Medley Distilling Co v Croakers Gully Australia Pty Ltd

[2000] ATMO 133

TRADE MARKS ACT 1995

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

Re:Opposition by Medley Distilling Co to registration of trade mark application number 768041 in the name of Croakers Gully Australia Pty Ltd for the trade mark comprising the word T'QUILA and a BULL device in Class 33

Background
Croakers Gully Australia Pty Ltd (the applicant)

 filed trade mark application number 768041 on 22 July 1998.  The application was for the registration of the trade mark as shown below and covered the statement of goods, "tequila and beverages containing tequila" in Class 33.

Following examination, the Registrar advertised the trade mark as accepted in the Australian Official Journal of Trade Marks of 19 November 1998.  Medley Distilling Co (the opponent) filed notice of opposition to the trade mark’s registration on 19 May 1999, following the grant of an extension of time to do so.  A firm of patent and trade mark attorneys, McMaster Oberin Arthur Robinson & Hedderwicks, presumably acting on behalf of Medley Distilling Co, asked that acceptance of the application be withdrawn in a letter of 7 July 1999.  However, this request was refused by an Acting Deputy Registrar in a letter of 29 September 1999, on the grounds that he believed that the examiner had not committed an error in the course of examination.

Despite being granted two extensions of time within which to do so, the opponent did not serve any evidence in support in the matter.  As required by reg.5.11(1), the applicant's lawyers Koops Martin, advised, in a letter dated 19 May 2000, that the applicant did not intend to rely upon any evidence in answer to the opposition.  In that letter, Koops Martin made certain comments and allegations.  The opponent's attorneys, McMaster Oberin Arthur Robinson & Hedderwicks, requested a hearing in the matter in a letter dated 29 June 2000, and objected to any consideration of Koops Martin's allegations on the grounds that they were not substantiated by any properly served evidence.  In a further letter, dated 28 July 2000, McMaster Oberin Arthur Robinson & Hedderwicks included material it said was in rebuttal of the applicant's allegations.  As the delegate of the Registrar in the matter, I advised McMaster Oberin Arthur Robinson & Hedderwicks that I would not consider any material which was not properly served in accordance with the regulations and I refused to allow the extra material to proceedings.  The matter came before me for hearing in Canberra.  Representing the opponent by telephone at the hearing was Mr Colin Oberin.  The applicant chose not to be represented at the hearing.  In coming to a decision in this matter, I have had regard to Mr Oberin's submissions and the statements based on fact made in the Koops Martin letter of 19 May 2000.   However, I have not taken into consideration any submissions or allegations not supported by properly served evidence from either party.

Submissions
The notice of opposition listed a broad range of grounds but, at the hearing, Mr Oberin advised that he would be pursuing only those grounds under ss.43 and 44 in his submissions.  He reiterated some of the arguments put forward in relation to the failed application for revocation of acceptance and discussed the comments made by the Acting Deputy Registrar when refusing the application.

Mr Oberin said that the lack of any formal evidence did not preclude any findings in favour of the opponent, despite submissions to that effect made by the applicant.  He made further submissions in support of the opponent's case, including that the Registrar was not subject to the same rules of evidence as were applicable in the courts, could take into consideration his own knowledge and material held in the Trade Marks Office, and could rely upon grounds not raised by the opponent.  He also cited the public interest in ensuring that only marks which were qualified for registration should be allowed to be placed on the Register.

With respect to the s.43 ground of opposition, Mr Oberin's main arguments centred on the phonetic equivalence of the words T'QUILA and TEQUILA, and the deception or confusion which he alleged would ensue given that the applicant's statement of goods included "beverages containing tequila" and not just tequila itself - especially when requested in a crowded bar.  He said that, in the latter context, the bull device contained in the applicant's mark would not avoid deception or confusion because any person seeking the applicant's goods would refer to them as "bull T'QUILA" or "bull brand T'QUILA".

In relation to the s.44 ground, Mr Oberin said that the applicant's trade mark was deceptively similar to those prior registered trade marks owned by the opponent.  He said that the opponent's marks included or comprised the words EL TORO, which meant THE BULL in Spanish, or that the word TORO meant simply BULL in Italian.  He said that, given that the applicant's mark comprised the device of a bull and a word which was the phonetic equivalent of tequila - the goods sold by both parties - and that the opponent's marks included the Spanish or Italian words for a bull, then deception or confusion in the appropriate market was likely to occur.  He said that, in determining whether this was the case, I should consider several points.  These included that the "idea" of a trade mark would be more likely to be recalled than precise details, that goods might be ordered by a name suggested by a mark, and that slurred pronunciation of words - especially in the context of the bars and bottle shops where the respective goods were likely to be purchased - was an important issue.

