Maison Villevert v Begin Distilling Limited

[2024] ATMO 1

TRADE MARKS ACT 1995

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

Re:Opposition by Maison Villevert to registration of trade mark application 2085972 (33) JUNO – in the name of Begin Distilling Limited

Delegate:

Nicholas Smith

Representation:

Opponent: Colison & Co

Applicant: The Loft Legal Pty Ltd

Decision:

2024 ATMO 1

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 44 considered – not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Maison Villevert (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Begin Distilling Limited (‘Applicant’): 

Application Number:	2085972
Filing Date[1]:	5 May 2020
Goods:	Class 33: Gin (‘Applicant’s Goods’)
Trade Mark:	JUNO[2]	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

[2] The Trade Mark is subject to an endorsement under paragraph 44(3)(b) in respect to a mark unrelated to the present proceeding that was cited during examination.  That cited mark’s owner subsequently provided consent to the registration of the Trade Mark.

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 22 January 2021 (‘SGP’).  The SGP raised the s 44 ground of opposition.  The Applicant filed a Notice of Intention to Defend on 3 February 2021. 

Evidence

1. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Jean-Sébastien Robicquet, CEO of Opponent (‘Robicquet declaration’)	2 May 2021	JSR1 to JSR3
Evidence in answer
David Parry James, Director of the Applicant (‘James declaration’)	2 August 2021	DPJ-1 to DPJ-12
Evidence in reply
Anthony J. Norris, attorney with Collison & Co (‘Norris declaration’)	5 October 2021	AJN1 to AJN9

5.  Once the time allowed for filing evidence had ended (and after the expiry of a cooling off period for the parties to negotiate settlement in this matter) the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 11 August 2022 the Opponent requested a hearing by written submissions.  The matter was set down for a hearing on 26 October 2023 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 21 September 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 12 October 2023 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 19 October 2023 (‘Applicant’s Submissions’). 

1. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

2. The Opponent is a French company that is involved in the production and distribution of spirits.  

3. The Opponent is the owner of the trade mark application listed below (‘Opponent’s Trade Mark’).  The goods and services for which the Opponent’s Trade Mark is sought to be registered are collectively referred to as the ‘Opponent’s Goods and Services’.  The Opponent provides evidence of ownership of additional trade marks however these trade marks, not being particularised in the SGP, have no relevance to the present proceeding.

Number	Trade Mark	Priority Date	Goods or Services
2068439 (IR 1513611)	1 Jul 2019	Class 33: Alcoholic beverages, liqueurs Class 35: Services for the sale of alcoholic beverages, services for the sale of liqueurs

1. The Robicquet declaration provides details of the Opponent’s Trade Mark.  It is not necessary to summarise the material in the Norris declaration as it is responsive to material in the James declaration which I will discuss below.

   The Applicant

2. The Applicant is a New Zealand company involved in the production of gin under the Trade Mark. 

3. The James declaration contains evidence and material that is said to show that that the Applicant has used the Trade Mark in Australia since 2017, predating the priority date of the Opponent’s Trade Mark.  The Norris declaration is in response to that declaration and contains evidence said to show use predating the date of first use of the Trade Mark.  Such evidence, on both sides, could be relevant to the application of s 44(3) or s 44(4).  However, as I discuss later in the decision, I am not satisfied that the provisions of s 44(1) are satisfied, that is that the Trade Mark is substantively identical or deceptively similar to the Opponent’s Trade Mark and hence, in the interest of brevity, it is unnecessary to summarise the material in the James or Norris declarations in any significant way as they are irrelevant to the outcome in this case.    

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above, in the SGP the Opponent nominated the s 44 ground of opposition.  To successfully oppose the application the Opponent needs to establish this ground.  

   13.     The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined is the relevant date.[5]

   Discussion

   Section 44

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [4] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

5. The relevant provisions of s 44 are reproduced below:

   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)it 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).

   (2)…

   (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.

   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.

6. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

7. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.  

8. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark[6].  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark and is sought to be registered for alcoholic beverages, a category that includes the Applicant’s Goods.    The first and third requirements are satisfied.

   Substantially identical and/or deceptively similar

   [6] The Opponent in its submissions also sought to rely on TM No 1548786 for a composite mark containing the elements J JUNE.  This mark was not particularized and as such I cannot have regard to it.  In any event as it is less similar to the Trade Mark than the Opponent’s Trade Mark, even if I had considered it I would have reached the same finding under s 44(1) that I reach in respect of the Opponent’s Trade Mark.

9. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Marks.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 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.[7]

   [7] [1963] HCA 66, [12].

10. The Trade Mark and the Opponent’s Trade Mark are set out below:

    JUNO                   

11. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Opponent’s Trade Mark and the Trade Mark. I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

12. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    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 [trade mark].[8]

    [8] Ibid [13].

13. Justice Jacobson in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[9] at [49]; Australian Woollen Mills[10] at 658.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[11] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[12] at 594 – 595.

    Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[13]

    [9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

    [10] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

    [11] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

    [12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

    [13] [2012] FCA 1022, [37]-[46].

14. In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following[14]:

    In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[15]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[16], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[17]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[18]

    [14] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [15] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

    [16] Act, s 68.

    [17] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

    [18] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

15. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[19]

    [19] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

16. The Opponent directed me to a large number of cases decided by the Registrar that are said to be similar or analogous to the present case.  I am not assisted by the provision of cases which involves a comparison of marks that, as submitted by the Applicant, are materially different (both in the nature of the marks and the good/services for which they are registered) to the marks before me in the present case.  Each case must be decided on the merits and in applying the test under s 44 I am not assisted by knowing that (for example) the Registrar found s 44 satisfied when comparing EMEJI (sought to be registered for computer software and related services) and EMOJI or that the Registrar was not satisfied that GARDEN was deceptively similar to GARDENIA.  

17. In the present case, while both marks have similarities in that they consist of words beginning with the letters ‘jun’ I am not satisfied that they are deceptively similar.  The Opponent’s Trade Mark is a single-syllable word that has a specific meaning (being the month) and is also a reasonably common woman’s name.  The Trade Mark is a two-syllable word, with equal emphasis placed on the ‘ju’ and the ‘no’ syllables, does not have an ordinary meaning in common usage (its most common use being to refer to the ancient Roman goddess or the 2007 movie) and is a relatively uncommon woman’s name.  In essence, while there are obvious visual similarities between the marks, they are aurally dissimilar, given the strong emphasis on the ‘no’ syllable and they are conceptually dissimilar.  In the context of the goods for which the Trade Mark and the Opponent’s Trade Mark are sought to be registered and considering the surrounding circumstances I am not satisfied that, even given imperfect recollection, there is a real tangible danger of deception or confusion.   

1. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Decision and Costs

2. The Opponent has failed to establish the ground of opposition it nominated in the SGP.  Trade mark application number 2085972 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

3. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   2 January 2024