Masi Agricola SpA v Oceans Estate Margaret River Pty Ltd - [2015] ATMO 38

TRADE MARKS ACT 1995

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

Re:Opposition by Masi Agricola SpA to registration of trade mark application 1536342(33) - tomasi - proceeding in the name of Oceans Estate Margaret River Pty Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Mr Khajaque Kortian of Spruson & Ferguson

Applicant: Mr Frank Tomasi, a director of the Applicant with written submissions by Kelvin Lord & Co.

Decision:

2015 ATMO 38

s52 opposition to registration: s44, 59 and 60 and 42 not established. Opponent has not established that trade marks are deceptively similar or that the Opponent's trade mark has a reputation such that the use of the Trade Mark would confuse or deceive or mislead or deceive. No evidence that Applicant does not intend to use the Trade Mark.

Decision

In this matter Oceans Estate Margaret River Pty Ltd, (‘the Applicant’), is the owner of an application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark details of which appear below:

Application No: 1536342

Priority Date: 17 January 2013

(‘the Relevant Date’)

Goods:Class 33: Beverages containing wine (alcohol content 1.15% or more by volume); Beverages containing wine (wine predominating); Blended wine; Cooking wine; Dessert wine; Drinks containing wine (wine predominating); Dry fortified wine; Dry red wine; Dry sparkling wines; Dry white wine; Dry wine; Fortified wines; Non-sparkling wines; Red wine; Sparkling wines; Still wines; Sweet fortified wine; Sweet red wine; Sweet sparkling wine; Sweet white wine; Sweet wine; Vintage wines; White wine; Wine.
(‘the Goods’)

Trade Mark: tomasi

(‘the Trade Mark’)

The Trade Mark[1] was examined as is mandated by section 31 of the Act and advertised as accepted for possible registration on 9 May 2013 in the Australian Official Journal of Trade Marks.
[1] Although the Trade Mark is rendered in lower-case letters, the provisions of subsection 7(1) apply such that the use of the Trade Mark includes it rendered as TOMASI.
On 9 July 2013, Masi Agricola SpA (‘the Opponent’) filed Notice of Intention to Oppose. On 29 August 2015 the Opponent filed its Statement of Grounds and Particulars stating grounds under sections 44, 60, 42 and 59 of the Act.
The parties thereafter filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).
Subsequently, both parties requested to be heard. The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 16 April 2015. Mr Khajaque Kortian of Spruson & Ferguson represented the Opponent; Mr Frank Tomasi represented the Applicant and I also had the benefit of written submissions by the attorneys for the Applicant, Lord & Co.

Onus and Relevant date

The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[2] The relevant date at which the grounds must be considered is the filing date of the application.[3]
[2] 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]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (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; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

The evidence in this matter is comprised of the following declarations:

In Support
Richard Michael Hing, associate of Spruson & Ferguson, made on 20 December 2013 with Exhibit RMH-1
Lidia Corso, Company Proxy of the Opponent, made on 23 December 2013, with Exhibits 1 to 11.
In Answer
David Lawrence Tomasi,[4] Managing Director of the Applicant, made on 3 April 2014, with Exhibits DLT-01 to DLT-09
[4] As I understand it, Mr David Tomasi is a son of Mr Frank Tomasi who made submissions at the hearing.
In Reply
Khajaque Kortian, Solicitor of Spruson & Ferguson, made on 10 June 2014 with Annexures A and B

Mr Hing’s declaration states that he conducted a search of the Australian trade marks register for what I will neutrally term the letter-string ‘masi’ in relation to goods in Class 33. The printout of the search results shows only the trade marks of the parties. I will note now that a search for the letter-string ‘mas’ in Class 33 reveals trade marks such as 895652(33) MAS LA PLANA, 961820(33) MASOTINA, 1002477(33) MASSIF, 1146912(33) MASCHIO, 1184352(33) ROCCA DI MONTEMASSI, 1192299(33) POCO MAS, 1465338(33) MASSARI and 1515311(33) VILLA MASSA all of which bear some degree of resemblance to the parties’ trade marks.
Ms Corso declares as to the history of the Opponent and the use of the Opponent’s trade marks in Australia. The Opponent has several trade mark registrations in Australia. Mr Kortian conceded during the hearing that if the grounds under sections 44 and 60 did not succeed in relation to the trade mark appearing below, they would not succeed in relation to the Opponent’s other trade marks.

