Margaritaville Enterprises, LLC v Loom Wine Group Pty Ltd

[2015] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Margaritaville Enterprises, LLC to registration of trade mark application 1526386 (33, 43) - fiveoclocksomewhere - in the name of Loom Wine Group Pty Ltd

Delegate:	Michael Kirov
Representation:	Opponent: Khajaque Kortian of Spruson & Ferguson Applicant: Gabriella Rubagotti of Counsel, instructed by Louise Craven of Andreyev Lawyers
Decision:	2015 ATMO 91 Section 52 opposition: ss 42(b) and 60 considered –– use of opposed trade mark not likely to mislead, deceive or cause confusion –– registration to proceed

Background

1. This is an opposition brought by Margaritaville Enterprises, LLC (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Loom Wine Group Pty Ltd (“the Applicant”):

Application Number:             1526386

Trade Mark:  fiveoclocksomewhere       (“the Opposed Mark”)

Filing Date:       19 November 2012

Goods and Services:              Class 33: Wine

Class 43: Wine club services (the provision of drink)

(“the Claimed Goods and Services”)

1. The Opponent filed a Notice of Intention to Oppose on 28 June 2013, followed by a Statement of Grounds and Particulars (“SGP”) on 29 July 2013 raising grounds of opposition corresponding to ss 42(b), 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 18 October 2013.

2. For their evidence the parties rely on the following declarations:

Evidence in Support

▪ John Cohlan, made on 24 January 2014, with Exhibits 1 to 8 (“Cohlan”)
▪ Khajaque Kortian, made on 29 January 2014, with Exhibit KK-1 (“Kortian 1”)

Evidence in Answer

▪ Steven Grimley made on 3 June 2014, with Annexures A to F (“Grimley”)

Evidence in Reply

▪ Khajaque Kortian, made on 1 September 2014, with Annexure KK-1 (“Kortian 2”)

Further Evidence in Answer

1. In addition to the abovementioned evidence, the Applicant filed a short declaration on 29 May 2015 made that day by its attorney, Louise May Craven, with Annexures A to C (“Craven”).  At the same time the Applicant’s attorneys made a formal request that the Registrar consider this declaration pursuant to her power under Regulation 21.19 of the Trade Marks Regulations 1995 (“the Regulations”) when deciding the opposition.  As explained below, I have agreed to this request and accordingly Craven also forms part of the Applicant’s evidence in the proceedings.

2. After receiving and reading Craven on 29 May 2015, I informed the parties’ representatives by email that day that I would reserve my decision as to its admissibility until I had heard from the Opponent’s attorneys on the issue.  Those attorneys responded on 5 June confirming the Opponent did not object, “provided an appropriate amount of time is allowed for the Opponent to provide evidence-in-answer and to address matters arising from that evidence.”  At the hearing itself, which took place on 16 June 2015, I confirmed my intention to take Craven into account when deciding the matter and I allowed the Opponent one month, until 16 July 2015, to file evidence addressing the sole issue raised in the declaration (which concerned the actual date the Opponent first opened a restaurant in Sydney).  In the event, the Opponent did not file any additional evidence.

The Parties

1. I will refer to the parties’ evidence as necessary below, but by way of background here set out those parts of the SGP which touch on the Opponent and explain the claimed basis for its s 42(b) and s 60 opposition grounds:

   1.1 The Opponent is the owner of the common law trade mark IT’S FIVE O’CLOCK SOMEWHERE.  In June 2003 the principal of the Opponent, internationally acclaimed entertainer, Jimmy Buffett and Alan Jackson released an international hit single titled “It’s Five O’clock Somewhere”. The song was number 1 on the Billboard Hot Country Songs Chart and received a Country Music Association Award, receiving wide international coverage, including Australia.  The song and mark IT’S FIVE O’CLOCK SOMEWHERE has become associated with the Opponent and Jimmy Buffett continues to perform IT’S FIVE O’CLOCK SOMEWHERE at many concerts.

