Loco Liquor PLv 4 Brothers Brewing PL - [2018] ATMO 119

TRADE MARKS ACT 1995

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

Re:Opposition by Loco Liquor Pty. Ltd. to registration of trade mark application 1738270 (32, 40) – 4 BROTHERS BREWING (LOGO) - filed in the name of 4 Brothers Brewing Pty. Ltd.

Delegate:	M. Cooper
Representation:	Decision on the written record
Decision:	2018 ATMO 119 Opposition under s.52 of the Trade Marks Act 1995: ss 42(b) and 44 considered – whether use of the opposed trade mark likely to deceive or cause confusion- whether use would be contrary to law - no opposition ground established.

Background

This matter concerns an opposition by Loco Liquor Pty. Ltd. (“the Opponent”), under s.52 of the Trade Marks Act 1995 (“the Act”), to registration of the trade mark detailed below in the name of 4 Brothers Brewing Pty. Ltd. (“the Applicant”):
Application Number: 1738270
Trade Mark:
(“the Trade Mark”)
Filing Date: 1 December 2015
Specification of Goods and Services:
Class 32:
Alcohol free beer; Alcoholic beers; Beer; Beer wort; Beer-based cocktails; Bitter beer; Black beer; Dark Beer; De-alcoholised beer; Extracts of hops for making beer; Fruit beers; Ginger beer; Ginger beer (alcoholic); Malt beer; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Non-alcoholic beers; Non-alcoholic beverages (except non-alcoholic beer); Pilsner beer; Root beer
Class 40:
Brewing of beer
The Trade Mark was examined and advertised as accepted for possible registration on 28 April 2016 in the Australian Official Journal of Trade Marks.
On 27 June 2016, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 26 July 2016, a Statement of Grounds and Particulars (“SGP”) was filed which cited opposition grounds under sections 42 and 44 of the Act.
On 24 August 2016 the Applicant filed a Notice of Intention to Defend.
As neither party requested a hearing, IP Australia wrote to the parties on 29 June 2017 advising that a decision would be made on the written record and provided a period of time within which submissions should be filed. On 28 July 2017 the Opponent filed written submissions. The Applicant did not file submissions.
As a delegate of the Registrar, I have proceeded to decide the matter on the filed material.

Evidence

Evidence in Support of the opposition was filed by the Opponent on 29 November 2016. On 1 March 2017, the Applicant filed its Evidence in Answer. On 8 May 2017 the Opponent advised it would not be filing evidence in reply.
The Evidence in Support consisted of a declaration of Mr. David Ong, the Opponent’s co-director made on 29 November 2016 with Attachments DO-1 to DO-16 (“the Ong declaration”).
The Evidence in Answer filed by the Applicant consists of a declaration by its director, Mr. Andrew Cubit, on 23 February 2017 (“the Cubit declaration”) and which includes Exhibits AC1- AC11.

The Opponent’s evidence

In his declaration, Mr. Ong outlined the Opponent’s business as a manufacturer and distributor of a variety of beers and ciders, all of which he said are branded with its trade mark 1202205 and he referred to as “the 2 brothers’ products”. He listed the Opponent’s registered marks as follows:

11. Trade Mark no.	Priority date	Trade Mark	Class/Statement of Goods
1138338	2 Oct 2006	2 BROTHERS BREWERY ; TWO BROTHERS BREWERY	Class 32:Beer
1138341	2 Oct 2006	2 BROTHERS BREWERY ; TWO BROTHERS BREWERY	Class 40: Brewing of beer; brewing services
1202205 (removed- non-renewal - 19 Apr 2018)	3 Oct 2007	Class 32:Beer
1566100	2 July 2013	2 BROTHERS	Class 40:Brewing of beer; Brewing services
1566101	2 July 2013	2 BROTHERS	Class 43:Arranging for the provision of food; Club services for the provision of food and drink; Coffee bar and coffee house services (provision of food and drink); Consultancy, advisory and information services in relation to the provision of food and drink; Country club services (provision of food, drink and temporary accommodation); Internet cafe services (provision of food and drink prepared for consumption); Night club services (provision of food and drink); Social clubs (Provision of food); Theatre restaurants (Provision of food and drink)
1566102	2 July 2013	2 BROTHERS	Class 41:Night club services (Entertainment); Night clubs
1655234	29 Oct 2014	2 BROTHERS	Class 32: Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; bottled non-alcoholic beer; fruit drinks; bottled fruit drinks; bottled fruit juices; fresh fruit juices; bottled orange juice; bottled apple juice; bottled lemon juice; soft drinks; fruit beers; ginger beer; cider (non-alcoholic); fruit cider (non-alcoholic)

