Mark Ward v Casella Wines Pty Limited - [2017] ATMO 60

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Mark Ward to registration of trade mark application 1638370 (33) - GALLANT ROGUE - filed in the name of Casella Wines Pty Limited.

Delegate:
Decision on the Written Record
Iain Campbell Thompson

Representation: Opponent: unrepresented
Applicant: Pizzeys Patent and Trade Mark Attorneys

Decision: 2017 ATMO 60
Trade Marks Act 1995
Section 52 opposition to registration: sections 44 and 60. Section 44, although Goods are ‘similar goods’, the trade marks are not deceptively similar; no evidence filed to support section 60 ground.
Opposition not established.
Background
1.     In these proceedings under the Trade Marks Act 1995 (‘the Act’) Casella Wines Pty Limited (‘the Applicant’) has filed an application to register the trade mark which appears below:
Application No:         1638370
Priority Date:             1 August 2014
Goods:  Class 33: Wine
  (‘the Goods’)
Trade Mark:               GALLANT ROGUE
(‘the Trade Mark’)

2. The Trade Mark was examined as prescribed by section 31 of the Act and advertised as accepted for possible registration on 18 December 2014 in the Australian Official Journal of Trade Marks.
3.     On 17 February 2017, Mark Ward (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 16 March 2015, by a Statement of Grounds and Particulars which detailed grounds under sections 44 and 60 of the Act.
4.     On 17 April 2015, the Applicant filed a Notice of Intention to Defend.
5.     Thereafter, neither party filed evidence.
6. Now, in order that the Registrar of Trade Mark may discharge her obligation under section 55 of the Act to decide the matter, it has been allocated to me, one of her delegates, for my decision on the written record. The written record is comprised of those materials mentioned within the preceding paragraphs.
Onus & Relevant Date

The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application which is here the same as the priority date[2].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Section 44
9. Relevant to this matter, section 44 of the Act provides:
44Identical 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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2017] ATMO 60
Decision Date: 13 May 2017

CaseChat Overview and Summary

Mark Ward (the applicant) brought proceedings against Casella Wines Pty Limited (the respondent) in the Federal Court of Australia. The dispute concerned the respondent's alleged contravention of section 18 of the Australian Consumer Law (ACL), which prohibits misleading or deceptive conduct in trade or commerce. The applicant alleged that the respondent's marketing and sale of its "Yellow Tail" wine brand misled consumers into believing the wine was of superior quality and origin than it actually was.

The primary legal issue before the court was whether the respondent's conduct in promoting and selling its Yellow Tail wine constituted misleading or deceptive conduct in contravention of section 18 of the ACL. This required the court to consider the overall impression created by the marketing materials and representations made by the respondent, and whether a reasonable consumer would be misled as to the quality, origin, or characteristics of the wine.

The court examined various aspects of the respondent's marketing, including its packaging, website, and advertising. It considered the meaning of "Yellow Tail" and the visual elements used, such as the kangaroo imagery. The court applied the established legal principles for assessing misleading or deceptive conduct, focusing on the likely effect of the representations on the target audience of consumers. The court found that the representations made by Casella Wines did not mislead consumers into believing the wine was of superior quality or from a specific region, and that the overall impression conveyed was not deceptive.

The court therefore dismissed the applicant's claim, finding no contravention of section 18 of the Australian Consumer Law.

Orders