   1.2 Based on the song’s international success, the Opponent, which creates Jimmy Buffett­themed merchandise, launched in 2004 IT’S FIVE O’CLOCK SOMEWHERE-branded goods and services including clothing and restaurant and bar services which have been offered throughout the United States.

   1.3 As a result, the Opponent has enjoyed substantial commercial success and has developed a valuable reputation and goodwill in its IT’S FIVE O’CLOCK SOMEWHERE brand in the United States and in other countries around the world, including Australia.

   1.4 As a result of the above, the Opponent has acquired a significant reputation in the IT’S FIVE O’CLOCK SOMEWHERE trade mark and because of this reputation, the use of [the Opposed Mark] will be likely to deceive or cause confusion.

   2. Given the Opponent’s substantial reputation in its IT’S FIVE O’CLOCK SOMEWHERE trade mark, the Applicant’s use of the [Opposed Mark] would constitute passing off and/or misleading and deceptive conduct in breach of the Australian Consumer Law.

2. As for the Applicant, Steven Grimley, one of its Directors, says in his declaration that:

   2. The Applicant is a wine maker and wine service provider in the McLaren Vale region of South Australia.

   …

   4. In about mid-2011 I conceived the idea of a wine club of limited-run and small release wines.  The wine club would be a boutique, niche off-shoot business from the core business of the Applicant which would be a vehicle for the small batch wines that the Applicant makes itself.

   5. After undertaking some initial market research among suppliers, clients and colleagues, I decided to name the wine club “five o’clock somewhere”.  I knew of the term “five o’clock somewhere” because it is a popular and widely-used colloquialism in Australia for the act of drinking alcohol.  On a personal level, my family have been saying “it's 5 o’clock somewhere” as an excuse to sit back and have a glass of wine for as long as I can remember; even my nan used to say it.  My family’s use of this phrase certainly pre-dates 2003 when the song “It's Five O’Clock Somewhere” was released by Alan Jackson, as discussed below.

   6. The name “five o’clock somewhere” appeared readily available in that I could not identify any other businesses using this name, the name was not registered as a trade mark in Australia, and the name had not been registered as a web domain.

3. I heard the matter as a delegate of the Registrar of Trade Marks on 16 June 2015 in Sydney.  Khajaque Kortian of Spruson & Ferguson Intellectual Property appeared for the Opponent.  Gabriella Rubagotti of Counsel, instructed by Louise Craven of Andreyev Lawyers, appeared for the Applicant.  The oral submissions of both advocates were supplemented by written submissions exchanged prior to the hearing in accordance with my directions.

Grounds of Opposition, Onus and Standard of Proof

1. As mentioned, the SGP lists grounds of opposition corresponding to ss 42(b), 60 and 62A of the Act, although shortly before the hearing Mr Kortian confirmed that the Opponent was no longer pursuing the s 62A ground. The two remaining grounds are discussed below, where I have found it convenient to deal with the s 60 ground first.

2. To succeed, the Opponent bears the onus of establishing at least one of the two grounds pressed.  I proceed on the basis that the standard of proof required is the ordinary civil standard based on the balance of probabilities[1] and that, as indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd,[2] the rights of the parties are to be determined as at the date of application, being 19 November 2012 (“the Relevant Date”).

Discussion

[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].

[2] (1954) 91 CLR 592 at 595.

Section 60

1. Particulars of the Opponent’s s 60 ground as contained in the SGP were set out at paragraph 6 above.

2. Section 60 of the Act itself is reproduced below:

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.

Note:  For priority date see section 12.

1. To rely successfully on s 60 the Opponent must be able, as a threshold issue, to nominate a trade mark which had acquired a “reputation” in Australia as at the Relevant Date. In this case the Opponent claims the words “It’s Five O’Clock Somewhere” as a common law trade mark and nominates this mark as having acquired the requisite reputation. In some renderings, as the Opponent’s evidence shows, the claimed trade mark appears with the numeral “5” in place of the word “five” and for convenience I confirm I will refer hereafter to both of these substantially identical variants simply as “the s 60 Mark”.