Registration No: 675611

Priority Date: 19 October 1995

Goods: Class 33: Wines, spirits and liqueurs

Trade Mark: MASI

(‘the Opponent’s Trade Mark’)

I note, since this is material to my decision under section 60, that the Opponent has also registered these other trade marks in Australia:

Registration No: 1184454

Priority Date: 6 April 2007

Convention details: 27 February 2007 VR2007COOO151 - Italy

Goods: Class 33: Wines, distilled spirits, liqueurs

Trade Mark: [5]

[5] I note that ‘Tupungato’ is a wine producing region near Mendoza in Argentina.

Registration No: 1291218

Priority Date: 9 December 2009

Convention Details: 6 November 2008 VR2008COOO841 - Italy

Goods/Services: Class 33: Wines, distilled spirits, liqueurs

Trade Mark:

PTIM No: 1447038

Filing Date: 29 July 2011

International Reg No: 1088614

Convention Details: 24 June 2011 VR2011COOO562 - Italy

Goods/Services: Class 33: Alcoholic beverages (except beers)

Trade Mark: MASIANCO

I will refer to the all of the Opponent’s above registrations collectively as the MASI Trade Marks and the goods as the MASI wines.
Ms Corso states:
My Company's history dates back to the end of the 18th century, when the Boscaini family acquired a vineyard named "Vaio dei Masi" in Valpolicella, Italy. The wines produced by my Company were, and continue to be, sold under the trade mark MASI (hereafter "MASI wines").
Since then, six generations of the Boscaini family have maintained ownership of my Company and have grown the business worldwide.
Today, MASI wines are sold around the world, including in Australia.
Concerning the use of the MASI trade marks on MASI wines in Australia, Ms Corso says:
MASI wines were first sold in Australia in 1982/1983. Since then, they have continued to be marketed and sold throughout all states and territories of Australia. From at least as early as 2001 until 2007, MASI wines were imported and distributed in Australia by Red + White. I note that Red + White has a presence throughout Australia.
Now shown to me and marked Exhibit 3 are printouts from the Red + White website ( which list the contact details for the company in Victoria, New South Wales, Queensland, South Australia, Western Australia, Tasmania, Northern Territory and nationwide.
From 2007 onwards, MASI wines have been distributed in Australia by Samuel Smith & Son Pty Limited. This company also has a nationwide presence in Australia. Now shown to me and marked Exhibit 4 is a printout from the Samuel Smith & Son Pty Limited website ( which lists the contact details for the company in South Australia, Tasmania, New South Wales, Queensland, Victoria, Western Australia, Northern Territory and nationwide.
Ms Corso exhibits copies of invoices to the Opponent’s Australian distributors, copies of prices lists, and printouts from the Opponent’s website than include images of labels used for MASI wines.
Ms Corso provides confidential annual totals of sales of sales of MASI wines in Australia for the period 2001 to 2013. While Ms Corso characterises these sales as being substantial, in my experience of assessing such wine sales, I would gauge these figures as being low: considerably less than an average Australian vineyard’s output and (on a generous estimate) equating to much less than the average output of 10 acres of vineyard.[6]
[6] Greater precision in describing the sales of the Opponent’s goods under the MASI Trade Marks in Australia would run the risk of breaching the confidentiality of the figures supplied.
As far as advertising and promotion of the MASI trade marks is concerned, Ms Corso states:
Now shown to me and marked Exhibits 9 to 12 are the following:
• Exhibit 9: Copies of print advertisements which have appeared in the Sun Herald (18 September 2005), the Sydney Morning Herald (18 September 2007, 16 October 2007 and 20 October 2009) and Gourmet Traveller (5 April 2010);
• Exhibit 10: Extract from the 2010 Wineries Book which was produced and distributed in Australia by Samuel Smith & Sons Pty Limited. The extract refers to my Company;
• Exhibit 11: Copies of promotional flyers for the "Grandi Marchi Asia and Australia Tour'' held in November 2013. The tour included a meal and tasting with members of the Instituto Grandi Marchi, which features my Company's MASI wines;
• Exhibit 12: Copy of a promotional flyer for a meal and tasting event with Sandro Boscaini (President of my Company). The event took place in Australia in 2007.
I would typify the Opponent’s advertising/promotion in relation to the MASI trade marks as being quite slight.
The balance of Ms Corso’s declaration may be characterised as being submission concerning her perceptions of similarity between the trade marks of the parties – I will take this into account in my discussion of the grounds under sections 44 and 60.
Mr Tomasi gives the background to the genesis of the Trade Mark – that being of his family name. He states:
"TOMASI" is my family name and, being family owned, the family name of the owners of my Company. This name has been associated with my Company since its inception. Likewise, the name "TOMASI'' has been associated with the goods my Company trades in since the selling of my Company's wines began in 2004. Annexed hereto as Exhibits DLT-02 to DLT-05 are the following:
a. Exhibit DLT-02 is a printout from my Company's website ( which provides that "Oceans Estate is . . . owned and managed by the Tomasi Family".
b. Exhibit DLT-03 are further printouts from my Company's website showing use of the "TOMASI" name accompanying the sale of wines since at least as early as 2009.
c. Exhibit DLT-04 is a number of product labels from as early as 2007 and a selection of invoices for the corresponding products from as early as August 2009 showing use of the "TOMASI" name accompanying the sale of wines.
d. Exhibit DLT-05 is an email outlining the volume of sales of wines bearing the "TOMASI" name during the period August 2009 to February 2014.
Concerning the adoption of the Trade Mark, Mr Tomasi states:
In about 2012, my Company made the decision to widen their portfolio of wines and launched two new ranges of wines under the names "TOMASI" and "LASHINGS". This was in response to marketing advice to trade in wine under names other than "OCEANS ESTATE". Trade Mark Applications were made for both of these additional names on 17 January 2013. The former Application is the present Application No. 1536342; and annexed hereto as Exhibit DLT-06 is an extract from the online Trade Mark register showing details of the latter Registration No. 1536345.
My Company has used the present Trade Mark in Australia since 2012 in respect of the goods for which Registration has been sought. Annexed hereto as Exhibit DLT-07 are representations of "TOMASI" packaging and labelling dated 17 July 2013. Annexed hereto as Exhibit DLT-08 is various marketing material [sic] showing use of the "TOMASI" Trade Mark. Annexed hereto as Exhibit DLT-09 are internal emails dated 17 October 2013 and 14 December 2013 and internal documents from December 2013 to February 2014 documenting pursuit of and sales of wines under the "TOMASI" Trade Mark.
I note that the Trade Mark was unused at the Relevant Date.
The balance of Mr Tomasi’s declaration may be also be characterised as submission concerning his perceptions of dissimilarities between the trade marks of the parties. I also take these into account in my consideration of the grounds of opposition.
Mr Kortian’s declaration in part replicates that of Mr Hing as to the commonality of the letter-string MASI in Class 33 within the Australian register of trade marks. Mr Kortian also exhibits various pictures of wines which occur on the Internet which purport to show that wine labels might be partially obscured when on display due to the curvature of the bottles and the arrangement of the display.

