Michael Harvey v Lion-Beer, Spirits & Wine Pty Ltd

[2013] ATMO 5

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Michael Harvey to registration of trade mark application 1248610 (32) – EXTRA DRY - filed in the name of Lion-Beer, Spirits & Wine Pty Ltd

Delegate:	Alison Windsor
Representation:	Opponent – Susan Gatford of Counsel instructed by Noelene Treloar of McPherson+Kelley Lawyers Applicant – Ed Heerey of Counsel instructed by Sarah Murray of King & Wood Mallesons
Decision:	2013 ATMO 05 Section 52 oppositions: ground of opposition under section 41 pursued – trade mark descriptive of a characteristic of the goods - subsection 41(6) applies– evidence does not show use as a trade mark in its own right prior to filing date – opposition successful – application refused.

Background

1. The matter for determination in this instance is an opposition by Michael Harvey (‘the Opponent’) to the registration of trade mark application 1248610 which is owned by Lion-Beer, Spirits & Wine Pty Ltd (‘the Applicant’).  The application was filed on 25 June 2008 for goods in class 32 of the Nice Classification namely ‘Beers and ales’.  The trade mark is the words EXTRA DRY in plain, upper case letters.  I will refer to it in what follows as ‘the Trade Mark’.

2. The application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’) and in due course was accepted for possible registration endorsed as follows:

   Provisions of subsection 41(6) applied.

   Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.[1]  

   [1] Three earlier dated registrations in names other than that of the Applicant were cited against the Trade Mark in the first official report.  These registrations were demonstrated to belong to companies related to the Applicant.  Letters of consent were provided by the owners of the registrations, allowing application of the provisions of paragraph 44(3)(b) in the Applicant’s favour.

3. The acceptance was advertised in the Australian Official Journal of Trade Marks on 27 May 2010.  On 27 August 2010 the Opponent filed a notice of opposition (‘the Notice’), the Notice being couched in the broadest possible terms. 

4. Evidence in support, in answer and in reply as provided for by the Trade Mark Regulations 1995 (‘the Regulations’) were served and filed by the parties.  After receipt of the Opponent’s evidence in reply, the Applicant requested a hearing, shortly followed by confirmation from the Opponent that he also intended to appear and be heard. 

5. The opposition was set down to be heard in Canberra on 20 August 2012.  However, on 17 July 2012 the Applicant filed an application for permission to introduce further evidence into proceedings.  After some correspondence between the parties and the allocated hearing officer, it was decided to postpone the hearing so that the Opponent could have sufficient time to comment upon and respond to the further evidence.

6. Once the Opponent had served and filed his response to the Applicant’s further evidence, the matter was again set down to be heard, this time in Melbourne.

7. As a delegate of the Registrar of Trade Marks I heard the parties’ submissions at the hearing on 12 November 2012.  The Opponent’s submissions were given by Ms Susan Gatford of Counsel, instructed by Noelene Treloar of McPherson+Kelley Lawyers.  Mr Harvey was also in attendance.  The Applicant’s submissions were given by Mr Ed Heery of Counsel, instructed by Sarah Murray of King & Wood Mallesons.  Victor Li accompanied Ms Murray.

8. I note here that the hearing canvassed two oppositions – the one which I have described thus far as well as the opposition by the Applicant to Mr Harvey’s application 1312966 for the trade mark TOSSER’S EXTRA DRY.  While much of the evidence for both oppositions is the same, because the matters to be considered in each opposition are quite different, I have chosen to deal with them in two separate decisions which will issue simultaneously.

   Evidence provided

9. The evidence filed and served for the opposition consists of the following Statutory Declarations:

   Evidence in support

   • Denis Coldebella, made 17 March 2011
   • Timothy Baker, made 21 March 2011 with Exhibit XX-TB
   • Michael Harvey, made 23 June 2011 with Exhibits MH-1 to MH-3 (‘Harvey 1’)

   Evidence in answer

   • Sarah Margaret Elliott Murray, made 1 September 2011 with Exhibits SMEM-1 to SMEM-4 (‘Murray 1’).  Three of these Exhibits contain copies of Statutory Declarations filed during the original examination of the current application.  The declarations and their exhibits are as follows:

   sSMEM-2 – Josh Gaudry, made 15 December 2009, with Exhibits JG-1 to JG-13 and JG-16

   sSMEM-3 – Andrew Charles Disley, made 22 April 2010 with Exhibit AD-1

   sSMEM-4 – Derek George Orford, made 23 October 2009 (‘Orford 1’) 

