Mollydooker Wines Pty Ltd v A Pale Chook Pty Ltd

[2022] ATMO 160

TRADE MARKS ACT 1995

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

Re:Opposition by Mollydooker Wines Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by A Pale Chook Pty Ltd to remove trade mark number 1110015 (33) – THE BOXER – in the name of Mollydooker Wines Pty Ltd

Delegate:	Louise Tuohy
Representation:	Opponent: Benjamin Gardiner of counsel instructed by Thomson Geer Lawyers Applicant: Sonia Stewart of counsel instructed by Slaters Intellectual Property Lawyers
Decision:	2022 ATMO 160 Trade Marks Act 1995 (Cth) – application under sections 92(4)(a) and 92(4)(b) – partial use during period established – discretion exercised – trade mark to remain on the Register

Background

1. Mollydooker Wines Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration Number:             1110015

   Trade Mark:  THE BOXER (‘Trade Mark’)

   Filing Date:  24 April 2006

   Registered Goods:                 Alcoholic beverages being wines

2. On 28 October 2020, A Pale Chook Pty Ltd (‘Removal Applicant’) filed two applications, the first application seeking complete removal (‘Complete Removal’) of the Trade Mark from the Register for non-use, and the second application seeking partial removal (‘Partial Removal’) of the Trade Mark from the Register. The goods for which the Removal Applicant submits ought to be partially removed are all goods for which the Trade Mark is registered with the exception of ‘shiraz wines’ (‘Amended Goods’).

3. On 11 December 2020, the Removal Opponent filed its Notices of Intention to Oppose the Complete Removal and Partial Removal of the Trade Mark, followed by its Statements of Grounds and Particulars on 14 December 2020.

4. On 18 March 2021, the Removal Applicant filed its Notices of Intention to Defend the Complete Removal and Partial Removal applications.

5. The Removal Opponent subsequently filed the following declaration as evidence in support:

   ·     Declaration of Sarah Marquis, Chief Executive Officer and Director of the Removal Opponent, made on 17 June 2021, with Exhibits Tab-1 to Tab-6 (‘Marquis declaration’).

6. The Removal Applicant did not file any evidence.

7. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. Both parties requested a hearing. The matter came before me, a delegate of the Registrar of Trade Marks, on 4 August 2022. Benjamin Gardiner of counsel instructed by Thomson Geer Lawyers appeared via video link on behalf of the Removal Opponent. Sonia Stewart of counsel instructed by Slaters Intellectual Property Lawyers appeared via video link on behalf of the Removal Applicant. The representatives’ oral submissions were supported by written submissions filed prior to the hearing.   

   Legal Framework

8. Part 9 of the Trade Marks Act 1995 (Cth) (‘Act’) deals with Complete Removal and Partial Removal of trade marks from the Register due to non-use.

9. The Removal Applicant nominated both s 92(4)(a) and s 92(4)(b) of the Act as the grounds for the Complete Removal and Partial Removal.

10. Sections 92(4)(a) and 92(4)(b) of the Act provides:

    (4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

    (a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

    (i)  to use the trade mark in Australia; or

    (ii)  to authorise the use of the trade mark in Australia; or

    (iii)  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 to which the non‑use application relates and that the registered owner:

    (iv)  has not used the trade mark in Australia; or

    (v)  has not used the trade mark in good faith in Australia;

    in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

    (b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

    (i)  used the trade mark in Australia; or

    (ii)  used the trade mark in good faith in Australia;

    in relation to the goods and/or services to which the application relates.

11. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[1] As the Trade Mark was filed on 24 April 2006, which is more than five years prior to the filing date of the applications, I need only consider the applications for Complete and Partial Removal under s 92(4)(b).

    [1] Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.510]. See also Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.

12. For the purposes of s 92(4)(b) the relevant period is the three year period ending on 28 September 2020 (‘Relevant Period’).

13. Pursuant to s 100(1) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).

14. In Woolly Bull Enterprises Pty Ltd v Reynolds,[2] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[3] Little weight is to be given to assertions of use which are not supported by documentary evidence.[4] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof.’[5]

    [2] [2001] FCA 261, [16].

    [3] Ibid [17].

    [4] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

    [5] (1962) RPC 1, 7.

15. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[6]

    [6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

16. In accordance with s 101 of the Act, if the grounds for Complete Removal or Partial Removal are established, I may decide to remove or partially remove the Trade Mark from the Register in respect of any or all of the goods identified in the applications, or if satisfied it is reasonable to do so, decide not to remove or partially remove the Trade Mark from the Register.

    Use of the Trade Mark during the Relevant Period

17. The Marquis declaration declares that Sarah Marquis is the Chief Executive Officer and Director of the Removal Opponent since 2006. The Removal Opponent is a family owned winery based in McLaren Vale, South Australia. Ms Marquis states the Removal Opponent has continuously used the Trade Mark in relation to wine products since its earliest commercial use in 2006.  

18. TAB 1 to the Marquis declaration contains eight extracts from the internet archive Wayback Machine of the Removal Opponent’s ‘mollydookerwines’ website dated from March 2018 to Aug 2020. Five extracts feature the Trade Mark heading a popup dialogue box with message, which is exposed when hovering over the image of the corresponding wine bottle with label, in the website’s “our wines” page. Three extracts show the Removal Opponent’s online storefront page where a shiraz wine bearing the Trade Mark is displayed for sale using an image of a wine bottle with label next to text recording the vintage, Trade Mark, a message about the wine and a digital cart.