Mr. Ong referred variously throughout his declaration to the “2 Brothers mark” and the “2 brothers trade marks” without specifying to which marks he was referring. Given the reliance in the SGP on marks 1138338, 1138341, 1202205 and 1566100, I have attributed his references to those marks, unless otherwise indicated.
Mr. Ong claimed the Opponent’s products are sold at both wholesale and retail level on premises and at a variety of bars, bottle shops and beverage outlets in Victoria, WA, NSW, NT and Queensland. He provided invoice evidence of the Queensland sales and exhibits demonstrating use of the logo and word trade marks (corresponding to registrations 1202205 and 1138388) on bottled beer and kegs since 2008. Mr. Ong also claimed that over the previous 9 years the Opponent’s bulk product has been distributed to tap points at 450 venues and packaged product at 250 venues.
In terms of reputation and product promotion, Mr. Ong attached evidence of the Opponent’s website and other social media presence and history, all of which demonstrated use of the Opponent’s logo trade mark prior to the Trade Mark’s filing date and indicated a substantial number of followers and visits.
Evidence of significant advertising expenditure and sponsorship activities, including use of the Opponent’s word trade marks 1138338 and 1138341 since 2008, was also provided, as was evidence of awards received by the business since 2011. Mr. Ong claimed that the Opponent’s products are popular among “beer enthusiasts and consumers across Australia” and are very well known in Australia. Copies of blogs and product reviews were attached, as was confidential material which indicated significant increases in revenue since 2009.
Mr. Ong claimed that between 2012 and 2016 the Opponent expanded its tap points to 420 Victorian venues. He appended material demonstrating the Opponent’s high level of production and significant wholesale sales over the same period. He also attached the results of a Google search for “Brothers Brewing” and noted the 2 pages of references to the Opponent’s products and only one result for the Applicant.
Given the significant time, effort and money spent by the Opponent in developing the reputation in its marks and products, Mr. Ong claimed that registration of the Trade Mark would deny the Opponent’s marks the protection they deserve. In relation to the “risk of deceit and likely confusion” it was further claimed that the substantial growth of the Opponent’s products and their distribution “essentially nationwide”, together with intended further growth, would bring them into direct conflict with the Trade Mark. He maintained that persons would be likely to wrongly believe that the goods and services sold by reference to the Trade Mark shared a common source with “2 Brothers marks”; that 4 Brothers products are 2 Brothers products; that 4 Brothers Goods and Services are part of the same range of products as 2 Brothers; and that products sold by reference to the Trade Mark are related to or affiliated, or otherwise approved, by the Opponent.

Applicant’s evidence

In his declaration Mr. Cubit, the Applicant’s sole director, stated that he established the Applicant on 19 November 2015. Because the business would also include his 3 brothers, he said he chose the name “4 brothers” which he had searched and found was not used by anyone else. He claimed the Trade Mark, designed by an Israeli brand designer, was chosen after a crowdsourcing project. Mr. Cubit maintained that he was unaware of the Opponent until the filing of the opposition. On 30 November 2015 he registered the domain name <4brothersbrewing.com.au> which went “live” on 25 January 2016, and he also set up social media accounts on Facebook, Twitter, Google+ and YouTube. He claimed use from 25 January 2016. As at 16 February 2017 he claimed to have over 2700 followers on various social media accounts.
Mr. Cubit said he had represented the Applicant at several beer festivals and had dealt with suppliers, customers, and others and spent money on advertising, marketing, signage and merchandise. He said he had planned to launch the Applicant’s beer on 6 August 2016 at the Brewoomba craft beer festival in Toowoomba. The Applicant’s beer tap decals (depicting the Trade Mark) were attached to the declaration as were various news and media stories. When he became aware in late June 2016 of the Opposition, as an act of good faith, he said he initially decided to postpone the official launch however, given the potential time lapse in finalisation of the opposition, he proposed to formally launch the product in March 2017 and had commenced production at the time of making his declaration.
Mr. Cubit listed the Applicant’s products, which he said were sold on a wholesale and retail basis from its brewery in Toowoomba. Acknowledging that the Applicant had only a handful of tap accounts in Southeast Queensland, and currently packaged and distributed its product in kegs, he expressed the intention to expand distribution and outlined plans to package in cans in the near future.
Mr. Cubit’s responses to the opposition grounds are discussed under the relevant ground.

