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…