Section 44

Because of the non-use of the Trade Mark at the priority date the Applicant does not (and cannot) rely on the provisions of subsections 44(3) or 44(4) of the Act. Accordingly, section 44 of the Act relevantly 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.
Given that:

the priority date of the Opponent’s Trade Mark precedes that of the Trade Mark;
the goods are to all purposes identical; and,
it is not argued that the trade marks in suit are substantially identical,

the issue for me to decide is whether the trade marks in suit are 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.
The assessment of the likelihood of deception or confusion was discussed by French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; [1999] AIPC 91-499; (1999) 45 IPR 411 (‘Woolworths’) at [49]:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. […] Absent the imposition of an onus upon the applicant they may be restated as follows:
(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."
Further, the words ‘deception’ and ‘confusion’ refer to two different mental states. In Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at page 174 Lord Denning said of the differences between ‘confusion’ and deception:
Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.
The comparison of trade marks has been judicially discussed in a number of cases. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 Windeyer J said 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.

And in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 Parker J said at 777:
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.
I must also consider the ‘fair and normal’ uses of the Trade Mark within the scope of the registration which might ensue: in Woolworths, French J stated at [88]:
The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.
The context here is that of the wine trade and how wines are normally presented to the public for sale. The field is a crowded one with many trade marks within it – consumers are thus conditioned to making distinctions between trade marks which are similar without necessarily being deceptively so: see the discussions in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; [2000] AIPC 91-640; [2001] ATPR 41-793; (2000) 52 IPR 42. See also the list of trade marks at [8] of this decision.
I am also mindful that the Trade Mark is a surname albeit not a very common one in Australia – it occurs 80 times in a search of the in the IP Australia SFAS facility which is based on the Australian Electoral Roll. Moreover, I note that the word TOMASI also occurs as a surname over 2,000 times in the Rome White Pages (PagineBianche) Telephone Directory.
Two of the Opponent’s concerns may be summarized thus:

The Applicant might use the Trade Mark in different colours or fonts/font sizes as in toMASI; or,
the Applicant might use the ornate letter T, formed as an ornate vine trellis, which appears near the Trade Mark on its proposed labels instead of the alphabetical letter T in the Trade Mark.

