Levi Strauss & Co v Levi & Era Menaker

[2006] ATMO 81

TRADE MARKS ACT 1995

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

Re:Opposition by Levi Strauss & Co to registration of trade mark application 980276(33) Levi proceeding in the names of Levi Menaker & Era Menaker

Delegate:	Iain Thompson
Representation:	Opponent .Ron Webb of Counsel instructed by Baker & McKenzie Applicant Wayne Willis of FB Rice & Co
Decision:	s52 opposition, grounds under ss42 and 59 considered – Settlement of previous proceedings considered and found to be non-binding under the circumstances of these proceedings; s59 – applicants have not, when challenged, adduced evidence of how their intention to use the opposed trade mark might have changed or formed since their evidence was first served and filed in 2002 in relation to prior proceedings. Opposition established. Costs ordered against applicant.

Background

1.    Levi Menaker & Era Menaker, of Brighton-Le-Sands, New South Wales ('the applicants') have filed an application to register a trade mark, current details of which are:

App No     :  980276
Filing Date:  28 November 2003
Acceptance Advert:              8 April 2004

Goods:Class: 33:  Alcoholic beverages including wine

Trade mark:  LEVI

2. On 7 July 2004, Levi Strauss & Co, ('the opponent') of San Francisco, California, filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. While the Notice cites several grounds of opposition those under sections 41, 42, 43, 58, 59 and 60 of the Trade Marks Act 1995 (‘the Act’) were pursued by the opponent at the hearing.

1. For the sake of completeness, I note that those grounds enlisted on the Notice that were not pursued by the opponent have not been established.

2. Evidence in support and evidence in answer were duly served and filed according the Act and regulations thereto.

3. The hearing was held before me, as a delegate of the Registrar of Trade Marks, in Sydney, on 18 July 2006.  Mr Ron Webb of Counsel, instructed by Baker & McKenzie, appeared for the opponent.  Mr Wayne Willis of FB Rice & Co appeared for the applicants.

   Evidence

4. In summary, the evidence comprises:

Declarant	Position/Content	Date made	Exhibits
Evidence in Support
Stephen Marchbank Williams	Brand Director of Opponent	3 February 2005	SMW-1 to SMW-3
James Thomas Alexander	Survey
Stephen Marchbank Williams	Brand Director of Opponent	3
Evidence in Answer
Levi Menaker	Applicant	6 October 2005	Exhibit 1

1. The following synopsis is my understanding of the most salient points of the evidence and I will refer further to the declarations if it is necessary in my discussion of the issues.

2. The evidence in support of the opposition establishes that the opponent owns and uses trade marks which consist of, or are based around, the word LEVI’S which it uses primarily in relation to jeans and jeans-wear but which it also uses in relation to other clothing and a range of associated fashion goods such as bags, belts, reading glasses, keyrings, purses and wallets which the opponent either makes itself or sells under license by others.

3. The opponent supplies confidential figures for its annual advertising expenditure and sales revenues in Australia – both sets of these figures are substantial.

4. This matter is the second such encounter by these parties in opposition proceedings. The first (‘the prior proceedings’) concerned trade mark application 799317(33) LEVI’S WINE – as it then was. The prior proceedings were settled by the parties and a copy of the confidential Settlement Agreement (‘the Settlement’) is in evidence. The terms of the settlement lie behind one of the bases of opposition in terms of section 42 of the Act. The terms of the Settlement were that the trade mark be amended to LEVI WINE, an endorsement be entered on the Register that the word LEVI will only be used in upper case, and the goods be restricted to ‘kosher’ wines. The registration of 799317(33) reflects these terms and conditions.

5. Mr Menaker attaches to his one page declaration the declaration served and filed for the prior proceedings in 2002.

6. Mr Menaker attests in his declaration filed for the prior proceedings to his resolution to produce an Australian kosher wine under the trade mark ‘Levi’s Wine’ and the adoption of a process to produce Mevushal[1] wine without damaging the fruit characteristics of the grape.  Specifically, he states that he decided, “… after tasting some twenty-six kosher wines on the market in Australia, there was a definite need for a kosher Australian wine.”  Mr Menaker, talking of the trade mark LEVI’S WINE, avers that “from a very early stage of our development, we recognised the value of our future distinctive trade mark.”  And, “Our trade mark application is for Levi’s Wine not Levi’s.”  And, “One who can confuse jeans with wine would never drink kosher wine.”  And, “All information included to [the opponent’s] declaration is totally irrelevant to our trade mark application.  We believe that Australian consumers expect goods bearing the LEVI’S WINE mark to come from Levi’s Wines.”  To the solicitors for the opponent after receipt of evidence in support in the prior proceedings Mr Menaker says, “Do they know in the head office in San Francisco how you spend their money?  I don’t think that they would be impressed.”  And Mr Menaker characterises the evidence as being “yesterday’s news.”