Submissions

In its submissions the Opponent repeated many of the details of its business and use of its marks as outlined in the Ong declaration and attachments.
The specific submissions relating to each opposition ground are discussed further below.
The Opponent sought costs.

Onus and standard of proof

In respect of proceedings under section 52, an Opponent bears the onus of establishing one or more of the grounds of opposition in relation to the goods and services of an opposed trade mark and the standard of proof required is on the balance of probabilities.[1]
[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].
The time at which a ground of opposition must be established is the date of filing of the application for registration.[2] In this case that date is 1 December 2015.
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595].

Consideration and reasons

The Opponent has relied on s.42 and s.44 as its grounds of opposition and has nominated its registered marks 1138838, 1138341, 1202205 and 1566100 as the basis for those grounds, referring to them collectively as “the 2 Brothers Trade Marks” and to the respective goods and services as the “2 Brothers Goods and Services”.[3]
[3] Trade Mark 1655234 was also included in submissions however it was not relied on in the SGP and no amendment of the SGP was sought. Given my findings below, its consideration would not altered my decision.
An issue arises in respect of trade mark 1202205, which IP Australia records indicate was removed from the register in April 2018 for non-renewal. I note that it was registered at the time the Notice of Opposition was filed, and up to and beyond the filing of submissions in July 2017 however at the time of decision it is not.
In this context I note the decision in 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12 (21 February 2017) where this issue and the relevant authorities were discussed. The Hearing Officer concluded as follows at paragraph 30:
Accordingly, in my consideration, subsections 44(1) and 44(2) must be read in conjunction with other provisions of the Act and Regulations (such as sections 63, regulation 4.13, and sections 63 to 65), which look to the operation of subsections 44(1) and 44(2) at the present time and in relation to the situation as it now pertains; As Hearing Officer Lyons more succinctly put it in Omega SA v Robinson, when considering this issue:
The facts are to be examined as they now stand. For the purposes of section 44(1) “a trade mark registered” means a trade mark presently registered. The [ceased] registrations no longer form a basis for objection under that section. In Gallo ... the Full Court’s finding was linked to the submission that Lion Nathan’s use infringed the trade mark whilst it remained registered. That finding has no bearing on the operation of section 44 as a ground for refusal of registration.
On the basis of the above therefore, I find that the Opponent’s registration 1202205 cannot be relied upon for the purposes of the s.44 ground of opposition.

Section 44

Section 44 of the Act provides:
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.

Note 1:       For deceptively similar see section 10.
Note 2:       For similar goods see subsection 14(1).
Note 3:       For priority date see section 12.
Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:       For deceptively similar see section 10.
Note 2:       For similar services see subsection 14(2).
Note 3:       For priority date see section 12.
Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note: For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

Therefore, in order to establish the section 44 ground of opposition under subsections 44(1) and 44(2), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark:

issubstantially identical with or deceptively similar to at least one of the Opponent’s nominated trade marks, and
is in respect of similar goods or closely related services (s.44(1)(a)(i)) and/or similar services or closely related goods (s.44(2)(a)(i)), and
has a priority date not earlier than that of the other trade marks (s.44(1)(b) and s.44(2)(b)).