As to the first concern, I note that the use of the Trade Mark in the particular manner falls outside what I consider to be the ‘fair and normal’ use of the Trade Mark by the Applicant. I also consider it to be inherently unlikely that a person who is stressing a wine’s connection with his family surname would use it in any of the manners suggested.
As to the second concern, this might again fall outside the ‘fair and normal’ use test; but additionally, might be perceived as adding to the differences between the parties’ trade marks rather than anything else.
Moreover, both of the above concerns about how the Applicant might use the Trade Mark are purely hypothetical and I do not think that such speculations play a part in whether the use of the Trade Mark is likely to confuse or deceive.
Other concerns of the Opponent are put this way by Mr Kortian:
In relation to the “effect or impression” of the respective marks, it is quite clear that the most prominent and key aspect of the Trade Mark is the distinctive ending or suffix MASI. Further, the goods for which the Opponent’s Trade Marks are registered are the same as the Applicant’s Goods.
The presence of the common preposition “to”, before the dominant and distinctive mark “masi” in the mark “tomasi” does not rule out a finding of deceptive similarity between the Opposed Mark and the Opponent’s Trade Marks; see also John Fitton & Co. Ltd’s Application 66 RPC 110 at 113:
With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks “Jests” and “Easyjest” might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element “jest” in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanate from the one and the same source.
We submit that the first two letters of the Trade Mark are not distinguishing in the face of the Opponent’s Trade Marks. The stress on the Trade Mark “tomasi” falls on the distinctive end syllable and notable suffix “masi” (which is identical to the Opponent’s trade mark. (see Upjohn Company v Elf Sanofi SA 33 IPR 573).
The suggested approach to the Trade Mark is an artificial dissection of the Trade Mark. When the Trade Mark is considered as a whole, the letter-string ‘to’ occurring at the beginning of the Trade Mark does not suggest itself as a prefix or preposition nor does the letter-string ‘masi’ at the end of the Trade Mark suggest itself as a suffix. Neither the suggested prefix nor the suffix are ones commonly used in the English language – or in the sphere of trade marks. The Trade Mark is a surname and, although not common in Australia, is likely to be apprehended as such – that is, the Trade Mark as a whole strongly suggests that it is a surname akin to the British surname ‘Thomas’.[7] The proposition that the letters ‘To’ or ‘to’ in the Trade Mark are likely to be seen by normal Australians of average intelligence as a prefix or preposition is, in my consideration, inherently unlikely. However, if the form of analysis suggested by Mr Kortain were to be adopted, it may also lead to the conclusion that where a distinguishing feature occurs at the beginning of a trade mark it should be given additional emphasis: in London Lubricants (1920) Ltd's Application, (1925) 42 RPC 264 (CASTROL/TRIPCASTROID), it was observed that in assessing the similarity of words, emphasis is put on the start of the words, so that the opening letters or syllable is of importance in the comparison.
[7] For example, The Internet Surname Database states of the surname ‘Thomas’, Recorded in over two hundred spelling forms ranging from the British Tomas and Thomas, the Italian Tommasi and Toma, the German Thom, Thomas, Thoma, Thumm, and Thome, the Slavonic Tomaschek, the Russian Fominov, the Belorussian Tomich and Khomich, the Swedish Thomasson, and many, many, others. [Stress added]
Mr Kortian also submits:
Further, the marks “tomasi” and “masi” would be prone to confusion if the initial letters “to..” were obscured, which is not uncommon in relation to cylindrical bottle labels as the Opponent’s evidence shows (see Kortian Declaration, Annexure “B”). This is also accentuated by the fact that wine asked for by consumers to sales staff in busy bottle shops is likely to mean that the emphasised suffix “masi” is heard more that the less emphasised letters “to..” The “to” in the mark “tomasi” may also be misinterpreted by consumers (particularly phonetically), unfamiliar with Italian or other foreign languages, as a foreign preposition of the mark “masi” such as “T’masi”, not unlike similar marks such “D’Gabriel” “J’adore” etc .
The examples in evidence referred to by Mr Kortian are not of standard displays in bottle shops or on the shelves of supermarkets. Rather, they appear to be promotional photographs which are ‘staged’ for display upon the Internet or in other advertising media to give prominence to particular trade marks, occasionally at the expense of others. I reiterate my earlier comment that what I must consider is the likely normal and fair use in trade of the trade marks of the parties; the trade marks of the parties are both quite short and it is therefore unlikely that they would be ‘shelved’ or displayed so that a part of either trade mark would be obscured. Additionally, it is probable that marketing forces and commonsense would dictate that the fonts used by the Applicant to display the Trade Mark on labels would be ‘scaled’ so that the entire of the Trade Mark would be visible when the bottle is placed on the shelves of bottle shops or supermarkets.
The Opponent has not established that the trade marks are deceptively similar. Accordingly, the ground under section 44 is not established.