2. What needs to be considered is the fair notional use the Applicant might make of the Opposed Mark in relation to the Claimed Goods and Services, namely “Wine” in Class 33 and “Wine club services (the provision of drink)” in Class 43. The issue is whether such use would be likely to deceive or cause confusion amongst, as it is often put, a “significant” or “substantial” number of potential consumers of the Claimed Goods and Services because of the reputation of the s 60 Mark as at the Relevant Date. On the face of it most of the adult population of Australia might in principle be potential consumers of wine and wine club services and I proceed on that basis.

3. The Opponent’s principal evidence relating to the reputation of the s 60 Mark is contained in Cohlan, John Cohlan having been associated with the Opponent since 1997 and its Chief Executive Officer since 2006. More than half of this evidence, it must be said, is taken up with explaining the Opponent’s association with the made-up name “Margaritaville”, which Mr Cohlan says:

   4. …is a 1977 song by American popular music singer-songwriter and founder of the Opponent, Jimmy Buffett from the album Changes in Latitudes, Changes in Attitudes, after which is [sic] the Opponent is named.  This song was written about a drink Buffett discovered at Lung’s Cocina del Sur restaurant on Anderson Lane in Austin, Texas U.S.A, and the first huge surge of tourists who descended on Key West, Florida U.S.A. around that time.  In the United States, Buffet’s song “Margaritaville” reached No. 8 on the Billboard Hot 100 chart, and went to No. 1 on the Easy Listening chart, also peaking at No. 13 on the Hot Country Songs chart.  It remains Buffett’s highest charting solo single.  Named from the cocktail margarita, with lyrics reflecting a laid-back lifestyle in a tropical climate, “Margaritaville” has come to define Buffett’s music and career.

   5. Buffett’s best-known song, “Margaritaville” has been used in a number of commercial ventures and product licensing tie-ins including, through the Opponent, the following:

   ·    Radio Margaritaville, a radio station that broadcasts on the Internet and Sirius XM Radio

   ·    Tales from Margaritaville, a collection of short stories by Buffett

   ·    Jimmy Buffett’s Margaritaville, a casual dining restaurant chain, tourist destination and chain of stores (shops) selling Buffett-themed franchise merchandise in Jamaica, Mexico and the U.S, including restaurants in major tourist destinations such as Key West, Orlando, Las Vegas, Myrtle Beach, Panama City Beach, Waikiki, Glendale, New Orleans, Mohegan Sun, Nashville, Chicago, Biloxi, as well as in Sydney, Australia.  The Opponent opened a “Margaritaville” restaurant in Key West in 1985, though the first was in Orange Beach, Alabama.

   ·    Margaritaville Resorts in US tourist destinations such as Pensacola, Bossier City and Hollywood Beach

   ·    Margaritaville Casinos in US tourist destinations such as Las Vegas, Bossier City and Biloxi

   ·    Margaritaville Vacation Club in St Thomas, The Virgin Islands

   ·    Margaritaville margarita mix (manufactured by Matt’s)

   ·    Margaritaville tequila

   ·    Margaritaville rum

   ·    Margaritaville bottled malt beverages

   ·    Margaritaville branded Landshark Lager

   ·    Margaritaville Frozen Concoction Maker

   ·    Margaritaville chips & salsa

   ·    Margaritaville chicken wings

   ·    Margaritaville frozen seafood

   ·    Margaritaville sauces, marinades, spices and salad dressings

   ·    Margaritaville coffee

   ·    Margaritaville Soles of the Tropics footwear

   ·    Margaritaville men’s & women’s apparel

   ·    Margaritaville outdoor & beach furniture

   ·    Margaritaville sunglasses

   ·    Margaritaville jewelry and watches

   ·    Margaritaville sun care lotions and oils

   6. The Opponent has provided for more than two decades its above goods and services provided [sic] under its Margaritaville trade mark (“Margaritaville Goods & Services”).  Now shown to me and marked Exhibit 1 are printouts from the Opponent’s website ( showing samples of the Margaritaville Goods & Services.