Submissions

In relation to this ground, in its SGP, the Opponent nominated its trade marks 1138338, 1138341, 1202205 and 1566100 but provided no further particulars. As noted above, trade mark 1202205 has been removed from the register and therefore the Opponent can no longer rely on it in respect of this ground of opposition. Collectively, I refer to these relevant marks as “the Opponent’s marks”.
No submission was made that the Trade Mark is substantially identical to one or more of the Opponent’s marks however it was claimed that the Trade Mark is deceptively similar to each of the Opponent’s marks.
It was submitted that both s.44(1) and (2) were satisfied because there was “a direct overlap” between the Trade Mark’s designated goods and the Opponent’s goods designated in trade mark 1138338[4] and also between the Trade Mark’s designated services and those designated in the Opponent’s trade marks 1138341 and 1566100. It was also asserted that the goods in 1138338 were closely related to the services in the Trade Mark, as were the services specified in class 40 of the Opponent’s marks.
[4]While the Opponent’s marks 1202205 and 1655234 were included in these submissions they have been omitted for the reasons outlined above at paragraphs 29-30 and footnote 3.
Noting the relevant legal tests, it was submitted that a comparison must be made of both the visual and aural features of the marks. The common element and essential feature noted in the Opponent’s marks was asserted to be the words “2 BROTHERS”, while the “dominant and essential feature” of the Trade Mark was claimed to be “4 BROTHERS” or “4 BROTHERS BREWING”. It was said to be reasonable to infer that consumers would refer to the Applicant’s products bearing the the Trade Mark by reference to the name “4 brothers”. On this basis it was claimed to be “clear” that the Trade Mark is deceptively similar to the Opponent’s marks. The Opponent also claimed the marks were aurally and conceptually very similar, all sharing the features of a number followed by the word “brothers”. Further, the idea conveyed, that of “a brewery operated by a group of brothers”, was identical.
The features of the device component of the Trade Mark were said to be relevant only for the purposes of visual comparison and that the silhouette of 4 men with glasses and a beer tap were “not unusual or striking” but consistent with the idea of the mark. It was asserted that an aural comparison between the marks was “particularly important” in the context of the circumstances in which the products are sold. Reference was made to the decision in Woodland[5] where the hearing officer considered that, when ordering a beer, it is the words within a trade mark that “are of primary importance in assessing whether the trade marks are similar or not.”
[5] Bradley John Woodland v Atcheson Holdings Pty Ltd [1999] ATMO 94; (1999) 47 IPR 365 [371].

In this context, it was claimed that “there is a significant risk that consumers, having an imperfect recollection of the 2 Brothers Marks and upon seeing the Applicant’s mark, will wonder or be left in doubt about whether the products or services in question are related or originate from the same source.”
Referring to the Cubit declaration, it was submitted that Mr. Cubit had conducted an “overly technical analysis” of the linguistic differences between the marks which was “inappropriate for the purposes of assessing deceptive similarity” because a finding of deceptive similarity requires an assessment based on imperfect recollection rather than a side by side comparison. It was claimed that the actual circumstances of use as outlined in Cubit declaration are irrelevant for s.44 purposes because consideration “must be directed at any normal or fair use to which the 2 BROTHERS marks and the Application may be put”. The other marks cited by Mr. Cubit were were said to be irrelevant.
The Applicant did not provide a submission and the Cubit declaration does not specifically mention the s.44 ground, addressing the Opponent’s claims more generally. Relevantly to s.44, Mr. Cubit’s evidence was that the Trade Mark is visually substantially different to any trade marks registered by Opponent. He noted that aurally, the Trade Mark is five syllables while trade marks 1138338 and 1138341 contain six. Acknowledging that the same words “brother” and “brew” occur in the Opponent’s marks as the Trade Mark, he observed that the appearance of these words is different and the sound of the remaining syllables is sufficiently strong, along with the different numeral at beginning of the Trade Mark and the different connotation of last word, that ordinary purchasers would not be caused to wonder if there was a common trade source.
In addressing the likelihood of anyone being misled or deceived, Mr. Cubit denied that the Trade Mark so nearly resembled those of the Opponent that it would likely deceive or cause confusion. He referred to the Federal Court decision in Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd. (“Stone & Wood”)[6]. That decision dealt with competing claims by craft beer makers over the use of the words “Pacific Ale” and “Pacific” which were claimed by Stone & Wood to constitute trade mark infringement, passing off and breaches of s. 18 and s.29 of the Australian Consumer Law. As noted by Mr. Cubit, Stone & Wood’s claims in this regard were rejected by the court in part on the basis that the dominant feature on the applicant’s product was its Stone & Wood logo, not the trade mark. The disputed trade mark, the name of a product, occupied “a subsidiary position” being written in smaller print underneath the logo. Mr. Cubit noted similarly that, in the exhibits of the Opponent’s products, the appearance of its trade mark was secondary in nature.[7] He exhibited the Applicant’s tap decal range in which the Trade Mark is prominent and observed that the getup, colours and design were “remarkably different” to that of the Opponent’s marks so that “any likelihood of a consumer being misled or deceived is non-existent.” He maintained that the Trade Mark did not so nearly resemble those of the Opponent that it was likely to deceive or confuse. He exhibited several other registered trade marks which also incorporated the word “brothers” and claimed that this demonstrated that the Opponent does not have an exclusive right over the word “brother” in class 32 or 40.
[6] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2016] FCA 820 ; upheld on appeal [2018] FCAFC 29.
[7] See Exhibits AC-8 and DO-9.

