Leconfield Wines Pty Ltd v G.Patritti & Co Pty Ltd - [2017] ATMO 81

TRADE MARKS ACT 1995

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

Re:Opposition by Leconfield Wines Pty Ltd to application under section 92 of the Act by G. Patritti & Co. Pty Ltd to remove trade mark number 1063359 (33) - MARION VINEYARD - in the name of Leconfield Wines Pty Ltd

Delegate:	Heath Wilson
Representation:	Opponent: Written submissions from John O’Mahoney of Collison & Co. Applicant: Tim O’Callaghan of Piper Alderman.
Decision:	2017 ATMO 81 Opposed application to remove a registered trade mark from the Register of Trade Marks under section 92(4)(b) of the Trade Marks Act 1995 – no use in the relevant period – no application of the discretion under section 101 – Trade Mark to be removed from the Register.

Background

This matter concerns an application made on 3 July 2015 for the removal of a trade mark from the Register of Trade Marks under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’). The subject trade mark of the removal application is:
Trade Mark No. 1063359
Trade Mark: MARION VINEYARD (‘the Trade Mark’)
Owner: Leconfield Wines Pty Ltd
Specification of Goods: Class 33: Wines
Endorsements: Provisions of subsection 41(5) applied.
The application for removal was made by G. Patritti & Co Pty Ltd (‘the Applicant’) and Leconfield Wines Pty Ltd (‘the Opponent’) subsequently opposed that application under section 96 of the Act by filing a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’). The SGP provided:

The opponent whom is the owner of the trade mark registration in this removal action has commercially used the trade mark in Australia with the goods listed in the registration in Australia during the relevant 3 year period leading up to the one month before the filing of the relevant non-use removal action.
Goods identified by the trade mark represented in the registration have been used commercially with customers in Australia including available sales of product identified with the trade mark from Cellar Doors in Australia.
The opponent has commercially used the trade mark in Australia with distributors from Tasmania and Hong Kong during the relevant 3 year non-use period.
The opponent’s goods identified by the trade mark have been used on websites to make the product available for sale here in Australia and overseas during the relevant 3 year period.

The Applicant filed its Notice of Intention to Defend and the evidence stages commenced with both parties filing evidence in accordance with the Trade Marks Regulations 1995 (‘the Regulations’). The evidence in these proceedings consists of:

Evidence in Support

oDeclaration of Simon Linden (General Manager of the Opponent) made 17 February 2016 with exhibits SL1 to SL5 (‘Linden 1’).

Evidence in Answer

oStatutory Declaration of Patricia Ines Marie Patritti (Director of the Applicant made 23 May 2016 with annexures PP1 to PP8 (‘Patritti’).

Evidence in Reply

oDeclaration of Simon Linden made 3 August 2016 with exhibits SL6 to SL10 (‘Linden 2’)

The Applicant applied to be heard on the opposition and the Opponent provided written submissions by John O’Mahoney of Collison & Co in lieu of appearance at the oral hearing.
The hearing of the opposition was scheduled for Canberra on 15 May 2017. As a delegate of the Registrar of Trade Marks, I heard the matter on that day. The Applicant was represented in person by Tim O’Callaghan of Piper Alderman and (as I have mentioned) the Opponent elected not to appear.

The Law

Section 92(4)(b) of the Act relevantly provides:

92Application for removal of trade mark from Register etc.
(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a)…
(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii)used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.

With regard to the burden of proof and the requirements to rebut the allegation of non-use section 100 of the Act relevantly provides:

100Burden on opponent to establish use of trade mark etc.
(1)In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a)…
(b)…
(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

(2)…
(3)For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
(a)the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period…

In relation to the decision to be made by the Registrar of Trade Marks at the end of proceedings, section 101 of the Act relevantly provides:

101Determination of opposed application—general
(1)Subject to subsection (3) and to section 102, if:
(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b)the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(2)…
(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a)similar goods or closely related services; or
(b)similar services or closely related goods;

to those to which the application relates.

As the application for removal was filed on 3 July 2015, the period in which the Opponent must establish use of the Trade Mark is the three year period ending on 3 June 2015 (‘the relevant period’).

