Lion-Beer, Spirits & Wine Pty Ltd v Michael Harvey

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Lion-Beer Wine and Spirits Pty Limited to registration of trade mark application 1312966(32) - TOSSERS EXTRA DRY - filed in the name of Michael Harvey.

Delegate: Alison Windsor

Representation: Opponent – Ed Heerey of Counsel instructed by Sarah Murray of King & Wood Mallesons
Applicant – Susan Gatford of Counsel instructed by Noelene Treloar of McPherson+Kelley Lawyers

Decision: 2013 ATMO 06
Section 52 opposition: grounds under ss 44, 60 and 42(b) pursued – no grounds established – application to proceed to registration.
Background

The matter for determination in this instance is an opposition by Lion-Beer Wine & Spirits Pty Limited (formerly known as Lion Nathan Australia Pty Limited) (‘the Opponent’) to registration of trade mark application 1312966 filed in the name of Michael Harvey (‘the Applicant’). The application was filed on 3 August 2009 for the following goods in class 32 of the Nice Classification:
Alcohol free beer; alcoholic beers; beer; beer wort; bitter beer; black beer; dark beer; de-alcoholised beer; extracts of hops for making beer; fruit beers; ginger beer; malt beer; malt-containing beverages (beers); malt-containing beverages (non-alcoholic, except beers); non-alcoholic beers; pilsner beer; root beer; ale; fruit ale; ginger ale; lager; stout; aerated beverages (non-alcoholic); alcohol free beverages; beverages containing not more than 1.15% (by volume) of alcohol; edible essences for making beverages; electrolyte replacement beverages for general and sports purposes; essences for making beverages; fruit syrup (beverages or for making beverages); grain based non-alcoholic beverages; hop concentrates for use in the preparation of beverages; hop essences for use in the preparation of beverages; hop extracts for use in the preparation of beverages; low alcohol beverages containing not more than 1.15% (by volume) of alcohol; malt based preparations for making beverages; mineral water (beverages); non-alcoholic barley based beverages; non-alcoholic beverages; spring water (beverages), other than for medical purposes; tonic water (non-medicated beverages); waters (beverages); alcohol free cider; cider (non-alcoholic); none of the foregoing being fruit or vegetable juices (‘the Goods’).
The trade mark applied for is the words ‘Tossers Extra Dry’ (‘the Trade Mark’) in plain upper and lower case as shown here.
It was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’) and after some minor amendments to the goods specification to overcome a ground for rejection raised under the provisions of section 44,[1] it was accepted for possible registration. It was advertised as such in the Australian Official Journal of Trade Marks on 3 December 2009.
[1] The relevant earlier dated trade mark is 973939 for the trade mark TOSSERS SALAD BAR which is registered for a range of goods and services in classes 29 and 43.
On 2 March 2010 the Opponent filed a Notice of Opposition (‘the Notice’) which listed nine grounds of opposition. The grounds are those relevant to sections 42, 43, 44, 58, 59. 60, 62(a), 62(b) and 62A.
Evidence in support, in answer and in reply as provided for by the Trade Mark Regulations 1995 (‘the Regulations’) were served and filed by the parties. After receipt of the Opponent’s evidence in reply, the Opponent requested a hearing, shortly followed by confirmation from the Applicant that he also intended to appear and be heard.[2]
[2] The hearing request also advised that the Opponent had changed its name to Lion-Beer Wine & Spirits Pty Limited.
The opposition was set down to be heard in Canberra on 20 August 2012. However, on 17 July 2012 the Opponent filed an application for permission to introduce further evidence into proceedings. After some correspondence between the parties and the allocated hearing officer, it was decided to postpone the hearing so that the Applicant could have sufficient time to comment upon and respond to the further evidence.
Once the Applicant had served and filed his response to the Opponent’s further evidence, the matter was again set down to be heard, this time in Melbourne.
As a delegate of the Registrar of Trade Marks I heard the parties’ submissions at the hearing on 12 November 2012. The Opponent’s submissions were given by Ed Heery of Counsel, instructed by Sarah Murray of King & Wood Mallesons accompanied by Victor Li. The Applicant’s submissions were given by Susan Gatford of Counsel, instructed by Noelene Treloar of McPherson+Kelley Lawyers. Mr Harvey was also in attendance.
