Lion Nathan Australia Pty Limited v eAgency Pty Limited

[2010] ATMO 82

TRADE MARKS ACT 1995

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

Re:Opposition by Lion Nathan Australia Pty Limited to registration of trade mark application 1225485(32, 40) - NEW SOUTH BREWING COMPANY - filed in the name of eAgency Pty Limited.

Delegate:

Bianca Irgang

Representation:

Opponent: Mr Michael Hall of counsel, instructed by Mallesons

Applicant: Not present at the hearing

Decision:

2010 ATMO 82

Section 52 opposition: sections 42, 59 and 60 pressed at the hearing – s60 ground of opposition established for all goods and services - trade marks deceptively similar – use likely to deceive or cause confusion - no requirement to consider other grounds - Costs awarded against the applicant.

Background

1. eAgency Pty Limited (‘the applicant’), filed application number 1225485 on 20 February 2008 in classes 32 and 40 of the International Classification of Goods and Services (‘Nice’ classification). Current details of the application are set out below.

Trade mark:  

Trade mark application:              1225485

Filing Date:  20 February 2008

Specification:  Class 32: Alcohol free beer; alcoholic beers; beer; beer wort; bitter beer; black beer; dark beer; de-alcoholised beer; extracts of hops for making beer; malt-containing beverages (beers); non-alcoholic beers; pilsner beer

Class 40: Brewing of beer

1. Lion Nathan Australia Pty Limited (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 4 September 2008. Thereafter the opponent served and filed evidence in support in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’). A Notice Requiring Production of a Document or Article (‘Notice to Produce’) was requested by the opponent and then issued by the Registrar on 26 March 2010. The applicant complied with the Notice to Produce and the relevant documents were filed with IP Australian on 1 April 2010.

2. I heard the matter in Sydney as a delegate of the Registrar of Trade Marks on 11 May 2010. The opponent was represented by Mr Michael Hall of Counsel, instructed by Mallesons. The applicant did not appear at the hearing but did provide written submissions for consideration.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition under the Trade Marks Act 1995 (‘the Act’). However, the primary grounds the opponent pursued at the hearing were under sections 42, 59 and 60 of the Act.

2. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599;

   [2] [2009] FCA 891, para 22-27

Evidence

1. The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Sarah Margaret Elliott Murray[3]	Employee of Mallesons Stephen Jaques	19 March 2009	SMEM-1 to SMEM-12
Opponent’s Further Evidence
Sarah Margaret Elliott Murray[4]	Employee of Mallesons Stephen Jaques	20 April 2010	SMEM-13 to SMEM-27
Applicant’s Response
Marc William Gough[5]	Company Director of eAgency Pty Ltd	5 May 2010	-

[3] For ease of reference throughout the decision this statutory declaration will be known as the Murray #1 declaration

[4] For ease of reference throughout the decision this statutory declaration will be known as the Murray #2 declaration

[5] For ease of reference throughout the decision this statutory declaration will be known as the Gough declaration

Opponent’s Evidence

1. The Murray #1 declaration is accompanied by exhibit SMEM-1 which is a copy of the statutory declaration of Ms Margaret Zabel (‘the Zabel declaration’). The Zabel declaration states that the opponent, Lion Nathan Australia Pty Limited, is the parent company of Tooheys Pty Ltd (‘Tooheys’). Tooheys was established in Sydney in 1869 by John Thomas Toohey and James Matthew Toohey. In Tooheys’ first decades of operation the beers brewed were traditional English and German style dark beers, such as ales and porters. The first beer brewed by Tooheys was known as “Tooheys Black Ale” and was manufactured using top fermenting yeast – a type of yeast which rises through the fermenting vat and is skimmed off the top.

2. The opponent states that in the 1930s lighter lager beers became increasingly popular amongst Australian beer-drinkers. In 1931 Tooheys began to produce its first lager beer. The beer was called “Tooheys New Special”. Tooheys New Special was sold exclusively “on tap” under the name Tooheys New Special for the next 40 years. Following the release of Tooheys New Special, Tooheys Black Ale became known as “Tooheys Old”.

3. From 1971 Tooheys began to sell its Tooheys New Special beer packaged in cans and bottles under the label “Tooheys New Special Draught”. In the meantime, the Tooheys New Special beer was still being sold “on tap” and the name of the beer was eventually shortened to “Tooheys New” in the early 1990s.

4. In 1998 Tooheys recognized that whilst the beer on tap sold very well under the name Tooheys New, the same beer sold in cans and bottles under the name “Tooheys Draught” was less popular. Therefore, Tooheys decided to sell the beer under the name Tooheys New regardless of whether it was sold on tap or in its packaged form (exhibit MZ-5).

5. In accord with this decision, the packaging, labels and tap heads used for Tooheys New were all redesigned in 1998 (exhibits MZ-6 and MZ-7). Confidential Exhibit MZ-11 accompanying the Zabel declaration demonstrates there were very significant increases in the sale of packaged Tooheys New since the brand consolidation in 1998. The sales figures relating to Tooheys New beer being sold on tap remained constant since 1996.

