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

1. 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].

2. 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 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.

   10.     In order to found this ground it is thus incumbent upon the Opponent to establish to my satisfaction the existence of a pending application or a registration which:

   ·     has a priority date before that of the Trade Mark (‘the First Requirement’); and

   ·     is registered or pending in respect of the similar goods to those of the Trade Mark (‘the Second Requirement’); and

   ·     is substantially identical or deceptively similar to the Trade Mark (‘the Third Requirement’).

   11.     The Opponent relies upon the registration, below, which is detailed in his Statement of Grounds and Particulars:

   Registration No:         1502454
   Priority Date:             16 July 2012
   Goods:  Class 21: Glassware in this class, including glass beakers

   Class 33: Alcoholic beverages in the class including vermouth, spirits and aromatic wines

   (‘the Opponent’s Specification’)

   Trade Mark:               Regal Rogue

   (‘the Opponent’s Trade Mark’)

   The First Requirement

   12.     The priority date of the Opponent’s Trade Mark is earlier in time than that of the Trade Mark and the First Requirement is thus established.

   The Second Requirement

   13.     The Goods are (in terms of the Opponent’s Specification) ‘alcoholic beverages’ and therefore the Second Requirement is established.

   The Third Requirement

   14. I am to consider, in terms of paragraph 44(1)(a) of the Act, whether the trade marks of the parties might be substantially identical or deceptively similar.

   15.     In discussing ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[3] 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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

   [3] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

   16.     When comparing the trade marks GALLANT ROGUE and Regal Rogue side by side, they are obviously different: the words ‘gallant’ and ‘regal’ have quite different meanings and have no facility in relation to the goods as did, for example, the word ‘chill’ in PB Foods Ltd v Malanda Dairy Foods Ltd[4] (‘Chill’ versus ‘Choc Chill’ in relation to ‘ice creams’).  The words ‘gallant’ and ‘regal’ are thus, in my view, essential features of the respective trade marks in which they occur and a total impression of dissimilarity thus emerges from the comparison of the trade marks.

   [4] [1999] FCA 1602; [1999] AIPC 40,117; (1999) 47 IPR 47.

   17.     The trade marks are not substantially identical.

   18. Regarding the expression ‘deceptively similar’, section 10 of the Act provides:

   10Definition 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.

   19.     In Shell Windeyer J said of deceptive similarity 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. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.

   20.     The comparison of the trade marks is to occur in the context of the relevant marketplace and all of the surrounding circumstances are to be considered.  Parker J put it this way in Re Application by the Pianotist Company Ltd for the Registration of a Trade Mark[5]:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.

   [5] (1906) 23 RPC 774 at 777.

   21.     And the process of the comparison is informed by the factors discussed by French J in Registrar of Trade Marks v Woolworths[6]:

   [6] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

   22.   Factors to be considered in the comparison were summarised by Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd[7]:

   [7] [2012] FCA 1022 [38]-[46].

   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[8] at [49]; Australian Woollen Mills[9] 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[10] 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[11] 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].

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

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

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

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

   23.     I consider that the trade marks of the parties express quite different ideas, albeit they both incorporate the word ‘rogue’.  As the words ‘regal’ and ‘gallant’ have quite different meanings and have no descriptive denotation in relation to the goods it is not appropriate to focus upon the word ‘rogue’ in common to the trade marks as being the sole essential feature of the trade marks.  The words ‘regal’ and ‘gallant’ cannot be discounted in the comparison as might be the case, for example, with the words ‘red’ or ‘white’ which obviously have some immediate descriptive denotation in relation to wines.

   24.     The difference between the trade marks occurs at the beginning of the respective trade marks: the words of Sargant J in London Lubricants (1920) Limited's Application to Register a Trade Mark[12] thus become relevant:

   But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

   [12] (1925) 42 RPC 264 (at 279).

   25.     The inherent adaptation to distinguish alcoholic beverages of the words ‘regal’ and ‘gallant’, in addition to their occurrence at the beginning of the trade marks also decreases the likelihood that the either trade mark might be imperfectly recollected as the other.

   26.     Lastly, in consideration of ‘all of the surrounding circumstances’, I note the following trade mark registrations:

   Registration No:         790428
   Proprietor:                  De Bortoli Wines Pty Ltd
   Priority Date:             8 April 1999
   Goods:  Class 33: Wine

   Trade Mark:               ROGUE

   Registration No:         1648554
   Proprietor:                  Furunde Wine Co Pty Ltd
   Priority Date:             23 Sep 2014
   Goods:  Class 33: Wine; Spirits (beverages); Liqueurs

   Trade Mark:               ROGUE STALLION

   Registration No:         1777148
   Proprietor:                  Davis Premium Vineyards Pty Ltd
   Priority Date:             21 June 2016
   Goods:  Class 33: Wine

   Trade Mark:               Lovable Rogue

   27.     The word ‘rogue’ in trade marks registered for ‘wines’ is thus not unique to the Opponent’s Trade Mark.

   28.     In consideration of the above discussion, I could not be satisfied that the Trade Mark and the Opponent’s Trade Mark are deceptively similar.

   29. The Opponent has not established its opposition under section 44 of the Act.

   Section 60

   30. Section 60 of the Act provides:

   60Trade 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.

   31. In order to found his ground under section 60 the Opponent must first establish that his Regal Rogue had a reputation at the priority date and, secondly, because of the reputation that then existed, the use of the Trade Mark would be likely to deceive or to cause confusion.

   32.     The reputation of the Trade Mark is the extent to which it is known to Australians generally:  McCormick & Co Inc v McCormick[13].  Reputation is usually established by an assessment of the extent to which it has been used and it thus likely to be known and recognised.  Kenny J went on in McCormick[14] to state:

   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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [13] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

   [14] Ibid at [86].

   33.     As there is no evidence of the reputation of the Opponent’s Trade Mark before the Registrar, there is no basis upon which I can assess it.  The ground thus falls at the first hurdle.

   34. The Opponent has not established his opposition under section 60.

   Decision

   35. Section 55 of the Act relevantly provides:

   55Decision

   (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.

   36.     The Opponent has not established his opposition to the registration of the Trade Mark.

   37.     The trade mark application may then 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 and that the disposition of the application should be in accordance with the Court’s order or direction.

   Iain Campbell Thompson
   Hearing Officer
   Trade Marks Hearings
   9 June 2017