   [1] There are three grades of wine in relation to kosher practice: (1) Yayin Nesekh (Wine that has been poured to an idol, or with idolatry in mind.) (2) Stam Yainom (Wine that may have been touched by someone who might believe in idolatry, but would not have had it in mind at the time of contact).  (3) When kosher wine is mevushal ("cooked" or "boiled"), it thereby becomes unfit for idolatrous use and will keep the status of kosher wine even if subsequently touched by an idolator.

7. The picture that thus emerges from Mr Menaker’s declaration is thus one of a total and single-minded determination to use the trade mark LEVI’S WINE on kosher wines – an approach that is quite scornful of anything other than this particular goal.

8. Mr Menaker’s first ‘vintage’ was produced in 1999 and the second in 2000.

9. Mr Menaker discusses the derivation of the word LEVI and, in his declaration, makes submissions or observations concerning the word LEVI that show that he is inexpert in trade mark matters.

10. For convenience, I will observe now that Mr Menaker submits that the correct pronunciation of the word LEVI is in the same manner as the word LEVY.  Mr Willis made a very similar observation at the outset of his submissions at the hearing.  In the context of these proceedings, however, is important to bear in mind the observations by Dixon J. in Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited (the "Rohoe" Case) (1946) 72 CLR 175, where at 184 he said:

    “But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse.”

11. The same is true of how people approach the pronunciation of words.  The context of the usage of the word LEVI here is in relation to wines and spirits and other goods in Class 33 in general and the Australian marketplace and usages.  It is my assessment that most Australians would pronounce the word LEVI in this context as LEEV-EYE – in the same manner as the opponent’s trade mark is pronounced.  Those of a Christian background may recall the character ‘Levi, the Taxman’, Mark 2:14 and Luke 5:27 – in my observations, this person is invariably referred to as LEEV-EYE.  This might be, as Mr Menaker attests, technically wrong, but it is part of the Australian ‘universe of discourse.’ 

12. It is also, perhaps, a reality which may not be palatable to all that most Australians’ pronunciation of the word will have been additionally coloured by the very extensive advertising and promotion of the opponent’s trade mark and goods which invariably pronounces the word as LEEV-EYE.

13. Thus, considering both the opponent’s advertising and the New Testament usages, Australians have, in effect, been taught that the word is pronounced LEEV-EYE.  There is nothing on the face of the application which suggests that the product is a kosher wine or that it should be considered in the context of the fact that its derivation here is as the forename of one of the Jewish faith and should be pronounced as such.

14. Therefore, if it be relevant to these proceedings, I am of the view that the usual Australian pronunciation of the word LEVI in the context of these proceedings is as LEEV-EYE.

15. Mr Menaker also makes submissions in his declaration that indicate that he believes that a person has an absolute right to use his or her own name in relation to whatever goods or services.  I observe that Mr Menaker’s name, if it is to be considered the name of a person, is Levi Menaker, not LEVI.  And, there is no unqualified right to the use of one’s own name: GollelHoldings Pty Ltd v Kenneth Maurer Funerals Pty Ltd [1987] ATPR 40-790. Further, in Biba Group Ltd v Biba Boutique [1980] RPC 413, Whitford J observed that:

    “Whatever the rights may be in respect of the use of a surname, it does not appear to me that those authorities go to the use of a first name …”

16. Further, Mr Menaker’s evidence shows that the word LEVI is a comparatively rare surname and occurs under 50 times in the Sydney telephone directory.  It is thus not obvious to me that the word would be viewed as a surname by most Australians – arguments that it would be so viewed do, in any event, lead to difficulties for the applicants in relation to the ground of opposition under section 41 of the Act.

    The Surveys

17. Both parties have conducted surveys in relation to public perceptions of the word LEVI.  The applicants are sharply critical of the opponent’s first survey that was conducted in relation to the prior proceedings and have said nothing about the opponent’s second survey (the Alexander declaration refers) conducted in relation to these proceedings.  While being critical of the first survey of the opponent, the applicants have adopted at least the bulk of its methodology in relation to their own survey. 