I note here that the hearing canvassed two oppositions – the one which I have described thus far as well as the opposition by Mr Harvey to the Opponent’s application 1248610 for the trade mark EXTRA DRY. While much of the evidence for both oppositions is the same, because the matters to be considered in each opposition are quite different, I have chosen to deal with them in two separate decisions which will issue simultaneously.
Evidence provided
The evidence filed and served for the opposition consists of the following Statutory Declarations:
Evidence in support
- Sarah Margaret Elliot Murray, made 20 May 2010 with Exhibits SMEM-1 to SMEM-5. (‘Murray 1’). Four of these Exhibits contain copies of Statutory Declarations filed in support of other applications which are owned by companies related to the Opponent. The declarations and their exhibits are as follows:
Evidence in Answer
- Denis Coldebella, made 17 March 2011
- Michael Harvey, made 20 April 2011 with Exhibits MH-1 to MH-8
- Warren Goodwin Chandler, made 27 April 2011 with Exhibits WGC-1 to WGC-3
Evidence in Reply
- Derek George Orford, made 24 August 2011 (‘Orford 2’)
Opponent’s further evidence
- Sarah Margaret Elliot Murray made 16 July 2012 with Exhibit SMEM-1 (‘Murray 2’), which consists of the following Statutory Declaration:
o Ashleigh David John Bellotti, made 16 April 2012
Applicant’s response to further evidence
- Michael Harvey, made 17 September 2012 with Exhibits MH 1 to MH 4 (‘Harvey 3’). Exhibit MH 1 consists of the following Statutory Declaration:
o Adam Barkley, made 17 September 2012
Grounds pursued and onus
While the Notice nominated nine grounds of opposition, at the hearing only the grounds under sections 42, 44 and 60 were pursued. I regard the remainder of the grounds set out in the Notice as having been abandoned.
The onus is on the Opponent to establish at least one of the grounds it has pursued, on the balance of probabilities.[3] The date at which the ground of opposition must be established is the date of filing of the Opposed trade mark (‘the relevant date’), in this case 3 August 2009.[4]
[3] See, for example, Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 283 ALR 743 per Greenwood J at [16] to [32]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].
[4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.
Discussion and Reasons
At the Hearing the Opponent began its submissions on substantive matters with a consideration of the ground of opposition under section 44. This is an appropriate place for me to begin my discussion.
Section 44(1) relevantly provides:
Section 44 – identical etc trade marks
(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.
The opponent must establish that there exists another trade mark on the register which is substantially identical or deceptively similar to the Trade Mark, which has an earlier priority date than that of the Trade Mark, which is owned by a person other than the Applicant and which is registered for (or has been applied for in respect of) similar goods or closely related services.
The Opponent specified that it was relying on one of its own prior Australian trade mark registrations, details of which appear below:
Registration number:          1169672
Registration date:                2 April 2007
Goods/Services:  Class 9: Apparatus for recording, transmission or reproduction of sound or images; recording discs; computers; apparatus for data storage; hard drives; audio tapes, audio-video tapes, audio video cassettes, audio video discs; CD-ROMs; digital versatile discs; headphones; audio speakers; speakers for computers; personal stereo speaker apparatus; digital audio and video devices; audio cassette recorders and players, video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players; radios; cameras; video cameras; bags and cases adapted or shaped to contain cameras and/or video cameras; mobile telephones; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; portable digital electronic devices and software related thereto; handheld digital electronic devices and software related thereto; MP3 players; hand held computers, personal digital assistants, electronic organizers, electronic notepads; magnetic data carriers; telephones, computer gaming machines, videophones; electronic handheld devices for the wireless receipt and/or transmission of data, particularly messages, and devices that enable the user to keep track of or manage personal information; bags and cases adapted or shaped to contain MP3 players, hand held computers, personal digital assistants, electronic organizers and electronic notepads
Class 25:Clothing, footwear and headgear
Class 28:Games, playthings and sporting articles (not included in other classes) including, but not limited to; amusement machines, balls, bats, cricket apparatus, fishing tackle, fishing rods, footballs, golf gloves, golf clubs, paintball equipment, sailboards, scooters, skateboards, body boards, surf boards, surf skis, skiing apparatus, table tennis equipment and water-skis
Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Class 41: Entertainment; sporting, recreational and cultural activities and events including organising and conducting of sporting events, competitions, musical and theatrical productions
Trade Mark:  TOOHEYS EXTRA DRY
The Opponent pointed out that the goods covered in its specified registration include all beers, all mineral and aerated waters and other non-alcoholic drinks. This, it said, encompasses all of the goods specified in Mr Harvey’s application. I note that the Opponent’s registered goods in class 32 also include syrups and other preparations for making beverages. I am satisfied that the Opponent’s registered goods in class 32 are the same as and similar to those which the Applicant is claiming.