   • Derek George Orford made 24 August 2011 (‘Orford 2’)

   Evidence in reply

   • Michael Harvey, made 1 February 2012 (‘Harvey 2’)

   Applicant’s further evidence

   • Sarah Margaret Elliott Murray, made 16 July 2012 with Exhibit SMEM-1 (‘Murray 2’), which consists of the following Statutory Declaration:

   sAshleigh David John Bellotti, made 16 April 2012

   Opponent’s response to further evidence
                   s   Adam Barkley, made 17 September 2012

   • Michael Harvey, made 17 September 2012 with Exhibits MH 1 to MH 4 (‘Harvey 3’).  Exhibit MH 1 consists of the following Statutory Declaration:

   Grounds pursued and onus

10. As stated previously, the Notice was couched in the broadest possible terms. However, at the hearing the Opponent pursued only one ground of opposition, namely the ground relevant to section 41 of the Act. I regard the remainder of the grounds set out in the Notice as having been abandoned.

11. The onus is on the Opponent to establish the ground it has pursued, on the balance of probabilities.[2]  The date at which the ground of opposition must be established is the date of filing of the Opposed trade mark (‘the relevant date’).[3]

    [2] See, for example, 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) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 283 ALR 743 per Greenwood J at [16] to [32]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

    [3] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

    Discussion and Reasons

12. The Trade Mark was accepted for possible registration under the provisions of subsection 41(6), as can be seen from the endorsements quoted previously at paragraph 2. 

13. The evidence of acquired distinctiveness put before me is that which was before the examiner:  the Orford 1 and Gaudry declarations which are exhibited to Murray 1 as well as the Disley declaration which exhibits a consumer survey.

14. Derek Orford (Orford 1) states that he is the Technical Services Director at the Applicant and that he has had 18 years experience as a Master Brewer.  He notes that he has had international experience as a Master Brewer on behalf of Heineken International in the Caribbean, the Netherlands and Ireland.  He has previously worked at breweries in the UK and had received his Master Brewer qualification in 1991.

15. In respect of the term EXTRA DRY, Mr Orford states the following:

    There is no term, nor any particular varieties of goods known as “extra dry”, in the brewing industry.  The term “dry”, rather than “extra dry” is descriptive of a particular style of beer.  “Dry” relates to the flavour of beer, derived from the extended attenuation (degree of fermentation) of beer in the brewing process.  Detailed below is an explanation of the production of “dry” beer.

    The Brewers Association of the USA have provided beer style descriptions since 1979, as a reference for brewers and beer competition organisers.  The current document lists over 130 recognised beer styles, all of which are currently in production, including established historical as well as modern styles.  Extra Dry beer does not appear on this list, indicating clearly that it is not a recognised beer style.

    This document, created in the USA, is used internationally.  For example, the Australian International Beer Awards use this document as a basis for the categorisation of entries used for judging.  To accommodate local requirements, only two additional recognised beer styles are added” “Australian Style lagers” and “Australian Style Pale Ales”, further indicating that even in the particular Australian context, “Extra Dry” is not regarded as a recognised beer style.

    Tooheys Extra Dry won a Gold Medal in the 2008 World Beer Cup in San Diego.  In order to enter this competition, it was entered in the category “American Style Lager” as the most applicable category, further indicating that there is no recognised category for “Extra Dry” beer.  (The world Beer Cup consisted of 2,864 entries, from 644 breweries, from 58 countries, in 91 categories of beer.)

    Due to the extended attenuation of “dry” beer, less residual sugar is present in the final product following fermentation, resulting in a relatively “dry” flavour profile.  At the start of the brewing process, a sugar solution, known as wort, is extracted from a mash, typically of barley malt and water.  The degree of fermentability of the wort is determined by the process conditions in the brewhouse.  Conditions are arranged such that the fermentability of “dry” beer is higher than for other, “regular” beers, such that more of the sugar present in the wort is able to be consumed by the yeast.

    The word “EXTRA” in “EXTRA DRY” is not related in any way to the technical meaning of the “dry” brewing process.  Beer can be described as either dry or not dry.  It is not brewing practice to describe a beer as “extra dry”, implying the beer is more dry than other beers.  Degrees of “dryness” are not defined within the brewing industry and there are no rules in the brewing industry in comparing whether certain beers are drier than other beers.