Consideration

The Opponent’s marks have an earlier priority date than the Trade Mark, therefore s.44(1)(b) and s.44(2)(b) are satisfied.[8]
[8] For reasons given above, at this point I am only considering marks 1138338, 1138341 and 1566100.
In relation to the similarity between the designated goods and services, section 14 of the Act provides as follows:

Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.

(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.

In relation to the Opponent’s trade mark 1138338, its designated goods are similar the Trade Mark’s designated goods. The Opponent’s marks 1138341 and 1566100 cover the same services as the Trade Mark, that is, the brewing of beer. It follows that the Opponent’s marks are in respect of similar goods and services as the Trade Mark.
It therefore remains to be determined whether the Trade Mark and any of the Opponent’s marks are substantially identical or deceptively similar.

Substantially identical

As noted above, the Opponent has not submitted that the respective trade marks are substantially identical. For the sake of completeness however I have given this limb consideration.
In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9]
[9] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66 [13].
The issue of substantial identity was more recently considered by the Full Federal Court decision Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (“Pham Global”)[10]. Referring to ‘dominant cognitive cues’ and ‘essential elements’ of trade marks in the prior Accor decision[11], the court said:
There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in Shell at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.[12]
[10] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’) [2017] FCAFC 83
[11] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) [2017] FCAFC 56.
[12] Pham Global [51].
The Trade Mark is a composite mark, the dominant cognitive cues of which are the silhouettes of four men with raised glasses and the words “4 BROTHERS” on a scroll or banner across the middle of the mark. The words “brewing”, the grain ears and the tap are less significant cues. The Opponent’s marks are word marks, simply “2 BROTHERS”, “2 BROTHERS BREWERY” or “TWO BROTHERS BREWERY”. Self-evidently, on a side by side comparison, the Trade Mark’s essential features, striking the eye, are significantly different to the Opponent’s word marks. Consequently I consider that a total impression of dissimilarity between the marks emerges such that it rebuts any suggestion that these marks are substantially identical. I am therefore not satisfied that the Trade Mark is substantially identical to any of the Opponent’s marks.

Deceptive similarity

Section 10 of the Act defines deceptive similarity as follows:
Section 10 - Definition of deceptively similar
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.
In assessing trade marks for deceptive similarity, Windeyer J said in Shell at [13]:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.
Therefore a determination of ‘deceptive similarity’requires an assessment of the likelihood of deception or confusion arising from an imperfect recollection or impression of the respective marks by potential consumers of the goods and/or services. This is to be assessed by reference to the standards of ordinary people “who should not be credited with high perception or habitual caution” and in the context of the business and the way in which the particular class/es of goods are sold or services provided.[13] A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.[14]
[13] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641 at 658.
[14] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020.
The visual effect or impression of the Opponent’s marks is that of one numeral and one or two words, or three words. While the words BREWING/BREWERY are not particularly memorable, the relevant differences between the parties’ marks are that

the Trade Mark contains a device whereas the Opponent’s trade marks do not, and
the Trade Mark identifies the number of brothers as 4 whereas the Opponent’s trade marks identify 2 ( or “two”).