4. As Ms Rubagotti quite reasonably pointed out in her submissions, given “much of the evidence concerns an entirely different mark…[it] is irrelevant to these proceedings.” That said, Mr Cohlan goes on to explain the connection between the s 60 Mark and the trade mark MARGARITAVILLE as follows:

   7. “It’s Five O’Clock Somewhere” is a song performed by Jimmy Buffett and Alan Jackson, and written by Jim “Moose” Brown and Don Rollins.  It was released in June 2003 as the lead single from Jackson’s 2003 compilation album Greatest Hits Volume II.  It spent eight non-consecutive weeks at Number One on the Billboard Hot Country Songs chart in summer of 2003.  In addition, the song hit No. 17 on the US Hot 100, making it the biggest pop hit for Jackson and the first top forty hit for Buffett since the seventies.  On November 5, 2003, it also won the Country Music Association (CMA) Award for Vocal Event of the Year. The song became the No. 3 country song of the decade on Billboard's Hot Country Songs Chart.

   8. As with “Margaritaville”, the hit song name “It’s Five O’Clock Somewhere” has for over 10 years become an integral and synonymous part of the Opponent with “It’s Five O’Clock Somewhere” bars situated in the Opponent’s restaurants, resorts and casinos.  Now shown to me and marked Exhibit 2 are some images of those bars.

   [Exhibit 2 shows pictures of bars located inside the Opponent’s “Margaritaville” branded restaurants in Las Vegas (Nevada), Bossier City Resort Casino (Louisiana) and Atlantic City Casino Hotel (New Jersey), such as shown below. It also shows “Drink Specialties” lists from these premises listing a cocktail named “5 O’Clock Somewhere”.]

5. While he does not mention the goods and/or services covered, Mr Cohlan also notes that the Opponent owns trade mark registrations for the s 60 Mark in Class 20 in the European Union, Mexico and the Turks & Caicos Islands, in Classes 9, 20, 21, 25, 35 and 43 in the United States and in Classes 20, 35 and 43 in Jamaica.

6. Turning specifically to Australia, Mr Cohlan says that:

   9. Since September 2012, a Margaritaville restaurant has been operating in Sydney’s key tourist and entertainment precincts [sic], Darling Harbour.  Now shown to me marked Exhibit [4] are images of the Margaritaville restaurant in Sydney including its opening.

   10. Since its opening, the Margaritaville Restaurant in Sydney has featured an “It’s Five O’Clock Somewhere” bar.  Now shown to me marked Exhibit 4 are images of the “It’s Five O’Clock Somewhere” bar in Sydney.

7. On the face of it Mr Cohlan is mistaken about when the Opponent’s Margaritaville restaurant opened in Sydney.  This is in fact the sole issue addressed in Craven, the declaration the Applicant filed just before the hearing which, as mentioned, I have admitted pursuant to reg. 21.19.  The pages reproduced from the Opponent’s own website which form Exhibit 4 state that the Margaritaville restaurant in Sydney, (being the only such restaurant ever operated in Australia), was “to open in November 2012.”  Ms Craven provides further detail in her declaration, stating:

   4. It has come to my attention this week, through further searches of the internet, that the Opponent’s own, publicly available advertising material and other third party publicly available promotion material records that the Sydney Restaurant opened on 21 November 2012, being 2 days after the [Relevant Date].  This is to say, these records support a contention that the Sydney Restaurant did not open in September 2012 as claimed by Mr Cohlan in his declaration.

   5. Now shown to me and marked Annexure A is a true copy of the Sydney Restaurant’s website home page, which shows a countdown to opening on 21 November 2012 (or alternatively 19 November 2012).  I obtained this copy of the home page using an Internet archival service called “Wayback Machine”.  From my direct observation, and as may be apparent from the annexure, the archival service archived the Opponent’s home page on 12 November 2012.

   6. Now shown to me and marked Annexure B is a true copy of a page I obtained from the Sydney Restaurant’s website calendar showing the grand opening of the restaurant as being on Wednesday 21 November 2012.

   7. I then conducted an internet search for contemporaneous documents so to independently verify the official opening date of the Sydney Restaurant.  Now shown to me and marked Annexure C is a true copy of a review of the restaurant published on a website called “Guide to Gay” which refers to the fact that the reviewer attended the restaurant the day after its opening day.  The date of the review is 22 November 2012.