    I believe that as EXTRA DRY is not descriptive of any particular variety of beer, the use of EXTRA DRY as a trade mark or brand in relation to beer by any trader other than Lion Nathan[4] could result only from an improper motive on the part of a competitor.  I do not consider that other traders should be able to use EXTRA DRY in connection with beer.    

    [4] Lion Nathan Australia Pty Limited was the original applicant for the Trade Mark.  The change of name to the Applicant was notified by letter dated 1 September 2011.

16. Josh Gaudry declares that he is the Marketing Manager of Tooheys Extra Dry for the applicant, a position he has held since 2007.  He says that EXTRA DRY is a sub-brand existing within the Tooheys stable of brands.  He provides a history of the company from which I have extracted the following relevant material. 

17. The original Tooheys business was established in Sydney in 1869 and has traded consistently since then.  In 1985 the Tooheys and Swan breweries were bought by the Bond Corporation and in 1992 the Tooheys brewery was acquired by Lion Nathan Limited – the parent company of Lion Nathan (the original applicant), Tooheys and the entire Lion Nathan group.

18. Mr Gaudry states the following about the various beers and ales produced by Tooheys:

    In its first decades of operation the Tooheys brothers produced traditional English and German style dark beers.  The first beer brewed by Tooheys was a beer in this style known as TOOHEYS BLACK ALE.  This later became known as TOOHEYS OLD.

    In the 1930s, lighter lager beers became increasingly popular amongst Australian beer-drinkers.  In 1931 Tooheys began to produce its first lager beer (with bottom-fermenting yeast).  The beer was named TOOHEYS NEW SPECIAL.  This later became known as TOOHEYS NEW and then simply as NEW.

    Over the years, Lion Nathan has produced a range of different beers and sub-brands underneath the TOOHEYS parent brand.  “TOOHEYS” remains the parent brand.  Other brands which exist within the TOOHEYS family of brands include;

    (a)NEW (4.6% ABV lager);

    (b)PILS (4.5% ABV European style pilsener);

    (c)MAXIM (4.6% AV lower calorie lager);

    (d)EXTRA DRY (5% ABV dry lager); and

    (e)PLATINUM (6.5% ABV lager).

    Through extensive use, promotion and sales by Lion Nathan, these brands have developed their own market recognition as distinctive sub-brands within the TOOHEYS family.

19. Mr Gaudry states that in 1989 TOOHEYS DRY was launched in NSW as an extended fermentation beer in a brown bottle.  In 1994 it was re-launched in NSW as TOOHEYS EXTRA DRY in a clear bottle with new labeling and packaging.  He goes on to say:

    The name change from DRY to EXTRA DRY was a commercial decision made by Lion Nathan in response to the proliferation of “dry” beers then crowding the market.  In a market where competitors were producing “dry” beers and using this word descriptively within their brand names, Lion Nathan realized it needed to distinguish its product with an additional marker.  The addition of “EXTRA” to the brand name was a pure marketing exercise to create a new brand which would be separate and distinct from other “dry” beers.  It was also envisaged that EXTRA DRY could become capable of developing its own reputation, separate from the TOOHEYS parent brand, in the same manner as NEW had developed its own distinctiveness separate from TOOHEYS.

    Whilst Tooheys Dry merely described the Tooheys beer as being a “dry” style of beer, EXTRA DRY was launched as a brand in itself.  The name is not descriptive of the manner in which the beer is brewed.  The beer is not brewed to be “extra” dry.  The beer recipe was not changed from that used for TOOHEYS DRY.  As outlined in paragraph 14 above, it was simply a marketing decision to create a more distinctive and attractive brand to consumers.

    The EXTRA DRY mark has been used continuously by Lion Nathan in relation to the beer brand since the launch in 1994.  EXTRA DRY is sold in all States and Territories of Australia.  EXTRA DRY is one of the few national Australian beer brands.  The mark has also been used internationally in the Pacific Islands and the United Kingdom.

20. Mr Gaudry notes that the Applicant and companies related to the Applicant are already the registered proprietors of three Australian trade mark registrations which include the words ‘Extra Dry’.  Those registrations are the following:

Number & priority date	Owner	Trade mark	Classes
739429[5] 17 July 1997	Tooheys Pty Ltd	21 and 32 (Class 32 claims ‘beer’.)
1169672[6] 2 April 2007	The Applicant	TOOHEYS EXTRA DRY	9, 25, 28, 32, 41 (Class 32 claims ‘beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
750841[7] 11 December 1997	Castlemaine Perkins Pty Ltd	CASTLEMAINE EXTRA DRY	32 – ‘beers’

[5] This trade mark registration is endorsed with what was referred to in the past as a ‘claim to vary’ endorsement, namely: ‘In use, the description DRY appearing in the trade mark is varied in accordance with the application of the mark to other goods comprised in the specification’.