It is clear that the registration the Opponent has chosen to rely upon has an earlier priority date to that of the Trade Mark. The remaining matter for determination is the similarity of the trade marks.
The Opponent did not make any submissions about the matter of substantial identity of the trade marks. I am satisfied, on the basis of the accepted tests, that the trade marks are not substantially identical and that this matter needs no further consideration.
In respect of deceptive similarity, the Opponent first noted the definition of the term provided by section 10 of the Act:
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.
The Opponent provided a comprehensive listing of the legal principles to be applied when considering deceptive similarity, the major points of which I have noted here (including the relevant references as provided in the written submissions):
·The respective trade marks must be compared both visually and aurally.[5]
·A side-by-side comparison must be avoided,[6] and little assistance is to be obtained from a "meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution".[7]
·Allowance must be made for imperfect recollection of the prior mark and the effect of careless pronunciation and speech by both the customer and the salesperson.[8]
·It is sufficient that there is a real risk that the Applicant’s use of TOSSERS EXTRA DRY will cause a significant number of persons to wonder or entertain a reasonable doubt as to whether it might not be the case that the respective goods come from the same source.[9] It is sufficient to “cause confusion” if the minds of the purchasing public are merely “perplexed or mixed up”.[10]
·It is not necessary to establish that confusion is “more probable than not”, rather there must be a “real tangible danger” of it occurring.[11]
·The first syllable of a word is, as a rule, far the most important for the purposes of distinction.[12]
[5] Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at 101 and 105 per Sheppard J (Wilcox J agreeing).
[6] Australian Woollen Mills Ltd v F S Walker & Co Ltd (1937) 58 CLR 641 at 658 per Dixon and McTiernan JJ; Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 415 per Windeyer J.
[7] Aristoc Ltd v Rysta Ltd [1945] AC 68 at 86-7; Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 98 per Williams J; Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited (2004)209 ALR 1 at 18 [77]; See also Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38 at [19] per Wilcox, Kiefel and Bennett JJ.
[8] Aristoc Ltd v Rysta Ltd [1945] AC 68 at 86-7; Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 98 per Williams J; Re Bali Brassiere Co Inc's Registered Trade Mark & Berlei Ltd's Application (1968) 118 CLR 128 at 137 per Windeyer J; Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited (2004) 209 ALR 1 at 18 [77].
[9] Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 28 IPR 193 (Sheppard, Wilcox and Gummow JJ); (1993) 43 FCR 344 (Burchett J).
[10] Coca-Cola Co v All-Feet Distributors Ltd (1999) 96 FCR 107 at [39] per Black CJ, Sundberg and Finkelstein JJ; Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd [1979] RPC 410 at 423.
[11] Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 at 426 [43] per French J applying Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529 at 594-6 per Kitto J.
[12] London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 at 279 per Sargant LJ; Conde Nast PublicationsPty Ltd v Taylor (1998) 41 IPR 505 at 511 per Burchett J.
In respect of visual and aural comparison of the two trade marks, the Opponent contended that the two are visually very similar because they share the following letters: TO–E-S EXTRA DRY. Mr Heerey provided in his submissions a piece of text in which the letters of many of the words, except for their first and last letters were jumbled. A portion of the text is as follows:
“The rset can be a toatl mses and you can sitll raed it wouthit porbelm. This is bcuseae we do not raed ervey lteter by itslef but the wrod as a wlohe.”
He then submitted that the ‘above text can be read quite easily, demonstrating the important role played by the first and last letters of each word in the visual cognitive process. That principle demonstrates the risk of visual confusion between TOSSERS and TOOHEYS, particularly when each is combined with the identical words EXTRA DRY’.
The Opponent also submitted that the two trade marks are aurally very similar because the first word of each commences with a ‘TO-’ sound and ends with an ‘S’ sound, with the final words, EXTRA DRY, being the same. It contended that ‘when a proper allowance is made for an imperfect recollection of the TOOHEYS EXTRA DRY, and the marks are not compared side-by-side, these visual and aural similarities ought to be sufficient of themselves to support a finding of deceptive similarity within the meaning of that term as elucidated by the above authorities’.