8. At the hearing itself, Mr Kortian accepted (as do I) that the Margaritaville restaurant in question opened on 21 November 2012 and, as mentioned, the Opponent did not file any further evidence or submissions on the issue in the one month period I allowed for it to do so. While nothing necessarily turns on this, it does mean that the Opponent’s claim that the s 60 Mark had obtained a significant reputation in Australia as at the Relevant Date is wholly dependent upon use outside this country and/or upon any pre-opening publicity garnered in Australia in the period leading up to the opening of its Margaritaville restaurant in Sydney, a matter which I note Mr Cohlan does not actually address.

9. Returning to Mr Cohlan’s evidence, he concludes with sales and advertising information in relation to “the Margaritaville Goods and Services,” a term defined in paragraph 6 of his declaration, which is reproduced at paragraph 15 above. I note that in the below quotes from Cohlan he also uses the undefined term “the Opponent’s Goods and Services”, which presumably has the same meaning. It must again be said that most of these goods and services do not appear to bear, or be provided under, the s 60 Mark at all. Although Mr Cohlan does not actually say so, the only exceptions to this, (apparent from some of the merchandise shown in Exhibit 1 to Cohlan), are use of the s 60 Mark on some T-shirts, some caps and some gambling chips. Even then, given the Opponent’s MARGARITAVILLE restaurant in Sydney, despite Mr Cohlan’s suggestion to the contrary, did not commence trading until after the Relevant Date, I must assume that the only sales of merchandise to Australian consumers, or exposure to the “5 o’Clock Somewhere Bar” and/or eponymous cocktail, either took place overseas or were via the Opponent’s website. As Mr Cohlan puts it:

   11. The revenues from the Margaritaville Goods and Services sold in the various countries outlined above [being the United States, Mexico, Jamaica and the Virgin Islands] have been substantial.  Now shown to me and marked Confidential Exhibit 5 is a table setting out the revenue and promotional expenditure of the Opponent with respect to the Margaritaville Goods & Services including the bar services operated under the mark “It’s Five O’Clock Somewhere” in all countries outlined above (including Australia) for the period indicated therein between 2006 to 2010.

   12. The Margaritaville Goods and Services have been extensively advertised and promoted in the United States of America and internationally (including Australia) through print and electronic media advertising and promotions.  Now shown to me and marked Exhibit 6 are some samples of such advertising and promotion, including media references in various publications as indicated.

   [Exhibit 6 actually consists of two identical copies of what appears to be a double-sided placemat/menu, amongst whose offerings is the “5 O’Clock Somewhere” cocktail.]

   13. The Opponent’s “It’s Five O’Clock Somewhere” and the beverages sold at those [sic] have also been extensively promoted by the Opponent’s Website referred to in paragraph 6 above and through the Opponent’s abovementioned premises, including those in Sydney, Australia.  Now shown to me and marked Exhibit 7 are print-out[s] from the Opponent’s website, including a copy of the Opponent’s alcoholic beverage menu used at its various premises, including the Opponent’s “It’s Five O’Clock Somewhere” bars in the abovemention[ed] cities including Sydney.

   14. The Opponent’s Goods and Services have been promoted in Australia through print and electronic advertisements.  Now shown to me and marked Exhibit 8 copies of sample print advertisements published in those publications and those dates indicated.

   15. As a result of the long-standing use of the mark “It’s Five O’Clock Somewhere” in respect of the Opponent’s bars and related goods and services and through the well­know[n] song, the trade mark “It’s Five O’Clock Somewhere” is synonymous with the Opponent.

   16. I am of the view that the promotion and sale of any of the Applicant’s Goods and Services under or by reference to the Opposed Mark would lead to a real and substantial risk that consumers in Australia may incorrectly assume that the Applicant’s Goods and Services are those of the Opponent or as being somehow associated with the Opponent.