[6] This registration is endorsed as having been accepted under the provisions of subsection 41(5) and paragraph 44(3)(b). 

[7] This registration is endorsed with a ‘claim to vary’ as follows:  ‘When the trade mark is used for items in the specification of goods other than EXTRA DRY BEERS, the word DRY in the trade mark will be changed to accord with those other items’.

1. The exhibits to the Gaudry declaration provide a large number of examples of the words ‘Extra Dry’ in use upon the relevant goods, as well as on promotional items used in marketing of the goods.  The labels upon the goods appear to have changed at various stages since the beer was first introduced onto the market.  The original TOOHEYS DRY beer label and some subsequent labels for the re-branded EXTRA DRY beer can be seen in the image below (Exhibit JG-1):

2. The original Gaudry declaration provided to the examiner included Confidential Exhibits JG-14, JG-15 and JG-16.  Exhibit JG-14 provided a statement of the Applicant’s annual expenditure on advertising for the years 2003 to 2008, while Exhibit JG-15 provided a statement of sales for the same period.  Neither of these exhibits has been provided for the purposes of this opposition.  Exhibit JG-16 has been supplied and consists of a table showing the sales volume figures for the years 2003 to 2007.  While the applicant has claimed the figures as confidential, I can say that the sales volumes provided equate to every member of the whole population of Australia, in any one of those years, consuming more than 2 litres of the Tooheys Extra Dry beer.

3. The Disley declaration was provided in response to the examiner’s suggestion that market research or surveys would be useful in supporting the Applicant’s case for registration.  The survey was carried out online and Mr Disley describes it as follows:

   [O]n 22 February 2010 I commissioned a market research company called “TNS” to carry out a consumer survey on behalf of Lion Nathan (“Consumer Survey”).  TNS is a multinational company that is also based in Australia.  TNS in Australia specialises in quantitative and qualitative market research and operates across the following business sectors: FMCG, finance, technology, media, healthcare, automotive, political, social, travel and leisure.

   The Consumer Survey was carried out online, through the TNS OnlineBus from 25 to 28 February 2010.  There were 960 people across Australia taking part in the Consumer Survey, with 381 people involved current beer drinkers.  Exhibited to me at the time of swearing this declaration and marked “AD-1” is a copy of the report containing the results of the Consumer Survey (“Survey Report”).  The research methods that were used to undertake the Consumer Survey are fully described in the Survey Report.

   The two questions that I requested TMS to include in the Consumer Survey were:

   (a)“Who makes Extra Dry beer”; and

   (b)“If you were in a bar or bottle shop and wanted to buy the brand shown below [image of EXTRA DRY bottle inserted into the question], what would you personally ask for?

   (i)Extra Dry

   (ii)Tooheys Extra Dry

   (iii)Other (please type in).”

   We also included a third question, which was to determine whether the person responding to the Consumer Survey was an EXTRA DRY buyer.  

4. Mr Disley says that the survey results show that 62% of the beer drinkers who responded to the survey nominated Tooheys as the maker of Extra Dry beer.  In addition, he states that on the question of how people ask for the beer, 22% ask for it by the name ‘Extra Dry’ without any reference to Tooheys. 

   Evidence in support

5. Moving on to the Opponent’s evidence in support, Mr Harvey has provided three declarations during the course of proceedings.  The earliest dated declaration, Harvey 1, states that since 1994 Mr Harvey has worked in the sales and marketing industry which he says includes working with the beer and brewing industry as a promoter and marketer.  In 2010 he says that he began manufacturing a type of beer intended for release under the trade mark ‘Tossers Extra Dry’, a beer which is intended for sale through night clubs and hotels, with a target market of 18 to 38 year old males and females.

6. Mr Harvey’s comments make it clear that he considers ‘extra dry’ to be a style of beer.  He has provided in the Exhibits to his declaration the results of internet searches which he says have revealed that there are many examples of commercial beers throughout the world which have used the term ‘extra dry’ to describe a style of beer.  Included within his searches is reference to a website at which is devoted to the history of beer and breweries.  This website includes a section where its members can buy and sell beer-related items including labels, cans, bottles and other beer-related products. 