18. However, I have fundamental problems with the applicants’ survey because it was conducted in relation to a wine label which (inter alia) bears a trade mark which is not the subject of this application.  It is apparent that the bottles of wine that Mr Menaker showed to the respondents bore two labels – one of which is not in evidence.  I thus have no basis for an assessment of the indicia to which the respondents were reacting.

19. Further, the context in which the survey took place is entirely unclear to me.  If, for example, the survey was conducted by a person who was at a stand bearing the sign “Kosher Wines”, or the surveyor bore some equivalent sign, or, indeed, the person conducting the investigation wore clothing which identified them as a person of the Jewish faith, or stood outside a synagogue to conduct the survey, one would expect both the pool of respondents, and their responses, to be skewed in favour of an anticipated outcome.  While it is not apparent that the applicants’ survey was conducted under any of the foregoing circumstances, the true circumstances are not clear apart from the fact that it was conducted in a particular suburb of Sydney.

20. Another problem is that the interviewer here was Levi Menaker – the questionnaire forms bear a signature which is recognizably his signature as it appears on the Settlement.  The questionnaire prepared by Mr Menaker reveals that his first contact with the respondent was to introduce himself as ‘Levi Menaker’.  Mr Menaker elsewhere in his declaration argues that the correct pronunciation of his forename is LEVY.  It is apparent then that he would have used this pronunciation in his introduction to the respondents.  Thus, the respondents were, from the outset, conditioned or predisposed to accept that the correct pronunciation of the word on the label is LEVY and to dissociate it from any connection with the word that is pronounced LEEV-EYE. 

21. Further, Mr Menaker who conducted the survey is one of the applicants, who cannot be claimed to be a dispassionate observer.

22. Moreover, it appears to me to be entirely possible that respondents when shown the labels on the bottle were asked for their responses to ‘Levi’s wines’ in which the word ‘Levi’ was pronounced LEVY during Mr Menaker’s preamble and that one or other of the labels bore a hekhsher[2] or other sign which identified the goods as being kosher. 

    [2] Hekhsher – a mark that certifies a product as being kosher.

23. Additionally, the survey does not address the reactions of respondents to goods in the specification other than ‘kosher wines’, or ‘wines’.

24. If it were relevant to the outcome of these proceedings, I would be inclined accord the opponent’s survey significantly more weight than that of the applicants.

    Other

25. For simplicity, I will decide this opposition, which should clearly succeed, under sections 42 and 59 of the Act.

    Section 42

26. Section 42 of the Act provides:

    42  Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    (a) the trade mark contains or consists of scandalous matter; or

    (b) its use would be contrary to law.

27. In Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, Madgwick J said at paragraph 26:

    However, in my opinion the fact that the existence of any contrariety to law is to be exercised in some circumstances by an administrative body and, in other circumstances, by a judicial body does not mean that the phrase "if its use would be contrary to law" should have an ambulatory meaning, depending upon what kind of tribunal is to apply it. Nor can any reticence on the part of an administrative decision-maker to express an opinion on a matter of law be encouraged. The idea that "contrary to law" in the context of judicial proceedings means contrary to all laws, whilst in the context of proceedings before the Registrar it means contrary to laws which are easy for the Registrar to determine or which are "clear cut", is not sustainable. As a matter of practice, delegates of the Registrar have in some cases determined that a trade mark submitted for registration is contrary to law as a result of its being in breach of other legislation: see Re Application by Slaney (1985) 6 IPR 307 at 309 where a trade mark was found to be in breach of the Health Legislation Amendment Act 1983 (Cth) and Re Application by Athol Thomas Kelly (1987) 8 IPR 667 at 672 where it was found that the trade mark would infringe the Advance Australia Logo Act 1984 (Cth). I see no reason why some legislation should be able to be relied on before the Registrar to establish contrariety to law and other legislation such as the Copyright Act, albeit more complex, should not. Further, it is well-settled that a power granted to the Registrar and to a court can be at once administrative and judicial depending on who was exercising the power. The High Court so held in R v Quinn; Ex parte Consolidated Foods Corporation (1977) 138 CLR 1, of a power to remove a trade mark from the Register.