1. In Kortian 1 the Opponent’s attorney aims to address the fact that the claimed use of the s 60 Mark before the Relevant Date, such that it may be, occurred principally in the United States, by annexing “a table of statistics from Tourism Research Australia which shows the total number of Australians who travelled to the United States as tourists per annum for the years ending June 2010 to June 2013.” These numbers are in the range 300,000 to 500,000 per annum over the years mentioned.

2. While of no relevance to my decision, for the sake of completeness I mention that in Kortian 2 Mr Kortian apparently takes issue with Mr Grimley’s claim in the Applicant’s evidence in answer that, “On or about 24 June 2013 I launched the wine club’s website using the domain name Mr Kortian does this by annexing print-outs from the Internet archive service at for the domain name in question which suggest the Applicant’s website may only have commenced operating in January 2014. Be that as it may, the Applicant’s activities after the Relevant Date do not have any bearing on the question of whether the s 60 Mark had a reputation in Australia as at 19 November 2012.

3. In his submissions at the hearing Mr Kortian referred to the judgment of Kenny J in McCormick & Co v McCormick[3], where at [81] her Honour considered the meaning of the word “reputation”, concluding it referred to “the recognition of the … [mark] by the public generally.” Given the paucity of use, (if any), of the s 60 Mark in Australia before the Relevant Date, nevertheless, Mr Kortian also emphasised that Kenny J:

   …cited with approval the following observation by Hearing Officer Thompson in Hugo Boss AG v. Jackson International Trading Company:[4]

   The reputation of a trade mark derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark.  The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation.  The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other traders’ marks with which the owner of the trade mark in question chooses to associate the trade mark via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   [3] (2002) 51 IPR 102.

   [4] (1999) 47 IPR 423 at 436.

4. For her part Ms Rubagotti was very critical of the evidence of reputation of the s 60 Mark relied upon by the Opponent, concerning which she made the following general observations:

   (a) Firstly, much of the evidence concerns an entirely different mark, viz. MARGARITAVILLE; this mark is irrelevant to these proceedings, it cannot successfully be asserted against the Applicant, and any evidence referring to it ought to be ignored;

   (b) Secondly, absent any evidence to the contrary, and if we are to accept the evidence contained in [Craven], there has been no relevant use in Australia of the song title by the Opponent prior to the priority date;

   (c) Thirdly, even if we were to put to one side the evidence contained in [Craven], the Opponent’s evidence of use of the song title in Australia is meagre as it would appear to have been included in the name of one bar inside a Sydney restaurant predominately branded MARGARITAVILLE;

   (d) Fourthly, the Opponent seeks to rely on evidence of some use overseas of the song title together with the mark MARGARITAVILLE or a truncated version of the song title together with other words and the mark MARGARITAVILLE (eg. there is reference to a MARGARITAVILLE ‘5 O’Clock Cocktail’); there is no evidence to support the proposition that the song title has been used as a trade mark overseas nor is there sufficient evidence to support the proposition that any of the overseas use of the song title has reached the attention of Australia[n] consumers; [and]

   Fifthly, the Opponent’s remaining evidence addresses the commercial success achieved by the song “It’s Five O’Clock Somewhere”; while the talents of its writers may be applauded, these matters are irrelevant to this Opposition.

5. It is difficult to disagree with Ms Rubagotti’s observations of the Opponent’s evidence. Based on this evidence I cannot be satisfied that the s 60 mark was used to any significant extent as a trade mark[5] in Australia before the Relevant Date. I accept that some Australian consumers may have visited one of the Opponent’s MARGARITAVILLE branded establishments in North America before that date and may have noticed or purchased a T-shirt, cap or poker chip bearing the words “Five O’Clock Somewhere” or similar, or may perhaps have purchased a “Five O’Clock Somewhere” cocktail at a “Five O’Clock Somewhere Bar” within one of those establishments. I accept, too, that some potential consumers of the Claimed Goods and Services may be familiar with the 2003 song “It’s Five O’Clock Somewhere”. However this is insufficient to satisfy me that the s 60 Mark had the requisite reputation as a trade mark contemplated by s 60 as at the Relevant Date.