1. Mr Harvey says that a search of the website reveals that there are numerous examples of beers sold under the description ‘extra dry’ around the world and dating from approximately 1941.  He has provided examples of some of the beer memorabilia labeled with the expression ‘extra dry’ which were for sale through the website.

2. In addition, Mr Harvey has provided an extract from a book entitled ‘Beer’ written by an international beer writer Michael Jackson and published in 1998.[8]  The extract forms Exhibit MH-3 and consists of a section of the book labeled ‘Aperitifs: Extra-Dry Pilsner Lagers’.

   [8] ‘Beer’, written by Michael Jackson, published in 1998 by Dorling Kindersley, edited by Sharon Lucas.

3. The remainder of the evidence in support consists of the declarations of Denis Coldebella and Timothy Baker.  Mr Coldebella has provided his declaration as evidence for this opposition as well as for the concurrent proceedings for application 1312966.  He states that at the time of making the declaration he was the out-going General Manager of Southern Bay Brewing, the business contracted to produce the Opponent’s own beers under his ‘Tossers’ brand. Mr Coldebella says he has had 32 years in the brewing industry including 13 years with the Fosters organisation.  He indicates that he has been aware of ‘extra dry’ as a style of beer since the 1990s, and that it is a recognized style in beer judging.  He gives his opinion that that ‘extra dry’ is a style of beer and those words should not be capable of registration as a trade mark.

4. Timothy Baker states that he is the editor of Beer & Brewer magazine and had been writing about beer for two years at the time of making his declaration.  He says that he became aware of ‘extra dry’ as a style of beer prior to beginning his writing about beer.  He states his belief that the term is a style of beer because he knows it as a type of pale lager originating from Germany.  He also says:

   The late Beer Hunter Michael Jackson included a section on “dry beer” in his list of beer styles.  Dry, super dry or extra dry’s are beers where the sugar is extracted and fermented longer, making it light and crisp with a less bitter aftertaste.

5. He gives his opinion that ‘extra dry’ is a style of beer and those words are not capable of being a trade mark.

   Evidence in answer

6. Murray 1 brings into evidence in this opposition the evidentiary material which was supplied to the examiner and which I have summarised previously.  New material is contained in Orford 2 which was made in response to the Opponent’s evidence in support.

7. Mr Orford’s main point is that the examples of use of the term ‘extra dry’ provided in the evidence in support are examples of beers of foreign origin.  He also notes that in his experience the term ‘extra dry’ is not, nor has ever been accepted as a style of beer in beer judging.  He states that he has judged beers at the Australian International Beer Awards on two occasions in recent years and that at neither event was there ‘a single instance where any judge used the term ‘extra dry’ to describe a beer or beer style’.

8. I shall refer to matters raised in the evidence in reply and in the further evidence where appropriate in what follows.

   Section 41 – trade mark not capable of distinguishing

9. Section 41 of the Act provides:

   Trade mark not distinguishing applicant’s goods or services

   41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:  For applicant and predecessor in title see section 6.

   Note 2:  If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

   (2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

   Note:  For goods of a person and services of a person see section 6.

   (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a) the Registrar is to consider whether, because of the combined effect of the following:

   (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
   (ii) the use, or intended use, of the trade mark by the applicant;
   (iii) any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
   (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   Note 1:  For goods of a person and services of a person see section 6.

   Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   (6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

   (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
   (b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   Note 1:  Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)  the time of production of goods or of the rendering of services.

   Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

10. The Applicant submitted that the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 was relevant to the Registrar’s consideration of section 41 as it referred to the legislature’s true intention when section 41 was enacted in 1995. In her oral submissions on behalf of the Opponent, Ms Gatford noted that as the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 would not come into force until April 2013, it was not relevant to this opposition. She noted in her written submissions that the scheme of section 41 as analysed and explained by Branson J in the Oregon[9] case remained applicable.  I concur with this submission.

    [9] Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498.

11. Branson J’s analysis of section 41 has been quoted many times, and I think it is appropriate to quote it once again. At p 504 she stated:

    Each of ss 33(1) and 41 involves the concept of the registrar being “satisfied”. Where the Act requires the registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities: Rejfek v McElroy (1965) 112 CLR 517 at 521. That is, that the registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

    Subsections (3)–(6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the registrar to conclude:

    (a)  that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

    (b)  that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

    (c)  that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

    The structure of s 41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

    If the registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

    If the registrar reaches conclusion (b) above, then the provisions of paras (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar will not reject the application pursuant to s 41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar must reject the application pursuant to s 41(2).