6. The Zabel declaration goes on to state that Tooheys New is the flagship beer of the Tooheys company. Ms Zabel avers that Tooheys New is the top selling tap beer in New South Wales and Australia’s second largest selling beer brand. She states that in the years since the consolidation of the brand in 1998, in excess of one billion litres of Tooheys New have been sold nationally.

7. Ms Zabel states that many millions of dollars have been spent on the marketing and promotion of Tooheys New. In 2004, 30.3% of the opponent’s total expenditure on advertising and marketing (for all its brands) was spent on the promotion of its Tooheys New beer. Confidential exhibit MZ-14 of the Zabel declaration shows that significant amounts were spent on the different forms of marketing and promotion of Tooheys New from 1999 through to 2004 inclusive. 

8. The brand consolidation which took place in 1998 also involved the introduction of the slogan “GIVE THAT MAN A NEW”. The slogan was developed by Tooheys advertising agency Singleton Ogilvy & Mather in 1998. Ms Zabel avers that this slogan has been used extensively since that time and at least until June 2003. GIVE THAT MAN A NEW has featured in many promotions in regional and metropolitan Australia. The evidence demonstrates that the slogan featured in television commercials, radio and print advertisements and on point of sale material (exhibits MZ-15, MZ-16 and confidential exhibit MZ-26). It was also displayed on every carton of Tooheys New sold between 2000 until at least June 2003.

9. Additional slogans using a variation on the NEW theme such as “GIVE THAT TOWN A NEW…” (exhibit MZ-17), “CELEBRATE THE NEW WAY” (exhibit MZ-18), “THE NEW WAY” (exhibits MZ-19 and MZ-20) and “I LOVE NEW, I LOVE NEW, I LOVE NSW” (exhibits MZ-15 and MZ-21) were also used by Tooheys to promote Tooheys New.  In particular, I note Tooheys had an advertising campaign in 2004 and 2005 during the State of Origin Series with the slogan “TOOHEYS PUTS THE NEW IN NSW” (exhibits MZ-23 and MZ-24). 

10. In 1998 the Zabel declaration attests that the introduction of the slogan GIVE THAT MAN A NEW, with its emphasis placed on NEW rather than Tooheys New, coupled with the common Australian practice of shortening names whenever possible, led to a tendency amongst both consumers and the trade to refer to Tooheys New simply as NEW. In response to this phenomenon, Tooheys applied to register the word NEW as a trade mark.

11. On 19 February 2003, Tooheys filed trade mark application no. 944558 for the word NEW in class 32 for beers and ales; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. A section 41(6) ground for rejection was raised against the application during examination. Eventually, this application lapsed and Tooheys filed trade mark application no. 1046766 for the word NEW. Trade mark no. 1046766 was eventually accepted and proceeded to registration. The details of the trade mark are as follows:

Trade mark:  NEW

Trade mark registration:             1046766

Filing Date:  17 March 2005

Owner:   Tooheys Pty Limited

Specification:  Class 32: Beers and ales

Endorsements: Provisions of subsection 41(6) applied. Provisions of paragraph s44(3)(b) applied.

1. The trade mark obtained registration on the basis of evidence and the provisions of subsection 41(6) was applied. The evidence which Tooheys put before the Registrar to gain acceptance of its NEW trade mark has been put into evidence by the opponent in these proceedings. Exhibits SMEM-1 through to SMEM-12 accompanying the Murray #1 declaration are all statutory declarations which attest to the considerable reputation that Tooheys has acquired in its NEW trade mark. This evidence of reputation was sufficient for Tooheys to obtain registration of its NEW trade mark in the face of a subsection 41(6) ground for rejection. Needless to say, the evidence is considerable.

Notice to Produce documents filed by Applicant

1. The Registrar issued a Notice to Produce on 26 March 2010 requiring the applicant to produce all documents comprising market analyses, strategy and business plans and/or market research prepared by eAgency Ply Limited or its agents relating to Trade Mark Application No 1225485 created on or prior to 20 February 2008 which evidence an intention by eAgency Pty Limited to use or authorise use of the Trade Mark in Australia in relation to the relevant goods specified in the application to register the Trade Mark. The applicant complied with the Notice to Produce on 1 April 2010.

2. The documents filed by the applicant contain a feasibility study called ‘Project W’. This document contains information including market size, manufacturing logistics and alternative branding models which was all considered before the applicant made the decision to apply for its trade mark. However, these documents do not demonstrate that the applicant has used its trade mark on the specified goods and services or that it has licensed anyone else to do so.

Discussion

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

1. Trade mark similar to trade mark that has acquired a reputation in Australia

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 in 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.

1. To establish the ground of opposition under section 60, the opponent must demonstrate:

ØThat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

ØThat because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

1. Unlike sections 44 or 58 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is now for me to determine if the opponent has acquired a reputation in Australia for its NEW trade mark which is sufficient to establish that use of the opposed mark would be likely to deceive or cause confusion.

