Louis Vuitton Malletier v WinWorld Australia Pty Ltd

[2013] ATMO 46

TRADE MARKS ACT 1995

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

Re:Opposition by Louis Vuitton Malletier to registration of trade mark application 1451703(33) - AUSTER VUITTON AND DEVICE - filed in the name of WinWorld Australia Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Tim Allen of Corrs Chambers Westgarth Lawyers

Applicant: Not represented at hearing

Decision:

2013 ATMO 46

Section 52 opposition to registration – s60 ground only pursued - s 60 ground of opposition established – registration refused

Background

1. This is an opposition brought by Louis Vuitton Malletier (“the Opponent”) pursuant to s 52 of the TradeMarks Act 1995 (“the Act”) to registration of an application filed in the name of WinWorld Australia Pty Ltd (“the Applicant”) as follows:

Appn No.	145103
Priority Date	3 October 2011
Trade Mark
Goods	Class 33: Beverages containing wine (alcohol content 1.15% or more by volume); beverages containing wine (wine predominating); blended wine; dessert wine; drinks containing wine (wine predominating); dry fortified wine; dry red wine; dry sparkling wines; dry white wine; dry wine; fortified wines; ginger wine; mulled wines; non-sparkling wines; red wine; sparkling fruit wines; sparkling wines; still wines; sweet fortified wine; sweet red wine; sweet sparkling wine; sweet white wine; sweet wine; vintage wines; white wine; wine (“the designated goods”)

1. The Opponent filed and served evidence in support as follows:

• Statutory Declaration by Séverine Gatti, IP Portfolio Manager of the Opponent, made 23 August 2012 with annexures SG-1 to S-21 (“Gatti”).

• Statutory Declaration by Natalia Blecher, Opponent’s attorney, made 23 December 2011, with exhibits NJB-1 to NJB-5 (“Blecher”)

1. I heard the matter as delegate of the Registrar of Trade Marks on 28 February 2013 in Melbourne. Tim Allen of Corrs Chambers Westgarth Lawyers, appeared for the Opponent. The Applicant neither filed submissions nor appeared at the hearing. However, I note that Mr Wang of the Applicant attended the hearing as an observer.

Standard of Proof

1. The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Grounds of Opposition

1. The notice of opposition (“the Notice”) nominated a number of grounds of opposition available under the Act. In his submissions, Mr Allen advised that only the section 60 ground was pressed by the Opponent. For the sake of completeness I find that the grounds other than those relied upon by the Opponent at the hearing have not been established and note that any ground may be relied upon should my decision be appealed to the Court where the matter will be considered de novo.

Discussion - Section 60 ground of opposition

1. Section 60 of the Act provides:

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

60. 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 satisfy section 60 the Opponent must establish:

• That the Opponent’s trade mark(s) had, before the priority date of the Applicant’s trade mark, acquired a reputation in Australia in respect of particular goods/services; and

• Because of the reputation of the Opponent’s trade mark(s), the use of the Applicant’s trade mark would be likely to deceive or cause confusion.

1. The opponent cited 13 Australian trade mark registrations which contain or consist of the words LOUIS VUITTON, for example 313155(18), 363938(3), and 490328(14) and in particular 1227956(18):

1. The registrations cited above date from 1977 and all pre-date the Applicant’s trade mark. Additionally, Gatti describes the worldwide history of LOUIS VUITTON luxury goods from 1854 and the development of a worldwide reputation for excellence that continues to date.

2. It is now for me to determine if the opponent has acquired a reputation in Australia for its trade marks. This is more than merely indicating prior use; the opponent’s trade mark needs to be “associated in the minds of the Australian public”[2].

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

3. In relation to reputation Kenny J 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.

1. At 129, Kenny J 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: …

2. Mr Allen submitted that the Opponent enjoys an exceptionally high level of reputation in its LOUIS VUITTON trade marks in Australia, indeed doing so over 100 years before the priority date (referring to Gatti at [27] to [42]).

3. He referred to evidence that the Opponent’s LOUIS VUITTON trade mark is amongst the most recognized brand in the world (Gatti [17] and [18])  and has been named the world’s most valuable luxury brand for the last seven years in a row (Gatti at [19]). In 2012, the Opponent’s brand equity was assessed at US$25.9 billion (Gatti at [18])

4. Gatti, at [20], states that the LOUIS VUITTON brand has been embraced by “A-List” celebrities both classic and contemporary, including Coco Chanel, Ernest Hemingway, Britney Spears and Madonna.

5. The Opponent has a long history of event sponsorship, including the 2010 FIFA World Cup, the Louis Vuitton – America’s Cup (held in Fremantle WA in 1988) and the Bicentennial Trans-Australia Balloon Flight of the same year (Gatti [38]. More recently the Opponent celebrated its 150^th anniversary with a spectacular dinner party held at Melbourne’s Docklands (Gatti [37]).

6. Mr Allen submitted that the Opponent’s reputation in LOUIS VUITTON extended to VUITTON solus and referred to Gatti [43]. The name VUITTON is widely used by consumers and by the industry press as a means of identifying the Opponent. Examples in the Australian context (including in Australian Vogue, Harper’s Bazaar and Russh) were exhibited in Gatti SG-19.

7. Mr Allen also submitted that in Australia, as with elsewhere, the name VUITTON was exclusively associated with the Opponent. Blecher exhibited the results of various searches that demonstrate that there is no other commercial activity in Australia relating to the name VUITTON other than by the Opponent.

8. Gatti exhibited instances of the Opponent producing luxury items for the carriage and storage of items used in the consumption of alcoholic beverages (SG-7 and SG-8).

9. Evidence was also exhibited demonstrating co-marketing of fashion labels and alcoholic beverages (Gatti [44] to [46], SG-21).

10. Further, it was pointed out that the Opponent’s parent company is LVMH Moët Hennessy Louis Vuitton SA, which is well known for the manufacture and marketing of wines and spirits such as Moët & Chandon and Dom Pérignon.

11. The evidence suggests that a significant number of potential consumers of the designated goods would fall within the same luxury market as that for the Opponent’s goods and that they are therefore likely to be aware of the Opponent’s LOUIS VUITTON brand and mistakenly to connect the Applicant’s AUSTER VUITTON branded goods with the Opponent.

12. Further, the evidence suggests that consumers of the designated goods who do not fall within the luxury goods market would still be likely to be aware of the LOUIS VUITTON brand and also be likely mistakenly to assume that the AUSTER VUITTON branded goods are connected with the Opponent.

13. I am satisfied that it is likely that consumers seeing or hearing the Applicant’s trade mark in use in relation with the designated goods  would be caused to wonder whether there is a connection between the Applicant’s trade mark and the Opponent , or assume – mistakenly – that the designated goods are those of the Opponent or marketed with its authority.

14. Consequently, I am satisfied that this ground of opposition has been established.

Decision

1. Section 55(1) of the Act provides:

   Unless the proceedings are discontinued or dismissed, the Registrar

   must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the

   application was opposed has been established.

   Note: For limitations see section 6.

1. I have found the opposition to be successful on the ground raised pursuant to section 60 of the Act. I accordingly refuse to register trade mark application number 1451703.

Costs

1. In the event that the Opponent prevailed, Mr Allen sought an award of costs in the Opponent’s favour. As the successful party, the Opponent is entitled to its costs and I therefore award costs against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

12 June 2013