Reasons

Linden 1 sets out the application history that led to the registration of the Trade Mark and indicates that the Trade Mark was first used in relation to wine in 1994, having derived its origins from a vineyard planted in 1907. The vineyard was located within the suburb of Marion in South Australia.[1]
[1] Linden 1, [7].
Regarding the evidence from the Opponent supplied to demonstrate that the Trade Mark has been used in the relevant period, exhibit SL1 to Linden 1 is a copy of what is described as the Opponent’s ‘Museum Releases’ price list. This exhibit lists nine different bottles of wine, but relevantly mentions:
’01 Richard Hamilton Marion Vineyard Grenache - $75
’02 Richard Hamilton Marion Vineyard Grenache - $75
’03 Richard Hamilton Marion Vineyard Grenache - $70
The above document is itself undated, and Mr Linden does not provide a particular date for it but instead declares that the ‘Museum Releases’ price list was “made available during the relevant non-use period between 3 June 2012 to 3 June 2015 for those visiting Leconfield’s Cellar Doors”[2] and that all three of the above wines were “continuously available for immediate purchase to members of the purchasing public from Leconfield’s Cellar doors during the period of 3 June 2012 up until 3 June 2015, and thereafter…”.
[2] Linden 1, [10].
Linden 2, produced as evidence in reply, contains exhibit SL6 which is a declaration by Mark Dimberline (Sales and Marketing Manager of the Opponent). Mr Dimberline’s declaration in turn attaches exhibit DM1 which is described as:
[A] photographic representation of the ‘Museum Releases’ price list which is represented as photographed in Exhibit DM1 within a holder as it sat appropriately upon a counter at Leconfield Wines to be viewable by members of the purchasing public that entered Leconfield Wines cellar door during 3 June 2012 up until 3 June 2015.
…
I confirm that both the ‘Museum Releases’ Price List and the bottled product shown in Exhibit DM1 were viewable and available to members of the purchasing public whom entered the Leconfield Wines cellar door on Main Road, McLaren Vale, South Australia during the period between 3 June 2012 and 3 June 2015. [3]
[3] Paragraphs 4 and 6 of the declaration of Mark Dimberline attached to Linden 2.
The abovementioned Museum Releases price list at exhibit DM1 is also undated and is a different price list to that in exhibit SL1. From the list of wines and their respective prices it appears to be a later example. Mr O’Callaghan was particularly critical of the description given and the appearance of the Museum Releases price lists as they were mentioned in Linden 1 and the declaration of Mark Dimberline.
Given its description, I believe that exhibit DM1 was constructed for the purposes of this opposition and is intended to demonstrate how the display[4] would have looked to the consumer rather than an actual photograph of the display from the relevant period. I find nothing improper in the way in which such evidence has been presented. Despite this finding, I am in agreement with Mr O’Callaghan’s submission that (as it is a reconstruction) it should be accorded less weight in terms of establishing the requisite instance of use.
[4] The price list with the bottle next to it.
Returning to Linden 1, exhibit SL2 to that declaration is described by Mr Linden as an extract from ‘Sterling Wine Auctions’ confirming historical sales of wine. However, the exhibit is again undated and does not, on its face, appear to confirm sales, but instead displays the results of a search for “Historic Wine Values”. Listed in the search is the “Richard Hamilton Marion Vineyard (Reserve) Grenache Shiraz” from both the 1996 and 2001 vintages in prices ranging from AU$4.00 to AU$21.00. If there were sales there is further doubt regarding the question of whether a few subsequent sales of bottles of wine at a minimal price remains use in the course of trade.[5] In any event, I find that I do not have sufficient evidence before me to reach the conclusion that this evidence constitutes use of the Trade Mark within the relevant period.
[5] See relevantly, the analogous comments made by the delegate in Make Wine Pty Ltd v Modern Ancient Brands Pty Ltd [2017] ATMO 17, [19]-[24].
Exhibit SL3 to Linden 1 is similarly of little assistance in rebutting the allegation that the Trade Mark has been used in the relevant period in Australia. It is declared to be a price list of one of the Opponent’s Asian distributors in Hong Kong and was apparently “made available to members of the purchasing public.”[6] Once again, this exhibit is simply another undated list of products and even if it could be seen as an offer to trade in the Opponent’s goods, the prices are in Hong Kong Dollars under the heading ‘Australian Red Wine’. There can be use in Australia where goods are provided abroad,[7] but the sale or offer for sale should occur within Australia.[8] However, I am not satisfied that this exhibit demonstrates the offer for sale of a vendible article in the Australian market in the relevant period.
[6] Linden 1, [12].
[7] See section 228(1) of the Act.
[8] Re Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199, [204].
Exhibits SL-4 (an undated extract from the James Halliday Wine Companion) and SL-5 (a price list also “made available”[9] to the Tasmanian Wine Centre) to Linden 1 also do not assist the Opponent in rebutting the allegation of non-use.
[9] Linden 1, [14].