In relation to the device, I consider it visually striking. In particular, the image of four silhouetted men is prominent and is equal in visual impact to “4 BROTHERS” in the scroll/banner. To the extent there are common elements between the Trade Mark and the Opponent’s marks, insofar as both use the word “brothers”, the visual representation of the word in the Trade Mark is different, being primarily an image of four silhouetted men overlaid by a scroll or banner containing the words “4 BROTHERS”, with a beer tap and ears of grain underneath.
While each of the Opponent’s marks and the Trade Mark evoke the same idea, that is, of a number of brothers brewing beer, I consider this conceptual similarity alone is insufficient to establish deceptive similarity, given the significant visual and aural differences between the marks when considered as a whole.[15]
[15] Telstra Corporation Ltd. v Phone Directories Co. Pty. Ltd. [2015] FCAFC 156 [210-211].
In addition, as was said in Cooper Engineering, citing with approval Lord Parker’s judgment in re Pianotist[16] :
The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods.[17]
[16] In the Matter of an Application by the Pianotist Company Ltd. for the Registration of a Trade Mark (1906) 23 RPC 774.
[17] Cooper Engineering Co. Pty. Ltd. V Sigmund Pumps Ltd. (“Cooper Engineering”) (1952) 86 CLR 536 [539].
In relation to the nature and kind of customers, they would be generally identifiable as beer drinkers and/or purchasers. I have had regard to the Opponent’s reference to the observations made in the Woodland decision as follows:
Ordering a beer over a bar or in a bottle shop where one does not alight from the car, the beer is invariably requested by reference to the word or words that form part of a trade mark- not by reference to the device components that may be part of the trade mark. Thus in relation to goods or services ordered in this manner, the words within a trade mark are of primary importance in assessing whether trade marks are similar or not.[18]
[18] Re Application by Woodland (1999) 47 IPR 365 [371].
I accept this may be correct in the stated circumstance, however the conclusion drawn as to the primary importance of the words of the trade mark should be confined to that circumstance. On an assessment of the notional use of the marks there is nothing in the evidence that indicates or demonstrates the products will only be ordered verbally. On the contrary, the Applicant explicitly stated its intention to package its product for retail sale and the Opponent specifically acknowledged the parties sell or are likely to sell their products at wholesale and retail levels. Given this, I note that beer is also purchased without any verbal request, for example, directly by a customer choosing it from display in a bottle shop or liquor store, or online. In such circumstances, I consider the visual impact of the trade mark is at least equally important to the aural effect.
I also note in Woodland that deceptive similarity was established not solely on aural similarity but because both the marks contained identical words and both contained the same images. As was found:
Both the cited trade mark and the applicant's trade mark contain the words BLUE HEELER. The blue heeler is, of course, well known and recollected by the Australian public as a breed of cattle dog. Within both trade marks in question, there is a picture of a cattle dog which can only go to reinforce this recollection. Also in common between the trade marks is the pictorial element of a glass of beer.
It is most likely, therefore, that the trade marks, in the normal course of the trade within which they will notionally be used, would be frequently used orally and be virtually indistinguishable from each other. The visual elements in common go to reinforcing the similarity of the trade marks. Thus, while the trade marks are not substantially identical, they must be viewed as being deceptively similar. [19]
[19] Op. cit. [371-2].
The significant aural and visual similarities present in Woodland are not present in this application. The words are different in part and there is a complete absence of any device or image in the Opponent’s relevant trade marks.
In relation to aural similarity, again, while the same word is used in the second part of the trade marks, that is, “brothers”, and there is little difference between “brewery” and “brewing”, the pronunciation of the first words “two” and “four” is distinctly different. I note the view that the first syllable should generally be given the most weight when comparing marks: London Lubricants (1920) Ltd's Appn, (1925) 42 RPC 264, and that in revisiting the tests for deceptive similarity, Finn J said, in C A Henschke & Co v Rosemount Estates Pty Ltd:
[P]articular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks... save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.[20]
[20] C A Henschke & Co v Rosemount Estates Pty Ltd. [1999] FCA 1561 [35].
In the circumstances of this application there is no warrant or reason to consider the emphasis should fall on other parts of the marks.
Conversely, in relation to the trade, the Applicant has referred to the state of the Register and appended several examples from the Register in which the word “brothers” appears in trade marks in relation to the production of beer and wine and associated services, indicating that the Opponent does not have a monopoly on the use of the word “brothers” in a trade mark for its goods and services and suggesting that it is common to the trade.[21]
[21] Exhibits AC-10 and AC-11.
I note, for example, in relation to classes 32 and 33, the following trade marks are currently registered: “two brothers”, “3 BROTHERS”, “THREE BROTHERS”, “THREE BROTHERS UNITED”, FIVE BROTHERS and 12 BROTHERS brands. In particular, the use of the word “brothers” in relation to class 32 and 33 alcoholic beverages is prominent –TOOHEY BROTHERS, TOOHEYS BROTHERS, BROTHERS, BAND OF BROTHERS, BROWN BROTHERS, BATCH BROTHERS, FORBES BROTHERS, GOOD BROTHER, KAISER BROTHERS BREWERY, LIQUOR BROTHERS, MOP BROTHERS, MCGUIGAN BROTHERS, MOSS BROTHERS and more.[22]
[22] While class 33 covers “wine” , in E&J Gallo Winery v Lion Nathan Australia Pty. Ltd. [2009] FCAFC 27 [72] it was accepted that wine and beer were “goods of the same description.”
In this context I note the comments of the court in Beck Koller & Co Ltd.’s Application in which the court observed:
On the other hand, if the registered marks found were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant, who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant’s mark with the registered mark, using the principles laid down in the “Pianotist” case...the presence of marks on the Register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account.[23]
[23] Beck Koller & Co. Ltd.’s Application (1947) 64 RPC 76 [83].
And similarly, in the case of Harrods Ltd’s Application the Comptroller-General stated:
Now it is a well-recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective trade marks and to distinguish between them by those other features. This principle, however, requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or will be used.[24]
[24] (1935) 52 RPC 65 [70].
While there is no evidence before me as to how many of the above marks are in use, given the currency of their registration, I consider it reasonable to assume a number are in use. On this basis I consider it also reasonable to infer that the use of the word “brothers”, or “brothers” and, on occasion, a number, is a relatively “common characteristic” that is “well recognised in marks in use in the particular trade.” In such a context, the Opponent clearly does not have a monopoly on the use or number of “brothers” for a trade mark in relation to the relevant goods and services. Furthermore, I consider it also reasonable to assume that consumers are accustomed to differentiating their product choices by reference to the names of “brothers”, or the number of brothers, and as such have an awareness of the brands they prefer and the use of the word/s in association with the sale of alcoholic beverages including beer.
Therefore, even taking into account an imperfect recollection, given the above, and the distinctive visual features of the Trade Mark, which are absent from the relevant Opponent’s marks, and the clearly different aural effect of the first words/syllables “2” and “4”, I consider that any likelihood of confusion or deception between the Trade Mark and the Opponent’s marks is, at best, a mere possibility.
Overall, on the basis of the striking visual differences between the Trade Mark and the Opponent’s marks, the aural differences, and the context and character of the likely purchasers of the goods and services, I do not consider that the Trade Mark “so nearly” resembles any of the Opponent’s marks in any material way such that it would be “likely to deceive or cause confusion” among “persons of ordinary intelligence and memory”, even allowing for imperfect recollection.