    If the registrar reaches conclusion (c) above, then the provisions of paras (a), (b) and (c) of s 41(5) are brought into operation. If the registrar, having considered the combined effect of the matters listed in subparas (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the registrar, having considered the combined effect of the matter listed in subparas (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the registrar must reject the application: s 41(2).

12. The Opponent has submitted that the examiner correctly raised grounds for rejecting the application under the provisions of subsection 41(6) on the basis that the Trade Mark refers to a quality of the beer the Applicant is producing.  The Applicant has contended that the term ‘extra dry’ is not a recognised term for any particular variety of beer and that it is not descriptive of the manner in which the beer is brewed. Mr Heerey submitted that:

    The name EXTRA DRY is not descriptive of the manner in which the beer is brewed, as degrees of dryness are not defined within the brewing industry and there are no rules in the brewing industry in comparing whether certain beers are drier than other beers. 

    […]

    As there are no rules in comparing the dryness of beer – the “extra” in EXTRA DRY is not a relevant brewing term that other brewers must have the right to use.  Put another way, the addition of the word “extra” is a vague and relative term with no specific reference point to describe any particular degree of dryness of the beer.

    Consistent with the lack of any specific descriptive meaning of “extra dry” beer, when Lion changed the name of its product from DRY to EXTRA DRY in 1994, the recipe did not change and the beer was not brewed to be extra dry.

    As such, the addition of the word “extra” does not ordinarily indicate “the kind, quality … or some other characteristic” of the beer.  Rather, the addition of the word ‘extra” is arbitrary and unusual rather than customary, normal or common, and is thus inherently adapted to distinguish.    

13. In the matter of the amount of inherent adaptation to distinguish present in the term ‘extra dry’ in use on beers and ales, I find I agree with the views of both the examiner and the Opponent.  To begin with, it is obvious that there are other beers on the market which describe their nature as ‘extra dry’.  It is true that many of these beers originate in countries other than Australia, and it is also true that many of the examples the Opponent has provided of beers carrying the words are without strong provenance as to date of production or original source.  However, it cannot be argued that the term ‘extra dry’ is the Applicant’s invention.  There have been (and arguably still are) other beers from a number of jurisdictions that have used the term ‘extra dry’ quite independently of the Applicant.

14. There is another matter which I consider needs to mentioned at this stage and that is the utterly descriptive nature of the term ‘extra dry’.  The Opponent raised the issue and provided a definition of the word ‘extra’[10] as meaning ‘beyond or more than what is usual’.  The Opponent went on to say that ‘extra dry’ therefore means ‘more than usually dry’.

    [10] Macquarie Concise Dictionary, 5^th edition

15. The word ‘extra’ is adjectival in the expression ‘extra dry’.  The online version of the Macquarie Dictionary[11] provides the following definitions for the word as an adjective:

    Adjective 1.  beyond or more than what is usual, expected, or necessary; additional:  an extra edition of a newspaper; an extra price.

    2.  better than what is usual:  extra fineness.

    3.  Colloquial extraordinarily good.

    [11] The Macquarie Dictionary Online © Macquarie Dictionary Publishers Pty Ltd. (Accessed 15 January 2013)

16. Looking at the two words in the unembellished form in which they appear on the trade mark application, they appear to refer to a beer or ale which is more than usually dry.  In a field where a ‘dry’ beer is an accepted style of beer to both consumer and expert, the expression ‘extra dry’ on a bottle is not meaningless.  It is a clear description of a beer which is dry but to an extent somewhat more so than the product which has been accepted as the norm in the market for dry beer.[12]  It is thus a term, which other beer producers may reasonably a need in the ordinary course of trade to use to describe their own goods.

    [12] It appears that the term ‘extra dry’ is in reasonably common use in the wine industry.  The entry for the word ‘extra’ in the on-line Oxford English Dictionary includes references as far back as 1907 referring to its use with respect to wines. 