2. I note that the applicant has not demonstrated use of the opposed trade mark prior to 20 February 2008, the priority date of the application. Indeed, the applicant’s evidence does not demonstrate any use of the opposed mark at all. While Mr Marc Gough has demonstrated that the applicant registered the domain names “newsouthbrewco.com.au” on 12 February 2008 and “newsouthbrewingco.com” on 18 February 2008 in the applicant’s name these actions do not constitute use of the opposed mark (the Gough declaration).

3. I turn now to the evidence put forward by the opponent. The opponent is relying on a number of trade marks, in particular, trade mark registration no. 1046766 for the word NEW which has a priority date of 17 March 2005. The Zabel declaration states that the opponent has used its various NEW trade marks within Australia since 1931. The earliest advertisement provided in the evidence which contains the NEW trade mark is a copy of an advertisement from 1931 (exhibit MZ-1). It is clear from this evidence that the opponent has been using its various NEW trade marks before the priority date of the opposed trade mark.

4. It is now up to the opponent to demonstrate that a reputation existed in Australia before the priority date of the opposed trade mark such that use of the opposed trade mark would be likely to deceive or cause confusion. This is more than merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”[6].

   [6] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

5. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

At 129 Justice Kenny continues:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

1. The opponent’s evidence demonstrates that goods bearing its various NEW trade marks have been sold to Australian consumers since 1931. Most notably, the opponent also managed to obtain registration of trade mark no. 1046766 for the word NEW. The Zabel declaration outlines significant advertising expenditure by Tooheys on its NEW branded beer which has been sold in the Australian marketplace since 1931.

2. Confidential exhibit MZ-11 accompanying the Zabel declaration demonstrates the brand performance of goods bearing it NEW trade marks from August 1994 until August 2004. The brand performance of Tooheys New has made a significant jump and has been steadily growing since the brand consolidation in 1998. As mentioned earlier, the Zabel declaration attests that the introduction of the slogan GIVE THAT MAN A NEW, with its emphasis placed on NEW rather than Tooheys New, coupled with the common Australian practice of shortening names whenever possible, led to a tendency amongst both consumers and the trade to refer to Tooheys New simply as NEW.

3. Exhibits SMEM-2 through to SMEM-12 accompanying the Murray #1 declaration are all statutory declarations from various people with many years experience within the beer/alcohol industry. These declarations all support Ms Zabel’s assertions that Tooheys New has been shortened by consumers and people in the trade to simply NEW. In particular, I note that the declarations all consistently state that consumers order Tooheys New on tap by asking for ‘a schooner of New’ or ‘a middy of New’. In exhibit SMEM-6, the statutory declaration of Mr Colin Guy states that when members of the public call up Tooheys to order beer, they refer to Tooheys New as NEW. Mr Guy also avers that he has seen bottle shop operators advertise the beer by refer simply to the word NEW as in “New Stubbies: $30.00” written on signs outside the shop.

4. The other declarations, to varying degrees, support and reiterate these statements. Taken all together, I am satisfied that the opponent had a significant reputation in Australia for its NEW trade mark before the priority date of the applicant’s trade mark. However, it needs to be determined if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion.

5. For the necessary comparison, I would put the matters as follows. I am not to be overly influenced by the evidence that the disputing parties use their trade marks in ways that, at the moment, may be quite different. I am to consider any of the modes of business that would be within the scope of the registration, should it be granted in the terms presently sought. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[7], based on the proper allowance for the possibility of imperfect recollection of one trade mark at a time when only the other and competing trade mark is present.

   [7] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

6. A consideration of the applicant’s trade mark shows that the trade mark contains a number of elements including the words NEW SOUTH BREWING COMPANY. The trade mark also contains the device element of the silhouette of a man holding up a glass. The words NEW SOUTH are rendered in large font on top of the smaller words BREWING COMPANY. The beginning of the word SOUTH is superimposed on the image and I note that the only word which is not (in any way) confused or superimposed on the image is the word NEW. The applicant has also rendered the word NEW in a different colour to the other words in its trade mark. I believe that all these factors focus and draw the eye to the word NEW which is also the first word in the trade mark.

7. The opponent’s trade mark is the word NEW and this trade mark has also been used in a multitude of different contexts. I note the opponent’s advertising campaign in 2004 and 2005 during the State of Origin Series with the slogan “TOOHEYS PUTS THE NEW IN NSW” (exhibits MZ-23 and MZ-24). The applicant’s trade mark has the words NEW SOUTH as its most prominent and striking elements. Overall, I consider that, given the considerable and growing reputation evidenced by the opponent in its NEW trade mark, a significant number of consumers would at the very least experience a reasonable doubt[8] as to the existence of some sort of connection between the opponent’s trade mark and the applicant’s trade mark.

   [8] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

8. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s goods and services. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

1. Section 55 of the Act provides:

   Decision

   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.

1. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark application 1225485.

Costs

1. 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 applicant eAgency Pty Limited.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

31 August 2010