SL-4 describes the ‘Richard Hamilton Marion Vineyard Old Vine Grenache Shiraz’ as being a 2000 vintage but there is no indication that the product was available to consumers in the relevant period and I am not satisfied that this is an instance of use of the Trade Mark for the purposes of trade. As mentioned, a date for the extract from the James Halliday Wine Companion (or even the particular edition it comes from) is absent.
Exhibit SL-5 is nothing more than a list of hyperlinks to pages within the Tasmanian Wine Centre website. It features the “Richard Hamilton Marion Vineyard Grenache Shiraz 2001” at $29.30 a bottle under the heading “Old and Dusty”, but the document is undated and Linden 1 does not attempt to ascribe a date to it, declaring that it confirms “the making available of product under the [Trade Mark] by Leconfield Wines Pty Ltd during the relevant removal period from 3 June 2012 up until 3 June 2015”.[10] I cannot agree that this exhibit accomplishes that task.
[10] Linden 1, [14].
Exhibits SL8 and SL9 in Linden 2 are feature articles from two websites dated from 2005. While they mention the production of up to 300 cases of ‘Hamilton Ewell Reserve Marion Vineyard Grenache/Shiraz’ each year, it is clear that this does not constitute use in the relevant period and appears to have been supplied to show the connection between the Opponent and the vineyard itself. Such evidence may, however, be relevant to the exercise of the Registrar’s discretion under section 101(3) of the Act to which I will come.
Linden 2 made certain references to the fact that Pattriti did not challenge, query or seek clarification of certain parts of Linden 1. However, this does not mean that the Registrar can draw inferences regarding Trade Mark use on otherwise doubtful evidence. The Opponent’s evidence of trade mark use must stand on its own merits, especially when instances of alleged use are in short supply. If it were otherwise, such a proposition would shift the onus to the Applicant when the Act makes it clear that Opponent that bears the onus of establishing the requisite use in Australia within the relevant period.
I find that there is no evidence of sales of the Opponent’s product in the relevant period so I am left to determine whether the particular instances of offers for sale declared to have occurred within the relevant period rebut the allegation of non-use. It has been established that a single bona fide instance of trade mark use in the course of trade may be sufficient to rebut the allegation of non-use[11] but such a use must be accompanied by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[12]
[11] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [14-17] (Drummond J).
[12] See Nodoz Trade Mark (1962) RPC 1
The strongest evidence from the Opponent are the two abovementioned ‘Museum Releases’ Price Lists in exhibits SL1 and SL6 (DM1). Other exhibits are either undated (with no clear statement as to when or if they would have appeared to Australian consumers), or constitute use outside the relevant period or do not amount to use in the course of trade.
In relation to the nature of ‘Museum Releases’ price lists, Mr O’Callaghan referred me to the case of Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No. 4) and drew comparisons with the display of the ‘Roy Weston Medallist Wall of Fame’ in that case and whether it was sufficiently prominent from a public perspective so as to constitute use. In that case, the Wall of Fame was “located behind a receptionist who would have to give permission to have access to read it”.[13]
[13] [2016] FCA 138, [216].
Mr O’Callaghan argued in a similar vein that there is not sufficient information to conclude that the ‘Museum Releases’ Price List’ was sufficiently available to the public and highlighted the careful wording in the declaration by Mr Dimberline that it sat upon a counter and was ‘viewable and available to members of the purchasing public whom entered the Leconfield Wines cellar door’, did not satisfy the requirement of use in the course of trade.
Where there is no other conclusive proof of sales in the relevant period, the evidence regarding an offer to sell the Opponent’s product under the Trade Mark must be convincing and amount to use in good faith. However, I note that both Mr Linden and Mr Dimberline do not provide a specific date for the appearance of the ‘Museum Releases’ price list and instead simply declare that the product (and Trade Mark) was made available to Australian consumers within the specific relevant period. Further, while I am satisfied that the use of the MARION VINEYARD on the bottle label itself (in exhibit DM1) amounts to use of the Trade Mark, the price list itself simply refers to ‘Richard Hamilton Marion Vineyard Grenache’ and the addition of the name ‘Richard Hamilton’ is one that substantially affects the identity of the Trade Mark as registered. The use of the Trade Mark solus would therefore only be evident to a prospective consumer if the bottle label as well as the price list were concurrently viewable to the purchasing public in the relevant period. As mentioned before, only exhibit DM1 purports to demonstrate this actually occurred, and I am not satisfied that the example is sufficient to establish a bona fide instance of Trade Mark use.
Taking the Opponent’s evidence in its entirety, I cannot be satisfied that the Opponent has discharged its burden of rebutting the allegation of non-use. There has not been a bona fide commercial instance of use of the Trade Mark within the relevant period and the ground under which the non-use application was made has been established.