   [5] Ms Rubagotti submitted that the use of the s 60 Mark relied on was not use as a trade mark, a prerequisite for s 60 to apply at all. While I heard Mr Kortian on this point, it is unnecessary to detail his submissions here given my conclusion regarding the claimed trade mark’s reputation.

6. The Opponent has accordingly not established its ground of opposition under s 60.

Section 42

1. I have left discussion of the s 42(b) ground until last since my consideration of it essentially reflects my above conclusion on the s 60 ground. Section 42(b) states:

Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(b) its use would be contrary to law.

1. As mentioned, the ground based on s 42 is particularised in the SGP as follows:

   Given the Opponent’s substantial reputation in its IT’S FIVE O’CLOCK SOMEWHERE trade mark, the Applicant’s use of the [Claimed Mark] would constitute passing off and/or misleading and deceptive conduct in breach of the Australian Consumer Law.

2. In his submissions Mr Kortian further specified that the relevant provisions of the Australian Consumer Law (“the ACL”, which is contained in Schedule 2 to the Competition and Consumer Act 2010) relied upon were ss 18 and 29(c) and (d). However it is apparent he intended to specify subsections (g) and (h) of s 29, which subsections correspond to ss 53(c) and (d) of the now repealed Trade Practices Act 1974 (“the TPA”).  The relevant legislation is set out below:

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; or

(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;

…

1. In his submissions Mr Kortian distilled several general propositions from cases dealing with passing off and with the consumer protection provisions of the TPA, (which I accept are relevant to the corresponding provisions of the ACL), including from the judgment of Hill J in Equity Access Pty Ltd v Westpac Banking Corp.[6]  While I do not disagree with Mr Kortian’s analysis as such, I do disagree with his conclusion that:

   8.18 We submit there is ample material in the present case for the Delegate to also uphold the present opposition on this basis given the substantial reputation of the Opponent in its IT’S FIVE O’CLOCK SOMEWHERE trade mark and the intended and notional use of the Applicant.

   [6] (1989) 16 IPR 431.

2. As Ms Rubagotti highlighted, both the tort of passing off and the relevant sections of the ACL essentially rely upon the Opponent being able to establish as a threshold issue that a significant reputation existed in its claimed mark as at the Relevant Date amongst a substantial number of the adult Australian public. For the reasons already discussed in connection with the Opponent’s s 60 ground I do not consider it has done this. I accordingly remain unsatisfied that use of the Opposed Mark for the Claimed Goods and Services would amount to any of the offending conduct alleged by the Opponent.

3. I note too that, unlike s 60 of the Act, ss 18 and 29 of the ACL and the tort of passing off are not concerned with behavior that “would be likely to deceive or cause confusion”. The relevant provisions of the ACL require a likelihood that Australian consumers be misled or deceived as to the true origin of the Claimed Goods and Services or their connection to the Opponent, rather than mere confusion or simply being caused to wonder as is the case with s 60 of the Act. As for passing off, this has been described as “an action concerned with misrepresentation by which the goodwill of the plaintiff’s business is deflected to the use of the defendant with consequent damage (or a likelihood thereof) to that business.”[7]

   [7] Shanahan’s Australian Law of Trade Marks and Passing Off, Lawbook Co., 4^th ed, 2008 at [95.1005].

4. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false representations or, indeed, passing off) than is the case with trade marks likely to deceive or cause confusion under s 60. As Ms Rubagotti noted, for example, in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd,[8] Gibbs CJ said with respect to s 52 of the TPA:

   In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

   [8] (1982) 1A IPR 684 at 688.

5. To conclude, I find that the Opponent has not established its ground based on s 42(b) of the Act.

Decision

1. Section 55(1) of the Act relevantly provides that, 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.

2. I have found the Opponent has not established either of the grounds pressed at the hearing.  Application 1526386 may accordingly proceed to registration 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 the appeal has been decided or discontinued.

Costs

1. In the event of success, Ms Rubagotti sought costs on the Applicant’s behalf. As the successful party, the Applicant is generally so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Regulations.

Michael Kirov
Hearing Officer
Trade Marks Hearings
24 September 2015