v Mulsyn Paint and Chemicals, where Kitto J repeated and expanded what he said in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [3].  He added the reference to "substantial" as an express adoption of that formula from comparable UK decisions subsequent to Smith Hayden.

    [3] See (1946) 63 RPC 97, (1963) 109 CLR 300 at 305 and (1954) 91 CLR 592 at 595 respectively

21. Having thus defined the standard, I turn once more to Mr Kortian’s argument:

    The Opponent submits that the essential elements of the two marks are “OLD NUMBER …”, “number” being abbreviated as “No.” in the OLD NO. 7 Trade Mark” and as the symbol “#” in the Trade Mark.  The qualifying numbers (“7” and “15” respectively) do little to distinguish the two marks. Whilst the separate words “OLD” or “NUMBER” are common in trade marks registered on the Register, the combination of “OLD” and “NUMBER/No/#….” is unusual if not unique.  The Applicant in its submissions wrongly submits that the Opponent is relying upon “OLD” in arguing deceptive similarity.  It is the unusual combination of “OLD Number/No./#…”. There is, therefore, a high degree of similarity between the respective marks.

    We submit that it is not unreasonable for the Hearing Officer to find that there is a real likelihood that some people will be caused to wonder or be left in doubt about whether the two sets of products in question come from the same source.

    It is not unreasonable for the Hearing Officer to find that an ordinary person would entertain reasonable doubt whether seeing an American whisky bearing the trade mark “OLD#15” (or advertised on TV or radio as “old number fifteen”) is another brand of the makers of the “OLD No. 7 Brand” American whisky.

22. I think this is where, once and for all, I must part company with the opponent’s case.  I do not say that the opponent’s argument is “unreasonable”.  None the less, I am not satisfied that there is any reasonable likelihood of the confusion that the opponent apprehends.  Numbers have very little inherent adaptation to distinguish.  Accordingly, neither trade mark is particularly strong.  Mr Kortian goes too far in suggesting that, if I accept that “the combination of “OLD” and “NUMBER/No/#….” is unusual if not unique”, this would give a sufficient basis for a finding of deceptive similarity.  In the context of relatively weak marks, the difference between 7 and 15 is of considerable weight.  Appropriate weight must be given to imperfect recollection of the opponent’s trade mark but, even so, as Mr Forno argued, 7 does not look like 15.  There is no particular reason why any significant number of consumers, apprehending the difference, would be confused enough to speculate on a possible connection with the trade source denoted by OLD NO 7 BRAND.

23. Accordingly, the grounds of opposition under s 44 and 60 are not established.

    Section 43 - deceptive or confusing connotation in the applied-for trade mark?

24. Section 43 specifies

    43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

25. As Hearing Officer McDonagh noted in Playboy Enterprises International v Auszan Pty Ltd (2006) 68 IPR 332:

    It is apparent that a sign contained within a trade mark might contain a deceptive or confusing connotation if it resembles or signifies a particular sign which is so ubiquitous, of longstanding, or notorious that it has entered Australian parlance or is shown to have become accepted generally in Australia as connoting a particular person, entity or event or connoting a particular meaning (whether or not that particular sign has trade mark significance).

26. I agree entirely with this proposition, a useful analysis of how a sign can acquire a connotation through what I called, in Wiley Publishing Inc v Moondance Pictures Pty Ltd [2004] ATMO 70, its “cultural context”.

27. The opponent, however, has not satisfied me that the OLD NO 7 BRAND has any such connotation.  Mr Kortian stressed what he called the actual market awareness of the OLD NO 7 BRAND.  However, I have not found that it has a reputation as a trade mark.  The opponent’s evidence is far less likely to support a finding that the sign in question has a connotation. 

    Section 59 – lack of intention to use?

28. Mr Kortian provided an interesting variation on the familiar run of s 59 cases.  S 59 allows:

    59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a) to use, or authorise the use of, the trade mark in Australia; or
    (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    Note:  For applicant see section 6.

29. Mr Kortian noted the trade mark that the applicant has actually used.  This is as I have set out in para 13.  He argued that the applicant, having set out in its evidence its motivations in relation to the trade mark that it has sought to use, cannot resile from them now and claim that it has a bona fide intention to use the trade mark it has sought to register.

30. Mr Forno, in submissions, and fully aware that the s 59 ground was live, argued:

    The applicant has included in its evidence, examples of the use of a trade mark, OLD NUMBER 15 in stylised form, which is just one of a family of trade marks owned and used by the applicant in relation to its goods.  This suite of marks forms an interrelated theme which contains an allusion to old bourbon, the number 15, and Dixie, a geographic location within the United States indicating a collection of states which seceded from the Union to form the Confederate States of America.  Those marks include the OLD NUMBER 15 mark; the registered trade mark 1062339 [see below], for OLD UNION STATE 15 in stylised form; the registered trade mark 1062336, OLD DIXIE; and also the presently applied for trade mark, OLD # 15.  The applicant's registrations, the samples of one of its family of trade marks, and also the present application for registration, all go towards showing that the applicant is presently using, or intends to use all of the marks on this theme - including OLD # 15.

1. Mr Kortian argued that this whole line of argument undermines the applicant’s intention to use OLD #15.  He noted that the applicant’s evidence in answer, the Stavrakoulis declaration, states that the applicant commissioned a designer to design a "distinctive mark for a different range of bourbon whisky".  The trade mark chosen from that process, and which has been used, allegedly for 2 years, is the variant shown at para 13.  In that variant, the word “number” stands in place of the # symbol that is a feature of the applied-for mark. 

2. I think this argument goes just a shade too far.  In my view the difference between the applied-for and used trade marks is, in practical terms, very small.  OLD # 15 is simply the shorthand form of OLD NUMBER 15.  Mr Kortian cannot have it both ways; if the # symbol introduces no significant ambiguity for the purposes of deceptive similarity, it does not change its spots in relation to s 59.  I am not prepared to speculate about why the applicant has applied for the one but used the other.  It is perhaps an interesting question but it leads nowhere.  The worst that might be said is that the applied-for mark was filed to gain whatever benefit might flow, before the examiner of trade marks, from the inclusion of a # symbol to reduce the likelihood of a citation, by the examiner, of the opponent’s registered trade mark.  I am not prepared to say that the actual use of one trade mark negates an intention to use another that is clearly closely related, even if the relationship lies essentially in a ploy to gain a forensic advantage. 

   Conclusion

3. No ground of opposition has been established.  The trade mark application may 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 court so orders or until the appeal has been discontinued.  I also award costs against the opponent, to the limit in the scale.

   T.E. Williams
   Hearing Officer
   26 June 2008