In coming to this conclusion, I have been cognisant of the presumption of registrability which is to be applied in favour of the Applicant.[25]
[25] See Pfizer Products Inc v Karam (2006) 237 ALR 787 ; 70 IPR 599 ; [2006] FCA 1663 at [8].
For the above reasons I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s marks as listed above within the meaning of s.44 (1) and (2).
It follows that the Opponent has failed to establish this ground of opposition under s.44.

Section 42

Section 42 of the Act provides:
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.

In relation to this ground, in its SGP, the Opponent relied on its trade marks 1138338, 1202205, 1138341 and 1566100 and asserted that use of the Trade Mark “would have amounted to passing off, and misleading or deceptive conduct in breach of s.18 of the Australian Consumer Law. In the premises, that use is contrary to law.” The Opponent claimed that the Trade Mark is similar to each of the “2 Brothers Trade Marks” and that the notional uses of the Trade Mark include “in connection” with the 2 Brothers Goods and Services. It was further claimed that use of the Trade Mark is likely to deceive or cause confusion[26] because a person seeing the Trade Mark is likely to wrongly believe that the 4 Brothers Goods and Services share a common source with the 2 Brothers Goods and Services; that they are in fact 2 Brothers Goods and Services; that they are part of the same product range of 2 Brothers Goods and Services; that they or the Applicant are related or affiliated or otherwise approved by the supplier of 2 Brothers Goods and Services.
[26] SGP paragraph 7 in relation to s.42(b).
In its submissions the Opponent claimed that use of the Trade Mark contravened sections 18 and 29(1)(g) of the Australian Consumer Law (“ACL”) and that “such use amounts to passing off at common law.” The Opponent claimed to have developed a substantial reputation in Australia in relation to the “2 BROTHERS Marks” and in that name generally in relation to beer and cider and associated services in retailing and wholesale of these products.
Reiterating its s.44 submissions, the Opponent contended that consumers are likely to be misled into the belief that the goods sold or offered for sale by the Applicant under the Trade Mark are 2 BROTHERS products or are sponsored by or affiliated with the 2 BROTHERS Business and that “the services offered by the Applicant emanate from or are somehow associated with the 2 BROTHERS Business”. In the circumstances, it was claimed that the damage required to make out a passing off claim might be “readily inferred.” In light of this it was asserted that use of the Trade Mark would contravene ss18 and 29(1)(g) of the ACL and would constitute passing off.
The allegation of passing off and of breaching s.18 and s.29 of the ACL is addressed (and rejected) in the Cubit declaration. Mr. Cubit notes that more than mere confusion or being caused to wonder is necessary to establish passing off or a breach of ss 18 or 29 of the ACL. It requires a likelihood that Australian consumers would be misled or deceived. Mr. Cubit maintained the Applicant had made no misrepresentations and the look and feel of trade marks is substantially different.

