Jack Daniel's Properties Inc v Warren Scott Harvey

[2010] ATMO 47

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 1224641(33) - JACK DOOLAN’S MUDGEE WHISKY WILD COLONIAL SPIRIT logo - in the name of Warren Scott Harvey.

Delegate:

Deirdre O'Brien

Representation:

Decision on the written record

Decision:

2010 ATMO 47

S52 opposition – s44 ground established. Registration refused. Costs awarded against applicant.

Background

1. Trade mark application no 1224641 was filed on 14 February 2008 by Warren Scott Harvey (‘the applicant’).  The application sought to register the trade mark depicted below in relation to “alcoholic beverages” in class 33.

1. The application was examined for possible acceptance.  The examiner found, inter alia, there was a ground for rejecting the application under section 44 of the Trade Marks Act 1995 (‘the Act’) based on existing registration 1057796 for the word trade mark JACK DOOLAN in relation to “wines” and owned by an Australian company named Tinlins Wines Pty Ltd (‘Tinlins’).  The applicant agreed to limit its goods to “alcoholic beverages being whisky” whereupon the examiner withdrew the ground for rejection. 

1. The application was advertised in the Australian Official Journal of Trade Marks for possible registration on 10 July 2008.  Jack Daniel’s Properties Inc (‘the opponent’) filed notice of opposition to registration.

2. During the evidence stage of the opposition the opponent filed and served the following evidence:

   Declaration by David S. Gooder made 6 August 2009 with Annexures DSG-1 to DSG-41

   Declaration by Andrew McNamara made 7 August 2009 with Annexures AM-1 to AM-24

It also filed written submissions. There was no evidence or written submissions from the applicant. Neither party requested a hearing when given the opportunity to do so.

1. I have been delegated by the Registrar of Trade Marks to decide the opposition pursuant to section 55 of the Act. Section 55 provides:

   Unless the proceedings are discontinued or dismissed, 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.

2. In deciding the opposition I am taking into account the written record, namely the notice of opposition itself and the opponent’s evidence and submissions. The opponent relies on the grounds of opposition contained in sections 44 and 60 of the Act.

Section 44 ground

1. Section 44(1) provides:

   (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)the applicant’s trade mark 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.

2. In support of this ground the opponent cites nineteen of its own registrations for trade marks which comprise or include the name Jack Daniel’s for goods in class 33.  It also cites Tinlins’ registration 1057796 JACK DOOLAN, being the earlier registered trade mark covering “wines” considered by the examiner to constitute ground for rejecting the application under section 44 before the applicant’s goods were limited to “alcoholic beverages being whisky”. It is convenient to first consider this registration before possibly considering the further nineteen registrations relied upon by the opponent.

3. Section 44(1)(a) depends, inter alia, upon a finding that the earlier trade mark be in respect of “similar goods”.  The first issue I will consider is thus whether “alcoholic beverages being whisky” are similar goods to “wines”.  The term “similar goods” is defined in section 14(1) as follows:

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

4. According to Shanahan’s Australian Law of Trade Marks and Passing Off (4^th edition 2008) at 35.505, “the expression ‘goods of the same description’ is … a term of art, implying a relationship between goods such that they would be seen by purchasers as having the same trade origin if sold under deceptively similar marks”.

5. Romer J in Jellinek’s Application (1946) 63 RPC 59 summarised the factors to be taken into account when considering whether goods are of the same description as the nature of the goods, their respective uses and the trade channels through which they are bought and sold. It is not essential for all three factors to be fulfilled and no one factor is necessarily determinative. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, the High Court said at page 606:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.

6. As it is a question of fact, each case has to be decided on its own merits (J Lyons & Coy Ltd’s Application [1959] RPC 120).

7. In an early case from the United Kingdom, Lindley LJ stressed the importance of seeing the matter from a business point of view.  He found wines and spirits were goods of the same description (Australian Wine Importers’ Trade Mark (1899) 6 RPC 311 (CA UK)). In Australia nearly ninety years later the Registrar’s delegate in Societe Jas Hennessy & Co v Peter Thomas Tisdall [1987] ATMO (unreported) found this did not apply to wine and whisky.  The delegate said:

   The public does not expect a whisky manufacturer to be also involved in wine production, even though both products are alcoholic beverages, sold by the same retailers to the same purchasers, and from that point of view may be seen as goods of the same description.