Mr Oberin also quoted several passages from the Trade Marks Office Draft Manual of Practice and Procedure which he said, supported the case he was making.  This included the passage which discussed the comparison of trade marks containing English words with their foreign equivalents and the likelihood that purchasers would understand those foreign words.  He said that this would suggest that a foreign word should be cited against a device of an equivalent meaning.  Mr Oberin cited several cases which he said supported his argument here including, S.A. des Verreries de l'Etoiles App'n (1894) 11 RPC 142 (RED STAR BRAND); Dewhurst's App'n (1896) 13 RPC (C.A.) (THE GOLDEN FAN BRAND); Currie & Co's App'n (1896) 13 RPC 681 (COCK O'THE NORTH); Jafferjee v Scarlett (1937) 57 CLR 115; and Carlton and United Breweries v Lion Nathan (1999) ATMO 84 (19 August 1999) (LION).

Mr Oberin submitted that, notwithstanding any presumption of registrability at the examination stage, the onus is on the applicant at opposition, referring for support to Registrar of Trade Marks v Woolworths 45 IPR 411 (the WOOLWORTHS METRO case).  When an application was opposed, he submitted, an opponent was entitled to rely upon evidence in support and the applicant on evidence in answer to the opposition.

As I foreshadowed earlier, I have only considered some of the statements made in the Koops Martin letter of 19 May 2000, being mindful that certain claims were not supported by evidence.  Accordingly, I have given no weight to any unsubstantiated assertions regarding the opponent.  In that letter, the applicant denied each and every ground of opposition raised by the opponent.  It claimed that it had used its trade mark in business since November 1998 (four months after the date of application) and that the mark clearly distinguished its product.

Analysis
I can find no support in the opponent's submissions for those grounds in the notice of opposition which were not based on ss.43 and 44.  Thus, in relation to those other grounds, I find the opposition has not been successful.

Onus
As I have said above, Mr Oberin made submissions at the hearing that the onus lay with the applicant in opposition proceedings.  However, the mere filing of a notice of opposition containing a plethora of grounds which are unsupported by any evidence does not, in my view, effectively place the onus on an applicant to defend its application.  In relation to this question, s.55 of the Act reads:

Section 55
This section reads:

Decision

55. 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.

I believe that the words "having regard to the extent (if any) to which any ground on which the application was opposed has been established" make it clear that the onus is on the opponent to establish its grounds of opposition before there can be any onus on an applicant to refute it.  Here, the opponent has not served any evidence to support its grounds of opposition and the applicant has not served any evidence in answer to the opposition.  Therefore, I can only proceed to decide the matter on the facts before me and the relevant case law in relation to the grounds pursued.

Section 43
This section reads:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The word "connotation", in this context, refers to that which is implied within a trade mark itself - in addition to its essential or primary meaning.  The ordinary meaning of that word is given in the Macquarie Dictionary as:

1. the act or fact of connoting.  2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation): for example, the word "bum" has connotations of vulgarity.

In the Oxford English Dictionary the definition is given as:

1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore it can be said that the word refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  Considerations under s.43 must therefore concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.  The operation of this section does not depend upon the existence of a conflicting trade mark.

The trade mark in question here comprises the invented word T'QUILA and a bull device and it is necessary, for the purposes of s. 43, to look at that mark in the context of the goods.  These are "tequila and beverages containing tequila".  As was submitted by Mr Oberin, the word in the mark is the phonetic equivalent of the Mexican drink tequila.  Therefore, I do agree with him that the mark T'QUILA does connote that the goods on which it is used would contain that spirit drink.  However, where Mr Oberin and I part company is on his claim that the connotation in the mark would mean that consumers would believe that the goods should be only tequila.  Some of the goods are just that - but the statement also includes other beverages which only include tequila.  I believe that it is not unusual for "ready to drink" goods to be sold which include spirits and soft drinks or juices, such as "Bundaberg" rum with cola, "Jim Beam" bourbon whisky with cola, "Ruski" vodka with lemon, "Bacardi" rum with cola or lemon, and a mixture of others.  It would not require a huge effort to imagine "T'QUILA" tequila pre-mixed with orange, lemon, or tomato juices, and sold complete in a can or bottle - perhaps with a sachet of salt attached.  I am of the opinion that young adults, the apparent target market for these drinks, are very knowledgable about such combinations.  Therefore, the relevant public for the goods is part of a "culture" that is well used to such bar, club or party drinks being marketed in this way.  I also cannot believe that purchasers of the applicant's products would generally be in such a hurry, would usually purchase drinks unseen over the heads of other patrons, or would be in such an inebriated state, that they would be surprised or disappointed that the T'QUILA beverage they have obtained was not neat tequila.

I have considered Mr Oberin's argument that verbal requests for the applicant's goods might be for "bull T'QUILA" but I think that the novelty of the spelling of the word in the mark would be enough to counterbalance any possible deception or confusion with "EL TORO tequila".

Given all of the foregoing, I find that the opposition, so far as it relies upon s.43, is not made out.

Section 44
The relevant part of s.44 reads as follows:

Substantially identical or deceptively similar trade marks

44.(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.

In relation to this ground, the opponent has said that the subject trade mark is at least deceptively similar to its prior registered trade marks comprising, or including the words EL TORO for the same or similar goods in Class 33.  These registrations and the goods covered are:

240430(33)	EL TORO	All goods in Class 33 including tequila
278588(33)	EL TORO	Coffee liqueur being goods included in Class 33
520045(33)	EL TORO and sombrero device	All goods in class 33 including tequila

In deciding whether or not competing trade marks are deceptively similar in relation to each other, the tests are conveniently laid out in such cases as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641. and Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407, where, in the latter case, Windeyer J said, at 415:

(in relation to deceptively similarity)   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.