Consideration

As was noted by Rangiah J in Primary Health Care Limited v Commonwealth of Australia, with whom, in this regard, Katzmann J and Greenwood J agreed:
Section 42(b)of the TMA requires that the use of atrade mark “would be” contrary to law. It is not enough for a party opposing registration to show that s 18 of the ACL or s 52 of the TPA might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of thetrade mark.[27]
[27] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411].
Therefore the onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law, on the balance of probabilities.
The relevant provisions of ss 18 and 29 of the Australian Consumer Law (“the ACL”), in Schedule 2 to the Competition and Consumer Act 2010 (Cth) provide as follows:
Section 18: 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.

Section 29: False or misleading representations about goods or services
(1) 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 by any means of the supply or use of goods or services:
...
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits.

Sections 18 and 29(1)(g) of the ACL concern consideration as to whether the relevant consumers would be misled or deceived as to the true origin of the Applicant’s goods and services or that they had some connection with the Opponent. A person is said to engage in misleading conduct under s.18 (formerly s.52 of the Trade Practices Act 1974 (Cth)) if he or she (or it) engages in conduct that might lead a reasonable person in the position of the recipient of the information to be led into error. Conduct is not misleading or deceptive simply because it may cause the recipient(s) to be confused or to wonder about something.[28] The Court also noted in Puxu that “conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”[29] And further
Conduct does not breach s 52(1) merely because members of the public would be caused to wonder whether it might not be the case that two products come from the same source. . . Under s 52 the onus is on the plaintiff to show that the conduct is likely to mislead or deceive.[30]
[28] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (“Puxu”) (1982) 149 CLR 191 [199] (Gibbs CJ), 209 (Mason J); Campomar v Nike International (2000) 202 CLR 45 [87]; Singtel Optus v Telstra [2004] FCA 859 [76].
[29] Puxu [210] (Mason J).
[30] Ibid.
The Opponent has relied on its reputation, along with the similarities between the Trade Mark and the Opponent’s marks, and the manner and markets in which the products are bought and would be sold, to contend that the use of the Trade Mark is likely to mislead consumers into the belief that the goods sold or offered for sale are the 2 BROTHERS products or sponsored by or affiliated with the 2 BROTHERS business or that the services “emanate” from their business. I note my findings above that, notwithstanding the prior registration of Opponent’s marks and the similarity in the goods and services, use of the Trade Mark would not cause a person to be confused or to wonder as to the source of the goods or services. In such a context, where the Opponent has not even established a likelihood of confusion among relevant consumers, I am not satisfied, in the absence of any further persuasive evidence in this regard, that it has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s.18 of the ACL.
Furthermore, specifically in relation to s.29(1)(g), I note that there is no evidence before me that the Applicant has directly represented that its goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have.
For the above reasons, I am not satisfied that the Opponent has established that use of the Trade Mark would be contrary to law in the sense that the Applicant would be regarded as having engaged in misleading or deceptive conduct, or as having falsely represented its goods or services, as required by ss.18 or 29 of the ACL.
In relation to passing off, the Opponent made similar claims to those it made in respect of ss.18 and 29 of the ACL and asserted that the damage element required for a successful passing off action can be inferred.
The relationship between passing off and (then) s.52 of the TPA was addressed by Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation where he said:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[31]
[31] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 [39]; (1989) 16 IPR 431.
That is, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount topassing off. While I accept that the Opponent has a significant reputation in its marks, there is no persuasive evidence before me that indicates or even suggests a relevant misrepresentation by the Opponent.
The Opponent has not established that use of the Trade Mark would be likely to be contrary to law in the sense that it constituted passing off.
Accordingly the s 42(b) ground of opposition has not been established.

Decision

Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, 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.
The Opponent has failed to establish any of the grounds of opposition it nominated in its SGP.
This Application 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 Opponent has sought its costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

M. Cooper
Hearing Officer
Oppositions and Hearings
31 July 2018