The Applicant submitted that the two marks are neither substantially identical nor deceptively similar. It submitted that under the accepted tests for deceptive similarity, one of the most important considerations is whether the trade marks convey the same idea, claiming that it is the idea of a mark rather than the mark itself that is likely to be (imperfectly) recalled. Ms Gatford went on to say:
In this case the idea conveyed by the two marks is completely different. This idea is conveyed in the first word of the marks – TOSSERS and TOOHEYS – as the balance of both marks are purely descriptive words.
[…]
Tooheys is not a dictionary word. Rather, it is a surname. It conveys no particular idea. By contrast, “tosser” means either someone or something that tosses or, colloquially, either a man who performs a particular sexual act upon himself or a stupid person (see, for example, Macquarie Concise Dictionary Fifth edition). Thus one mark (Tossers) conveys a strong idea, and the other (Tooheys) does not convey any idea per se.
The marks also sound very different. The double O in Tooheys gives the word a completely different sound to that of Tossers, as does the absence of the double S or any pronounced consonant in the middle of the word. The ends of the words are different also – with an “ur” as opposed to an “ee” sound.
The fact that the words share some common letters, a matter strongly emphasised by the Opponent in its submissions, is unremarkable – there are only 26 letters in total, and anyone who has ever played Scrabble or hangman will know that T, O, S, E and R are among the most commonly used letters in the English language.
Further, the Opponent’s method of analysis does not derive from any decided case. Its inapplicability can perhaps be best illustrated by the fact that it would result in a finding that the words TOYBETS, TORRENS, TOWELS and TODLERS are all deceptively similar to each other and to both TOOHEYS and TOSSERS.
Both parties provided evidence which goes to their respective cases in relation to the question of the possibility of confusion between the two trade marks. In support of its arguments for aural similarity the Opponent referred to the Bellotti declaration which it filed as further evidence. At the time of making his declaration Mr Bellotti said he was a publican and the owner of the business at the Great Western Hotel in Cobar. He says that in his experience a busy bar is a very noisy place and it is often difficult for bar staff to hear orders from customers. He says that when it is especially noisy he and his staff are likely to latch onto certain key words of what a customer has said in order to determine what they want. He states that while the Opponent’s beer is sold at his hotel, the Applicant’s is not, but he considers that the two trade marks – TOOHEYS EXTRA DRY and TOSSERS EXTRA DRY sound very similar. He also says that if a customer were to just order an ‘extra dry’ there would be no way to know, without extra enquiry, which beer had been requested.

The Applicant supplied the Barkley declaration to support its contention that the trade marks are unlikely to be confused. Adam Barkley said that he was a professional bar person and that his experience included working in the Clique Bar in Melbourne. He says that the bar offered both Tossers Extra Dry and Toohey’s Extra Dry beers and that he did not suffer any confusion between the trade marks on the beers.
When comparing these two trade marks, the matter which must be given most weight in the comparison is the first word in each. Both trade marks consist of three words and their final two words are the identical descriptive words ‘Extra Dry’. The comparison for the purposes of determining deceptive similarity must thus be between the words TOSSERS and TOOHEYS. It is the similarity between these two words which will determine whether the three word trade marks are so similar that they are likely to deceive or cause confusion.
I am not convinced by the Opponent’s arguments in respect of the deceptive similarity of these two trade marks. I concede that each trade mark does indeed include a number of the same letters, but as is pointed out in the Applicant’s submissions, so do many other words. A degree of congruence between the letters is simply insufficient to point to a real tangible danger of confusion occurring between the words when they are considered as wholes.
The Opponent has suggested that because both of the words contain many letters in common, especially the first and the last, it is likely that there will be visual confusion between TOSSERS and TOOHEYS. In support of this contention it has provided an example of a sentence containing words with jumbled letters (though the first and last letters of the intended words are in their correct places) which most people can read quite easily (see paragraph 22 previously). There are good reasons that most people can read this kind of text, and that is because each word consists of the correct letters for the intended word, it is only the order of the letters between the first and last letters which has changed. TOOHEYS and TOSSERS do not consist of the identical letters even though the first and last ones are the same. I have great difficulty in seeing that one could be regarded as even a jumbled version of the other.
As far as pronunciation goes, and without going into anything other than a basic consideration of the subject, I do not consider that there is anything other than minor similarities in pronunciation of the two words. The Opponent pointed out that, as a rule, the first syllable of a word is far the most important for the purposes of distinction. In the current comparison, both of these words begin with the letters ‘TO’ and both end with the letter ‘S’. However, that is where the similarity ends.