Registrar’s discretion under subsection 101(3):

Under subsection 101(3) of the Act, the circumstances under which the Registrar may exercise her discretion and allow the Trade Mark to remain on the Register need not be exceptional and there are no particular circumstances that must (as opposed to ‘may’) be taken into account. Having said that, the Trade Mark will be ‘removed from the register unless sufficient reason appears for leaving it there’.[14] The factors considered in Pioneer Computers Australia Pty Limited v Pioneer KK included:
In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 [‘Hermes’] were of assistance in considering the exercise of the discretion:
Mr O’Mahoney argued the Opponent has used the Trade Mark for over 20 years and that the geographic location (Marion) has a direct connection with the Opponent. He also submits that the reputation the Opponent had in the Trade Mark has not eroded. However, I do not have evidence before me of any substantial reputation built up over 20 years in Australia, and there is no evidence pointing to future plans to develop the brand. The Opponent submits that it has an association with the actual location in Marion of the vineyard, but there is little evidence provided to support the position that relevant consumers of wine are aware of this connection. In light of this, it is difficult to identify a significant inconvenience to the Opponent should the Trade Mark be removed from the Register of Trade Marks.

The contents of Patritti are particularly important with regard to the inconvenience to the Applicant in the application of the discretion. Ms Patritti indicates that in April 2006 the Applicant harvested grapes from the Oaklands Road Vineyard in Marion. In February 2007, the Applicant was successful in its tender for the operation and management of the Oaklands Road Vineyard.[16] The Applicant’s agreement with the City of Marion Council was renewed in 2012. It is relevant to point to the fact that the Applicant has at least three pending trade mark applications containing the word ‘MARION’ or the expression ‘MARION VINEYARD’[17] for wine and alcoholic beverages. While it remains on the Register of Trade Marks, the Trade Mark is a barrier to registration of the Applicant’s trade marks under section 44 of the Act. I am satisfied, on the evidence before me, that the inconvenience to the Applicant in not removing the Trade Mark from the Register outweighs the inconvenience the Opponent may suffer were it to be removed.
[16] Patritti, [11] and annexures PP5 and PP6.
[17] Trade mark application no. 1702300.
At the hearing, Mr O’Callaghan spent some time discussing the recent decision of Hearing Officer Irgang in Make Wine Pty Ltd v Modern Ancient Brands Pty Ltd[18]. In that decision, use of the opponent’s trade mark had not been established and yet the Hearing Officer applied the discretion, allowing the trade mark to remain on the Register. The owner of the trade mark in that matter had been using an updated label which was similar to the trade mark and had an “active and ongoing reputation in its QUEEN ADELAIDE branded wine”.[19] However, the facts before me differ. Unlike that matter, the Trade Mark in the current matter does not enjoy a residual reputation, there is little solid evidence that consumers still trade in wine bearing the Trade Mark and there does not appear to be any steps made to reinvigorate the brand at all.
[18] Make Wine Pty Ltd v Modern Ancient Brands Pty Ltd [2017] ATMO 17.
[19] Ibid, [30].
The Opponent has also pointed out that the Trade Mark was registered under the provisions of section 41(5) of the Act. That fact has no relevance to establishing the requisite use of the Trade Mark within the relevant period and does not point to a residual reputation that may exist for the Trade Mark. It does not carry any significant weight in the consideration of whether to apply the discretion under section 101 of the Act.
I refuse to exercise the Registrar’s discretion in the above circumstances.

Decision

The application for removal under section 92(4)(b) of the Act has been successful. Under section 101(1) of the Act, I therefore direct that trade mark registration no. 1063359 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal on or before the end of that period, the registration will be subject to the decision made by the court.

Costs

An award of costs in these proceedings normally follows the event. The Applicant has been successful and I award costs against the Opponent under section 221 of the Act in the allowable amounts set out in Schedule 8 of the Regulations.

Heath Wilson
Hearing Officer
Oppositions and Hearings
3 August 2017