17. In the Michigan decision,[13] Kitto J said the following about inherent adaptation to distinguish:

    That ultimate question must not be misunderstood [that is, "whether the mark is registrable as being 'adapted to distinguish' the applicant's goods"]. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v W. and G. Du Cros Ltd. (1913) AC 624 at 634, 635) Lord Parker of Waddington having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (ie. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R. J. Lea, Ltd. (30 RPC 216 at 227); but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

    [13] Clark Equipment Co V Registrar of Trade Marks (1964) 111 CLR 511

1. I am satisfied that the term ‘extra dry’ when applied to beers and ales is descriptive of a characteristic of the goods, describing them as beers and ales which are drier in nature than that which is generally accepted or expected of that characteristic in the relevant market.  The term is therefore one which other traders are likely to think of and want to use, without any improper motive, in respect of their similar dry beers and ales.  The Trade Mark therefore is lacking any inherent adaptation to distinguish and I find that the provisions of subsection 41(6) apply to it.

2. However, as the Applicant has submitted, it has made very substantial use of the Trade Mark in Australia.  While the actual sales and advertising figures which were provided to the examiner have been removed from the Applicant’s evidence and thus form no part of this opposition proceeding, it is clear that the goods bearing the Trade Mark are well known and widely drunk throughout the whole of Australia.  Whether that fact amounts to clear evidence that the words EXTRA DRY have developed a secondary meaning as a trade mark of the Applicant requires further investigation.

3. In the Treat decision[14] Jacob J of the UK High Court of Justice considered the evidence provided in the action between the parties.  He said:

   I have already described the evidence used to support the original registration.  It was really no more than evidence of use.  Now it is all too easy to be beguiled by such evidence.  There is an unspoken and illogical assumption that ‘use equals distinctiveness’.  The illogicality can be seen from an example:  no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods.  He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. 

   [14] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281

4. Justice Jacob then went on to say the following:

   It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader.  This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.

5. The evidence of use that the Applicant provided contained well over 100 representations of the Trade Mark in a variety of situations but of all of these, only a very few do not include one or more other distinctive trade marks.  The majority of examples of the Trade Mark provided in the evidence show that it is used with the word ‘Tooheys’.  The examples of labels shown previously at paragraph 24 all show the Trade Mark accompanied by the word ‘Tooheys’ as well as the stag head device which the Tooheys company has consistently used.[15]  This appears to be the norm for the labelling of the Applicant’s goods under the Trade Mark.

   [15] Lion Nathan Australia Pty Limited has now registered versions of the stag head device simpliciter as a trade mark under registrations 1042909, 1121837, and 1301663.

6. The Applicant has submitted that the goods are commonly referred to by the Trade Mark, without reference to the parent brand Tooheys, and that the Trade Mark is recognized as such by purchasers.  In support of this and following an invitation from the examiner, the Applicant commissioned an online consumer survey which I referred to earlier in this decision at paragraphs 26 and 27.  Needless to say, the Applicant and the Opponent have formed opposite viewpoints as to what the survey actually reveals.

7. The survey was conducted between the 25^th and 28^th of February 2010, that is, post the filing date of the application.  Of the 960 people who responded to the survey, 381 (or 40%) were current beer drinkers.  Of these, when asked the question ‘Who makes Extra Dry beer?’, 62% (236 people) responded with the word ‘Tooheys’. 

8. The relevant respondents were then shown a picture of a bottle of Tooheys Extra Dry and asked the following question:  ‘If you were in a bar or bottle shop and wanted to buy the brand shown below, what would you personally ask for?’  62% of the respondents stated that they would ask for ‘Tooheys Extra Dry’.  22% (83 people) indicated that they would ask for ‘Extra Dry’.  

9. The Applicant submitted that the survey indicated that about two thirds of beer drinkers of all ages recognise the words ‘extra dry’ as distinguishing its beer from the beer of other manufacturers, and that this level of recognition rises to over three quarters of beer drinkers under the age of 40.  This result, the Applicant submitted, demonstrates a very considerable recognition of its Trade Mark and should serve to support a decision under either of subsections 41(5) or 41(6).

10. The Opponent has questioned whether the survey is relevant because it was conducted post the filing date of the Trade Mark, and whether the results are statistically sound.  It has pointed out that only 381 people provided answers to the questions asked in the survey.  It also questions the usefulness of the questions, arguing that the question ‘Who makes Extra Dry beer’ directs a response as to a manufacturer but says nothing about ‘the nature of the consumer’s recall and whether the consumer would differentiate Tooheys Extra Dry from Extra Dry.  It simply asks who makes extra dry tasting beer’.  The Opponent then goes on to say that the fact that 62% of respondents when shown a picture of a bottle of Tooheys Extra Dry ticked the box which said that they referred to it by those words despite the fact that the Trade Mark tick-box was the first option presented (a position apparently notoriously likely to be the first choice of respondents) demonstrated the fact that the Trade Mark had not developed a secondary meaning.  