Section 60

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.
The date at which the reputation of the Opponent’s MASI Trade Marks must be considered is the Relevant Date.
In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:
What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?
In McCormick, Kenny J went on to say of the assessment of reputation at [88]:
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.
As may be anticipated from my earlier comments in relation to the Opponent’s evidence of sales and advertising/promotion of the MASI Trade Marks, I do not consider that the evidence establishes that the MASI Trade Marks have a reputation in Australia. The sales are not high nor are the advertising expenditures that might be inferred substantial – in fact the latter appear to be quite small. As I have indicated, the sales are considerably less than that of the estimated average output of a ten acre vineyard.
There is no evidence that the Opponent’s goods are of such quality that, despite the low sales and advertising, the MASI Trade Marks have developed a reputation in Australia (as has occurred in the example of the trade mark ROLLS ROYCE used in relation to motor vehicles).
There is a further problem with the Opponent’s evidence of reputation: the evidence relates to the MASI trade marks collectively. The Opponent’s MASIANCO trade mark is non-identical to the balance of its MASI Trade Marks and yet the sales and advertising/promotional evidence seemingly include it. There is no suggestion by the Opponent about how the sales and advertising evidence should be apportioned between these different MASI Trade Marks including the MASIANCO trade mark.
I conclude that the Opponent has not established the reputation of the MASI Trade Marks in Australia.
The Opponent has not established the ground under section 60 of the Act.

Section 42

Section 42 of the Act relevantly provides:
42Trade 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.
In Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 Madgwick J found that subparagraph 42(b) of the Act might refer to any law and that the Registrar is to consider whether the use of an opposed trade mark would be contrary to law.
Here the Opponent relies on sections 18 and 29 of the Australian Consumer Law (‘the ACL’) in the Competition and Consumer Act 2010:
Section 18 misleading or deceptive conduct
(1) a person shall 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
(1) a person shall 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:
[…]
(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
(d) represent that a person has a sponsorship, approval or affiliation it does not have;
Section 18 of the ACL equates to section 52 of the repealed Trade Practices Act 1974 (‘the TPA’). In Equity Access Pty Limited v Westpac Banking Corporation [1989] FCA 506; (1989) 16 IPR 431 at 440-442, Hill J formulated a number of propositions as relevant to a determination of whether a contravention of section 52 of the TPA, was made out in a name/getup case, which can be summarised as follows:
·for conduct to be misleading or deceptive it must convey in all the circumstances of the case a misrepresentation;
·there will be no contravention of s52 unless the error or misconception results or would be likely to result from the conduct of the corporation and not from other circumstances for which the corporation is not responsible;
·conduct will be likely to mislead or deceive if there is a ‘real or not remote chance or possibility’ of misleading or deception, regardless of whether it is more or less than 50%;
·conduct causing mere confusion or uncertainty in the minds of the public, in the sense that there may be cause to wonder whether two products or services have come from the same source, is not necessarily co-extensive with misleading or deceptive conduct. The court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived. However, it is not necessary to show that all or substantially all persons in the market associate the name with the applicant/plaintiff’s goods/services, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question;
·the [Opponent] must establish that it has acquired the relevant reputation in the name, that is to say that the name has become distinctive of the [Opponent’s] business or goods in a particular country or geographical area (the area may be local or Australia wide);
·section 52 is not confined to conduct which is intended to mislead or deceive, and a corporation that acts honestly and reasonably may nonetheless engage in conduct that is likely to mislead or deceive.
Here, the Opponent has not (for the reasons I have stated in relation to the section 60 ground) established the requisite reputation in Australia of its MASI Trade Marks to found this ground. However, if it has established a reputation, that reputation is so slight that, in considering the similarities and differences between the trade marks of the parties, they are not so similar that that similarity would ‘mislead or deceive’ – which I note is a more stringent standard than that applied under section 60 of the Act (confuse or deceive). In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191; (1982) 42 ALR 1; (1982) 56 ALJR 715; [1982] ATPR 40-307; 1A IPR 684; 1 TPR 282 the Court observed at [30]:
The Trade Marks Act is concerned with deception or confusion to the public as to the source of goods. The Trade Practices Act is concerned with deception of the public as consumers of goods or services. The function of a trade mark is to identify the source of goods; the purpose of s. 52 is to prohibit misleading or deceptive conduct which will affect the recognition or identification of goods. Registration of a mark confers rights of a proprietary nature. The applicant for a trade mark bears the onus of establishing that use of his mark is not likely to deceive or cause confusion. Under s. 52 the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.
As regards section 29 of the ACL, the Opponent must initially establish a reputation for the MASI Trade Marks from which the Applicant might benefit: Bing! Software Pty Ltd v Bing Technologies Pty Ltd (No 1) [2008] FCA 1760; 79 IPR 454. I have found that the Opponent has not established that its MASI Trade Marks have such a reputation. Fore the sake of completeness, I also note that there is no evidence that the Applicant has more directly represented that:
·its goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have; or
·it had a sponsorship, approval or affiliation it did not have.
The allegation as to passing off must also fail for lack of requisite reputation within Australia: ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302; 106 ALR 465; (1992) 23 IPR 193; [1992] AIPC 90-892; [1992] ASC 56-159; [1992] ATPR (Digest) 46-095.
The Opponent has not established its ground under subparagraph 42(b) of the Act.