The first four letters of the Opponent’s trade mark consists of a soft ‘TOOH’ sound as can be found in the words ‘moo’ or ‘coo’. The first four letters of the Trade Mark consist of the much harder and sharper sound – ‘TOSS’. The endings of both words are also quite different – the Opponent ends with an ‘EE’ sound, the Trade Mark with an ‘ER’ which is most likely to be pronounced ‘UR’. There do not appear to me to be alternative ways of pronouncing either of these words unless, perhaps, if the ‘EYS’ ending in TOOHEYS was to be pronounced as ‘AYS’. If that was to be the case, I consider there would be even less aural similarity between TOSSERS and ‘TOOHAYS’.
In addition, there is the matter of the ideas of the trade marks which are, to a large extent, embodied in the meanings of the relevant words. As noted previously the word TOSSERS has the meaning of one who throws (or tosses) something. It also has the more often used pejorative meaning of a fool or an idiot, which has been derived from its other colloquial meaning of a masturbator. As a pejorative term the word is somewhat unexpected in the context of beverages, especially given its generally accepted meaning in the Australian market.
TOOHEYS, on the other hand, is a surname. There is no other meaning that can be ascribed to the word.
I would make one further comment before going on to deciding this ground. The Opponent has argued that there is a likelihood of confusion when the goods are purchased in the noisy atmosphere of a bar or a club, arguing that the bar person will be likely to misconstrue the first word and confuse the two extra dry beers. I think it would be a basic tenet of good customer service that if the bar offers more than one extra dry beer, that the bar person would make sure he had heard which particular beer was on order before filling that order. I consider that the Bellotti declaration to be more of a ‘red herring’ than persuasive evidence to support a likelihood of confusion.
Taking all the above into account, and despite the Opponent’s submissions that a person who has an imperfect recollection of TOOHEYS would be likely to confuse it with TOSSERS when in use with the words EXTRA DRY, I do not find that the two trade marks are deceptively similar. The opponent has not established this ground of opposition.
Section 60 – trade mark similar to trade mark that has acquired a reputation in Australia
Section 60 provides:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that;
(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation Australia; and
(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
In respect of the claim for a reputation in its trade marks, the Opponent submitted that it was relying on the reputation it claims to have been acquired by each of the trade marks TOOHEYS EXTRA DRY and EXTRA DRY. It has provided in support of this claim the evidence of use submitted during the examination of and opposition to its application 1248610 for the trade mark EXTRA DRY (for goods in class 32) as well as the evidence provided in support of its application for a defensive trade mark (no. 1283149) for the trade mark TOOHEYS.[13]
[13] 1283149 is registered as a defensive trade mark for the following goods and services and with a priority date of 30 January 2009: ‘alcoholic beverages (except beers), including wine, spirits, pre-mixed alcoholic beverages, alcoholic sodas and blended alcoholic beverages’ in class 33 and ‘services for providing food and drink; temporary accommodation’ in class 43.
The evidence provided, despite all sales and advertising figures having been removed for the purposes of this opposition, demonstrates that the trade mark TOOHEYS could be regarded as a ‘household name’ in the Australian market for the goods its produces. To my mind there is no question that it has the kind of reputation envisaged by section 60 of the Act.
The second leg of the section 60 test goes to whether, because of this impressive reputation, use of the Applicant’ trade mark would be likely to deceive or cause confusion.
In considering the section 60 ground of opposition, there is no longer any requirement that the conflicting trade mark be even deceptively similar to the trade mark which has demonstrated its reputation. Instead, the focus of the provision is squarely upon the likelihood of public deception or confusion being generated by the Applicant’s use of its trade mark in the face of the reputation of the trade mark relied upon by the opponent.
Even without the requirement for deceptive similarity, if there are significant differences between the trade marks, as I consider is the case here, this cannot help but play to the Opponent’s disadvantage when the question is posed as to whether the Applicant’s use of its trade mark is likely to cause deception or confusion because of the Opponent’s reputation in its own trade mark. I consider that the major differences between the words TOSSERS and TOOHEYS are such that deception or confusion of the public will be most unlikely in this instance. The section 60 ground of opposition is thus not established.
Section 42 – trade mark scandalous or its use contrary to law
Section 42 relevantly provides:
An application for the registration of a trade mark must be rejected if:
(a)…
(b)Its use would be contrary to law.