28. Madwick J further observed, at paragraph 28 of Advantage:

    I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law. Further, there is no reason why the Registrar could not seek legal advice before forming his/her opinion. It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law. Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright in copyright proceedings; the effect is limited to the refusal of registration. In any case, an appeal de novo lies from the Registrar's decision to this Court where any error of the Registrar may be corrected.

29. Here, the opponent argues that the use of the opposed trade mark by the applicants would be contrary to the terms of the Settlement of the previous dispute.  The applicants argue that the trade mark LEVI was not covered by the terms of the Settlement.  The dispute here is thus contractual in nature and as such is enforceable at law.  In terms of Advantage, I am thus obliged to consider whether the use of the opposed trade mark by the applicants would be in breach of their contract with the opponent and thus be contrary to law.

30. Both parties accept that the Settlement is legally binding.

31. The terms of the settlement are confidential and it is not obvious to me that either or both parties have expressly waived that confidentiality – thus discussion of the issue in detail has the potential to be difficult.  On the other hand, both parties argued this ground at the hearing, which is, by its nature, a public forum – both parties can be taken to have waived the confidentiality of the Settlement for the purposes of this decision.  As it is possible to discuss the terms in a manner that rationally explains my reasons without going beyond the terms discussed at the hearing, I will limit my discussion of the terms of settlement to that information and information that an uninformed bystander could gather from the public record.  This is recorded above in my discussion of the evidence.

32. With some considerable reservations, which I address in my discussion of the section 59 ground of opposition, I agree with the applicants. The trade mark under dispute in the prior proceedings was LEVI’S WINE and the terms of settlement prescribe its amendment to LEVI WINE, an amendment to the specification of goods limiting them to kosher wines, and future use of the trade mark LEVI WINE where the word LEVI will be rendered in uppercase; but the Settlement does not similarly deal with the trade mark LEVI.

33. These limitations and amendments are not ones that in terms of the Act are significant. The goods now form a subset of what they were and remain ‘of the same description’ and the amendment to the trade mark leaves it remaining ‘substantially identical’. However, these changes were obviously significant for the parties, particularly the opponent, as the withdrawal of the proceedings was predicated upon the changes – the changes thus form the nub of the agreement.

34. The trade mark, as it appears on the application form in these proceedings (LEVI) (as distinct from LEVI WINE, with the word LEVI limited to upper case, as allowed in registration 799317) is at least as different from the trade mark as applied for in the original proceedings (LEVI’S WINE) as is the trade mark LEVI WINE, with the word LEVI limited in use to an upper-case font.

35. Thus, if the possible registration and use of the trade mark LEVI was significant to the opponent, it ought to have been included in the Settlement.  As it is not included and is significant in terms of trade marks contemplated by the Settlement, I am of the view that the Settlement does not catch the registration or use of the opposed trade mark.

36. So, although it is possible to argue that the applicants have, by the terms of the settlement, agreed to limit their use of any trade mark incorporating the word LEVI which is not materially different from the trade mark LEVI WINE, this seems to me to take a step beyond what was in the minds of the parties when the settlement was executed and the context suggests that both parties focused the whole of their intent on the trade mark then in dispute.  The possible use of the trade mark LEVI thus does not appear to me to be obviously caught by the agreement although it might be, by implication.  However, as it is not obviously included, it is most difficult to find in the particular circumstances before me that the use of the opposed trade mark by the applicants ‘would’ be contrary to law.

1. However, for the sake of clarity concerning my reasons under section 59, I will state now that if the difference between the trade marks LEVI and LEVI WINE is, for the purposes of the Settlement, an immaterial difference, the opponent should have established this ground under section 42.

2. The opponent has not established this ground of opposition.

   Section 59

3. Section 59 of the Act provides:

   59  Applicant not intending to use trade mark

   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.

4. Prima facie, the filing of an application is taken to be evidence of an applicant’s intention to use the trade mark. Where this intention is called into question by an opponent with evidence that negatives that intention, the onus devolves to the applicant to show, affirmatively, that it intends to use the trade mark. The ground under section 59 was contained in the Notice of Opposition and the declarations of Mr Williams, and the submissions of Mr Webb, generally call into question the intentions of the Menakers and contrasts their statements in the prior proceedings with the lack of fresh ones here.