Section 10 of the Act defines a trade mark as being deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion.  Consideration should also be given to a normal person's impression based on a recollection of the opponent's marks.  In this regard, Luxmoore, L.J. expounded the test referred to as the doctrine of "imperfect recollection" in Rysta Ltd.'s Appn. (1943) 60 RPC 87. Any deception or confusion should be shown as likely to occur 'amongst a substantial number of persons', as per the proposition in Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97, at 101.

Mr Oberin has argued that the words EL TORO and TORO, contained in the opponent's registered trade marks, mean "the bull" and "bull", respectively, in Spanish and Italian.  He has then suggested that the Trade Marks Office should be citing prior filed and registered foreign word trade marks against applications for registration which contain devices with equivalent meanings.  I will note here that, in addition to the device of a bull in profile, the presently applied for mark includes the invented word T'QUILA.

As the delegate of the Registrar, I have already dealt with an issue relating to claims about the alleged deceptive similarity of a word trade mark on one hand and a device comprising an object suggested by that word on the other.  This was a case where the opponent's registered trade mark was the words GREAT WHITE SHARK, while the applied for mark comprised shark devices.  I refer here to Wolter Joosse on behalf of Joosse Apparel v Great White Shark Enterprises Inc. [1999] ATMO 59 (11 June 1999), where I said, as the delegate of the Registrar of Trade Marks:

...the registration of the name of a particular fish, bird or animal does not necessarily preclude other applicants from registering their own depictions of such creatures - unless it is shown conclusively that they are substantially identical with, or deceptively similar to the earlier marks - c.f. the plethora of KANGAROO trade marks grazing peacefully together on the Register.  As Mr Doyle said, there are many trade marks which include shark devices and the word SHARK, already coexisting on the Register.  Taking this into consideration, there is nothing before me to show that the applied-for trade marks are any more deceptively similar to the applicant's earlier mark than those extant registrations.  Accordingly, I think that someone who knew of the opponent's trade mark would not carry away the same impression when confronted with the present marks.  I therefore cannot agree that the subject device trade marks are deceptively similar to the opponent's word trade mark.

I think that the present instance is on all fours with the above case with respect to other BULL trade marks.  I think that the recollection that the ordinary purchaser would have of the respective marks here would be, in the applicant's case, the device of a bull and the unusual spelling of the drink contained in the bottle or can being purchased; while, in the opponent's case, it would be the words EL TORO.  In the latter instance, it is the case that Spanish and Italian speakers would see those words as meaning "bull".  However, I believe that, to most of those in the intended market, it is a reminder that the drink is from Mexico or, alternatively, it is the utterance that a bullfighter in Mexico (or Spain) makes as he attempts to incite a bull to attack him.

However, even if I am wrong here, the presence of the word trade mark EL TORO on the Register does not preclude any other person from applying for a trade mark covering tequila which includes a male bovine animal unless it is shown that the trade mark, as a whole, is substantially identical or deceptively similar to them.  The cases quoted by Mr Oberin on the comparisons of words and devices: RED STAR BRAND, THE GOLDEN FAN BRAND and COCK O'THE NORTH, all supra, can be distinguished, I think, because these are quite old cases where marketing, advertising and method of sale were all very different from those of today, and before there were the large number of devices depicting stars, fans and roosters, respectively, on the Register.  Similarly, in the more recent LION case, supra, the delegate found that the word mark LION, was deceptively similar to several marks comprising that word, together with lion devices, which were already coexisting on the Register.  He was of the opinion there that the word LION, solus, and the word LION combined with a lion device, was 'contextually' deceptively similar, as was that word and a lion device on its own, because it was the most apt word to describe that device.  However, here the applied for mark is a composite one comprising a bull device and the invented word T'QUILA, whilst the opponent's marks comprise or include the words EL TORO - not the word BULL.  I think that the competing marks here are quite different in appearance and pronunciation and, on that basis, can be distinguished from the LION case, supra.  Given all of the above considerations, I do not think that the present circumstance is one where there is a 'real tangible danger of deception or confusion occurring', as set out in the tests in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at 495 and more recently re-iterated by Justice French in Registrar v Woolworths, supra, at 428.

Accordingly, I find that the applicant's trade mark is not deceptively similar to the marks already registered by the opponent and that the opponent is not successful on this ground of its opposition.

Conclusion
I have found that the opposition has not been successful on either ground relied upon at the hearing.  I have also found that there has not been a case established in relation to the other grounds listed in the notice of opposition and I do not find in favour of the opponent there.  Accordingly, as the delegate of the Registrar in this matter, I dismiss the opposition as a whole.  It follows that, providing that the relevant fee is paid, the application may proceed to registration.

Costs
Having been successful in this matter, the applicant is entitled to whatever costs it has legitimately incurred in accordance with the regulations.  Thus, I award costs against the opponent, in accordance with the Official scale.

Ian Forno
Hearing Officer

15 December 2000