The Opponent submitted the following:
It is well established that s 42(b) provides a ground of opposition to trade marks the use of which would amount to passing off or misleading or deceptive conduct in breach of ss 52 or 53 of the Trade Practices Act 1974 (TPA)[14] or equivalent state fair trading legislation which applies to natural persons such as sections 9 or 11 of the Fair Trading Act 1989 (Vic) (FTA) (as those acts stood as at 3 August 2009).
[14] The TPA was the appropriate consumer legislation in force at the priority date of the Trade Mark.
As the Applicant is a natural person, not a corporation, the Victorian state legislation appears to be relevant to this case. Sections 9 to 12 of the Fair Trading Act 1999(Vic) (‘FTA) (which appears to have been the applicable Act at the time of filing) contain some matters relevant to the Opponent’s contentions. Those relevant portions are shown below::
9. Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2) Nothing in the succeeding provisions of this Part is to be taken as limiting by implication the generality of sub-section (1)
10. Misleading conduct in relation to goods
A person must not, in trade or commerce, engage in conduct that is liable to mislead the public as to the nature, the characteristics, the suitability for their purpose or the quantity of any services.
[…]
12. False representations in relation to goods and services
A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion or advertising by any means of the supply or use of goods or services—
(a) falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use; or
[…]
(e) represent that goods or services have a sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have; …
These sections of the FTA are effectively equivalent to the provisions of sections 52 and 53 of the TPA. The matter to be decided is whether the Applicant’s conduct would, not could, be contrary to the provisions of the FTA.[15]
[15] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683; (2001) 52 IPR 24.
It is useful to have a clear picture of the meanings of the words ‘deceive’ and ‘mislead’. According to the online version of the Macquarie Dictionary the relevant meanings of the word ‘deceive’ are ‘to mislead by a false appearance or statement; delude; to practice deceit; act deceitfully’. ‘Mislead’ is defined in the same dictionary as ‘to lead or guide wrongly; lead astray; to lead into error of conduct, thought or judgement’. Franki J observed in Weitmann v Katies Ltd:[16]
The most appropriate meaning for the word "deceive" in the Oxford Dictionary is: "To cause to believe what is false; to mislead as to a matter of fact, to lead into error, to impose upon, delude, take in". The most appropriate definition in that dictionary for the word "mislead" is: "To lead astray in action or conduct; to lead into error, to cause to err".
[16] (1977) 29 FLR 336; 2 TPC 329; [1977] ATPR 40-041 at 343.
According to ¶105.1025 of Shanahan’s Australian Law of Trade Marks and Passing Off:[17]
Thus "misleading" is closer in meaning to "deceptive" than it is to "confusing". Misleading conduct does not merely cause confusion; it actually directs a person toward the wrong choice. Gibbs CJ said in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd:[18]
In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 49 FLR 455; 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 28 ALJR 540, [7] a decision on the Trade Marks Act 1905 (Cth), as amended, is distinguishable.
[17] On line. (Accessed: 18 January 2013).
[18] 56 ALJR 715; [1982] HCA 44 at 198 (CLR).
I have found that the Opponent has a reputation in its trade mark Tooheys, but I have also found that it is most unlikely that the Applicant’s use of the Trade Mark would deceive or cause confusion. As a result I find that there is nothing in the Trade Mark which directs people towards a wrong choice or causes them to believe that the Opponent is any way involved in the manufacture of the Applicant’s goods. Similarly, I can find nothing in the Applicant’s conduct which points to any attempt to profit from the Opponent’s reputation. I am satisfied that the Applicant’s use of the Trade Mark would not be contrary to either the TPA or the FTA. The Opponent has not established the section 42(b) ground of opposition.
Decision
The Opponent has not met the onus upon it to establish a ground of opposition. Application 1312966 may proceed to registration after 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 either the appeal is withdrawn or a court so orders.
Costs
The Applicant has requested its costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark opponent, Lion-Beer Wine & Spirits Pty Limited.
Alison Windsor
Hearing Officer
Trade Marks and Designs Hearings
22 January 2013

Delegate:	Alison Windsor
Representation:	Opponent – Ed Heerey of Counsel instructed by Sarah Murray of King & Wood Mallesons Applicant – Susan Gatford of Counsel instructed by Noelene Treloar of McPherson+Kelley Lawyers
Decision:	2013 ATMO 06 Section 52 opposition: grounds under ss 44, 60 and 42(b) pursued – no grounds established – application to proceed to registration.

[2013] ATMO 6

22 January 2013