Section 59

Section 59 of the Act provides:
59Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a)to use, or authorise the use of, the trade mark in Australia; or
(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note:For applicant see section 6.

The filing of an application for registration of a mark is prima facie evidence of an intention to use that mark: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9; (2010) 269 ALR 17; (2010) 86 IPR 437; [2010] AIPC 92-383 (‘Food Channel’) at [72]. In that case the Court also noted at [27]:
In Joseph Constantine Line v Imperial Smelting Corp Ltd [1942] AC 154 at 174, Viscount Maugham LC said:
In general the rule which applies is "Ei qui affirmat non ei qui reget incumbit probatio" (Proof lies upon him who asserts not on him who denies). It is an ancient rule founded on considerations of good sense and should not be departed from without strong reasons.
In relation to this ground, Mr Kortian submits:
The Applicant’s evidence, in particular the Tomasi Declaration, does not provide any evidence of actual use of the trade mark or whether as at the Relevant Date there was an intention to use the mark. The samples provided are sample letterhead (undated), wholesale order stationery (again, undated and addressed to no-one) as well as an undated photograph of what appears to be car signage and some wine notes. There is no actual use of the mark in relation to the goods applied for. On the contrary, the evidence clearly shows that the trade mark used in relation to wines by the Applicant is the “Oceans Estate” trade mark. The mere fact that the owners of the Oceans Estate brand are the “tomasi family” or that one of their vineyards are the “tomasi vineyards” does not constitute an intention to use the trade mark as applied for.
It is submitted that the Applicant had no bona fide intention of using the Trade Mark for the goods for which registration is sought at the Relevant Date.
The Opponent’s concerns here, in my consideration, amount to an allegation rather than establishing a prima facie case for the Applicant to answer. Moreover, there may be good reasons why the Applicant has not yet used the Trade Mark; for example, one of these reasons might be an abundance of caution about these proceedings. As I have stated, is incumbent upon the Opponent to make out a prima facie case that, at the Relevant Date, the Applicant had a lack of intention to use the Trade Mark. In Food Channel, also at [72] the Court went on to say:
Once an opponent has made out a prima facie case that there was a lack of intention to use a mark, it has been held that the onus shifts to the applicant to establish that intention (Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478).
The onus has not so shifted and the Opponent therefore has not established its ground under section 59 of the Act.

Decision

At the Relevant Date subsection 55(1) of the Act provided:
55Decision
(1)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.
The Opponent has not to any extent established any ground on which the application was opposed.
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.

Costs

The Applicant, as the successful party, is entitled to its costs which I award against the Opponent at the scale set out in the Regulations.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

4 June 2015