11. Again, I must admit a preference for the Opponent’s point of view in this matter.  In respect of the date on which the survey was conducted, the Applicant submitted that given the claimed recognition of the Trade Mark by consumers prior to the filing date, there is no reason to think that this recognition would have changed by the time the survey was conducted.  In the circumstances, this is not an unreasonable submission. However, I consider that the survey has done little to assist the Applicant in its case.

12. The Applicant has provided information which suggests it has sold a huge volume of beer over the years for which it has provided such figures.  The survey consists of relevant responses from only 381 people which, if my understanding of the beer drinking habits of Australians is at all accurate, is a mere drop in the ocean.  83 people asking for the beer by reference to the Trade Mark is hardly a persuasive number of positive responses.  Even the 236 people asking for the beer by its full labelling – ‘Tooheys Extra Dry’ – is a very small sample of the relevant market but it does point to the importance of the word ‘Tooheys’ in the relevant public’s recognition of the producer of the goods. 

13. As I mentioned previously in paragraph 50, the overwhelming proportion of the examples that the Applicant has provided demonstrate that the Trade Mark is usually used with the word Tooheys and the stag head device.  In the Cranberry Classic decision[16] Wilcox J said:

    Ocean Spray has spent a considerable amount of money on the promotion of its range of drinks, including Cranberry Classic, but the range had been promoted under the name “Ocean Spray”.  Given that fact, and the invariable presence on the label of the “Ocean Spray” trade mark, it seems to me likely that any association, in the public mind, between this product and the applicant company would have been derived from the use of the words “Ocean Spray” in advertising and on the labels of the products, not from the use of the words CRANBERRY CLASSIC. 

    [16] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; (2000) 47 IPR 579

14. In Chocolaterie Guylian[17] decision Sundberg J stated:

    I accept, as Guylian contends, that a sign may be registrable as a trade mark even though it is used together with other trade marks.  However, where an application for registration relies on use the question is whether the particular sign for which registration is sought has itself been used as a trade mark so as to become capable of distinguishing the relevant goods.  Each case turns on its own facts and here it is my impression of the packaging and promotional material as a whole that it is the “Guylian” trade mark, together with the “G” logo, that does the work of distinguishing the goods, not the seahorse shape.

    [17] See Note 2.

15. Despite the Applicant’s arguments to the contrary I am of the opinion that it is the Tooheys trade marks that do the work of distinguishing the goods, not the Trade Mark.  While the Trade Mark itself appears very prominently and is presented in large and somewhat stylized fonts, it did not and does not appear on the beer labels on its own.  Neither does it appear very often in advertisements on its own.  I am satisfied that despite its prominence, the Trade Mark is to all intents and purposes a description of the nature of the beer and/or ale the Applicant produces. 

16. The Applicant’s final submissions list a number of other examples of acquired distinctiveness which had been decided by the courts.  It provided these in support of its argument that the Trade Mark had likewise made such an acquisition. 

17. Each of the decisions listed was decided on the facts of the particular case and I am well aware that applications which are to be considered under the provisions of subsection 41(6) may proceed to registration on the presentation of appropriate evidence of use.  However, I do not consider that these decisions are necessarily relevant to the decision I must make here and may, in any event, be met by examples of cases which might be more apposite to the present issue where a lack of acquired distinctiveness was found.[18]  On the facts of this case, the evidence provided has not satisfied me that the Trade Mark has developed a secondary meaning as a trade mark over and above that ordinary description. 

    [18] Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117; Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606; (2009) 81 IPR 354; [2009] AIPC 92-344; and notably Larry Powell v Glow Zone [1997] FCA 1401 where the words CAPS THE GAME were primarily (if not solely) descriptive overseas yet lacked inherent adaptation as a trade mark within Australia.

18. The provisions of subsection 41(6) apply to the Trade Mark, the Applicant has not established to my satisfaction that the Trade Mark has developed the required secondary meaning and thus the Opponent has succeeded in establishing the ground of opposition.

    Decision 

19. The ground of opposition under subsection 41(6) having been established, I refuse to register trade mark application 1248610.

    Costs

20. The Opponent has been successful and is entitled to the costs it has requested.  I award costs against the Applicant according to the Official scale as set out in Schedule 8 to the Regulations.

    Alison Windsor
    Hearing Officer
    Trade Marks and Designs Hearings
    22 January 2013