8. In other words, the delegate considered the Australian public did not see manufacturers of whisky and wine as being in the same business or trade.

9. Trade in alcoholic beverages in Australia has changed since then.  In E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69, Flick J considered whether beer and wine are goods of the same description. At page 85 he found on the evidence that:

   [P]roducers of alcoholic beverages are no longer confined to the production of beer, as opposed to wine, or even as opposed to other alcoholic beverages such as rum or whisky. The large producers now produce a range of products and market themselves as doing so. Corporations which were once brewers now seek to develop their business through the acquisition of wineries, and joint ventures are developed as between producers of rum and spirits and the brewers. Companies which were once brewers now market and distribute a range of products including beer, wine, spirits, ciders and non-alcoholic drinks.

10. Nevertheless he felt this was outweighed by other factors including the different nature and manufacture of the goods and the manner in which they were sold.  His conclusion was that beer and wine were not goods of the same description.

11. This finding was overturned on appeal.  The Full Federal Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCFCA 27 (‘Gallo’) said at 73 that the different manner of manufacture of beer on the one hand and wine on the other establishes that they are not the same goods. However it continued:

    [I]t is unlikely that this difference would be significant to the consuming public if, as His Honour found, large producers of alcoholic beverages produce a range of products.  Additionally it is important to bear in mind that this issue is being considered in the more general context of whether consumers might see the goods as having the same trade origin.  

12. With respect to the manner in which beer and wine were sold the Full Court said at 73 that:

    If large producers of alcoholic beverages are producing a range of products then the fact that the wine might be sold in a slightly different way would not be a difference of significance to the consuming public who may come to consider the trade origins of [the respondent’s] beer.

13. The judgment of the Full Court in Gallo was overturned on appeal in the High Court but not on this issue.

14. In the United Kingdom it is settled practice to regard whisky and wine as goods of the same description as noted in Balmoral Trade Mark (1999) RPC 297.

15. The other aspect of section 44 of the Act requires a consideration of whether or not the trade marks are, at least, “deceptively similar”. Section 10 defines “deceptive similarity” as follows:

    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. The principal issue in Gallo was whether or not there had been trade mark infringement pursuant to section 120 of the Act. At 71 the Full Court had noted that section 120(2) required consideration of whether the alleged infringing trade mark is deceptively similar to the registered trade mark and whether it is being used on goods of the same description as the registered trade mark. However it said:

    One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. 

17. It cited with approval the observation by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246 at page 259 that:

    [T]he expression ‘goods of the same description’ is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception”.

18. The Full Federal Court in Murray Goulburn Co-operative Co Ltd v NSW Dairy Corporation (1990) 16 IPR 289 noted at page 296 that:

    The decision whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense. 

19. French J in Registrar of Trade Marks v Woolworths Ltd (1998) 45 IPR 411 observed at page 425:

    In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question.

20. In the present opposition I consider the applicant’s trade mark is clearly deceptively similar to the trade mark of Tinlins’ earlier registration 1057796 as both trade marks have the name of the person Jack Doolan as their essential (or sole) feature (De Cordova v Vick Chemical Co (1951) 68 RPC 103). I also consider “alcoholic beverages being whisky” of the present application are goods of the same description as the “wines” of Tinlins’ registration. On these bases I am satisfied a substantial number of persons will be caused to wonder whether or not the applicant’s whisky comes from the same trade source as Tinlins’ wines (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

21. I find the ground of opposition based on section 44 of the Act is established with respect to registration 1057796. It is therefore unnecessary for me to also consider the further nineteen registrations relied upon by the opponent or to consider the opponent’s objection based on section 60 of the Act.

Decision

1. As the ground of opposition pursuant to section 44 has been established, my decision is to refuse to register trade mark application 1224641.

Costs

1. The opponent sought its costs.  It is the successful party and I see no reason to deviate from the general rule that costs follow the event.  I award costs against the applicant according to the official scale.

Deirdre O'Brien

Delegate of the Registrar of Trade Marks

21 June 2010