5. Thus, the opponent relies on the applicants’ evidence, which, as I have explained above, is the evidence from the prior proceedings re-filed under cover of a one-page declaration.  The evidence of the applicants shows only, as I have discussed above, a most single-minded intention to use the trade mark LEVI’S WINE in relation to ‘kosher wines.’  By settlement, this trade mark is now LEVI WINE.  The applicants’ evidence does not speak to the applicants’ intentions to use the trade mark LEVI – this I have found to be (in the context of the Settlement between the parties) significantly different from the trade mark LEVI WINE (or LEVI’S WINE), with the word LEVI to be rendered only in uppercase when in use. 

6. Nor does the Menaker declaration address the applicants’ intentions to use the trade mark on goods other than kosher wines. Rather, it affirms in the strongest possible terms the applicants’ intention to use the trade mark LEVI’S WINE only on kosher wines and in the light of this pours scorn on the opponent (and its solicitors) for wasting money on the proceedings. The declaration further claims that the orthodox in the Jewish faith would probably never have seen one of the opponent’s advertisements or worn its clothing. In other words, the applicants predicate the whole of their intentions in these proceedings upon a trade mark which (if their arguments in relation to the section 42 ground are accepted) is not in suit and further vigorously point to the specialty of their goods and market in the area of their intended use. Yet the present specification includes the whole of the goods which are included in Class 33 – everything from spirits of whatever ilk, wines, cocktails and other mixers, through to wine coolers.

7. The opponent has thus successfully negatived the applicants’ intentions to use the opposed trade mark; the opponent has also negatived the range of goods on which the applicants intend to use the trade mark – these doubts are sufficient for further evidence to be required from the applicants to demonstrate their intention to use the opposed trade mark. 

8. However, the applicants have not addressed this ground of opposition in relation to these proceedings in further evidence – they simply rely on the re-filed declaration from the prior proceedings which shows what their intentions were in relation to the trade mark LEVI’S WINE, used in relation to kosher wine.  The applicants have not demonstrated how their intention, stated in the most positive and absolute terms in 2002, might have changed in relation to both the trade mark and the goods in this matter in 2006.

9. Accordingly, the applicants’ evidence, taken as a whole, confirms that the applicants only intend to use the trade mark LEVI’S WINE in relation to ‘kosher wines’ and is disparaging of suggestions that their use of the trade mark might vary from this.  It is thus apparent from the evidence that the applicants have no evidenced intention to use the opposed trade mark nor do they intend to use it on all of the goods for which they have made application – in fact, they appear to strongly repudiate any suggestion that they intend to use a trade mark on goods other than ‘kosher wine’.

10. However, if the applicants were to argue that the differences between the trade marks LEVI (on the one hand) and LEVI WINE or LEVI’S WINE (on the other hand) are immaterial, so that the declaration by Mr Menaker served and filed in the prior proceedings and re-served and re-filed here does – or can be taken to – address the applicants’ intentions, the grounds already discussed under section 42 must immediately reinstate themselves with adverse consequences for the applicants.

11. If it were the case that the differences between the opposed trade mark LEVI and the trade mark LEVI WINE are so slight (or immaterial) that the prior declaration adequately addresses the applicants’ intentions concerning use of the opposed trade mark here, then the applicants’ use of the opposed trade mark should be caught by the Settlement with the opponent – at least insofar as it relates to the Settlement to use it only in uppercase. Further, the application additionally goes well beyond the goods (kosher wines) to which the applicants are limited by the Settlement. Thus, from this viewpoint, if the declaration is sufficient to establish the applicants’ intentions in relation to section 59, the use of the trade mark in anything but uppercase or on goods other than ‘kosher wines’ would be contrary to law and the ground under section 42 would be established.

12. In summary, the applicants, on the evidence before me, have not, when challenged, established their intention to use the opposed trade mark or to use it on all of the goods for which registration is sought – rather they have shown that they do not intend to so use it. If, on the other hand, the differences between the trade marks LEVI and LEVI’S WINE (or LEVI WINE) are immaterial, so that the applicants’ intentions are established by their declaration filed in relation to the prior proceedings, the application is made in breach of the terms of the Settlement of those prior proceedings and use of the trade mark would be contrary to law in terms of section 42 of the Act.

13. The opponent has established its ground of opposition under section 59.

    Decision

14. Section 55 of the Act provides:

    55. 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.

    Note:  For limitations see section 6.

15. I refuse to register application 980276.

    Costs

16. The opponent, having been successful in these proceedings is entitled to its costs which I order at the official scale against the applicants.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings

    26 September 2006