19. TAB 2 to the Marquis declaration contains copies of the Removal Opponent’s technical sheets of its shiraz wine product bearing the Trade Mark, for the vintages 2017 to 2019. The sheets feature two wine bottles with different views of the label beside the Trade Mark and the word shiraz inside a red Banner with the cartoon device of a boxer as background.  The sheets are produced for the benefit of customers, and for use in the marketing and distribution of the Removal Opponent’s shiraz product bearing the Trade Mark. Each sheet also lists the awards each vintage has received dating back to 2005. Below I have reproduced the heading of the technical sheet for 2019:

20. Tab 3 and Tab 5 to the Marquis declaration contain thirteen copies of social media posts from the Mollydooker Wine Instagram and Facebook accounts dated from 2018 to 2020. The posts contain images, text and links promoting the Trade Mark. The copies include posts about the Removal Opponent’s Father’s Day 2020 competition where the prize was a ‘6 litre Boxer shiraz’, and details of the Removal Opponent’s wine tasting events held at hotels and bottle shops around Australia where the Removal Opponent’s shiraz wine bearing the Trade Mark was selected for the instore tasting. Each post’s image shows a wine bottle with label bearing the Trade Mark and the messages credential ‘The Boxer’, ‘Boxer’ or ‘#TheBoxer’ shiraz wine and informs followers that the product is available for sale or tasting. I have reproduced a Facebook post, dated 3 September 2020 which shows the wine label used to promote the Trade Mark and Fathers Day competition below:

21. Tab 4 to the Marquis declaration contains two examples of the Removal Opponent’s use of the Trade Mark on direct email marketing. The first email promotes the release of four wines from the Removal Opponent’s 2017 ‘Lefty range’ and includes an offer to shop for the shiraz wine bearing the Trade Mark as reproduced below:

22. The second email in Tab 4 announces the awards received from the Australian Winestate Wine Show and the Wine Spectator for the Removal Opponent’s shiraz wine bearing the Trade Mark. The email includes details and links to sales. I have reproduced different parts from the email below:

    Email 2 (image 1)

    Email 2 (image 2)

23. Tab 6 of the Maquis declaration contains an extract from the internet archiving Wayback Machine of the Booze Brothers website dated 6 April 2019. The Booze Brothers is an online bottlershop and part of the Removal Opponent’s distribution network. The extract shows an offer to shop for “Mollydooker ‘The Boxer’ Shiraz” and includes an image of the wine bottle with label. Tab 6 also contains a copy of a brochure from the Lakes Hotel bottle shop dated December 2017 that lists the store specials. Under the wine section it advertises “Mollydooker ‘the Boxer’ Shiraz” and includes an image of the wine bottle with label. 

24. In response the Removal Applicant’s primary submissions are that there is no evidence that the words THE BOXER are used as a stand alone badge of origin and that the words THE BOXER are merely the name of a product or style variant under the MOLLYDOOKER house brand (‘house brand’) or that the evidence indicates those words are used with additions or alterations that substantially affect the identity of the trade mark, namely as part of a composite mark.

25. The Removal Applicant referred to the decision in Pinnacle Runway Pty Ltd v Triangl Limited[7]a case that recognised the common practice in the fashion industry to use women’s names as style names to distinguish between different styles sold by the same house brand and that there was no use of the word DELHINE as a trade mark. In this matter, I find the Removal Opponent’s arguments more persuasive as my assessment requires a recognition of practice within the Australian wine industry. In C A Henschke & Co v Rosemount Estates Pty Ltd,[8] the Full Court found that individual product names were important to the wine industry.  Further in Samuel Smith and Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd,[9]Charlesworth J found it is common practice for wines to be labelled with product names that may also form the function of a brand or sub brand, and that not only is the concept of sub-branding common in the development of and marketing of wine products, it is also a matter of considerable commercial importance. Further, traders and customers alike referred to wines in a shorthand manner by their product names only. In that regard the product names serve the function of a brand.  

    [7] (2019) FAC 1662, (Murphy J).

    [8] [2000] FCA 1539, (Ryan, Branson and Lehane JJ)

    [9] (2016) FCA 1515, [41] to [46], (Charlesworth J).

26. In my assessment of the evidence I am satisfied that the Removal Opponent has used the Trade Mark in Australia during the Relevant Period for shiraz wine. In the evidence presented the Trade Mark has been used directly on wine labels which are applied to the Removal Opponent’s shiraz wine product. An example of the label appearing on the wine bottle is reproduced below:

27. The image shows a wide label to the extent that when it is applied to the bottle it does not allow a full front view. The label is divided in half by two different backgrounds. Starting from the left (‘front view’) the house brand appears in fancy script inside a banner, the words THE BOXER sit below the banner, in a smaller font and underlined with a string of dots, which highlights and distinguishes the words THE BOXER from the other elements and mandatory labelling requirements such as words Shiraz, Sarah & Sparky Marquis (the estate owner names) and the volume. Beside the words in the second half of the label is an illustrative cartoon device (‘cartoon device’) of a boxer with two left gloves.

28. Having regard to the visual impact of the Removal Opponent’s label, the front view shows the Trade Mark underlined and separate to the house brand which is isolated. In addition, the cartoon device provides a cue for identifying the bottle as THE BOXER particularly as the wide size of the label means that the device element may be shown as an alternate front view. In my opinion, the Removal Opponent’s use of the Trade Mark in the label and the recognition accruing to it is not diminished bv the concurrent use of words THE BOXER being used with the house brand and/or the cartoon boxer device in the form used on labels of the Removal Opponent’s shiraz wine product. In Sports Warehouse, Kenny J held:

    I accept, as Sports Warehouse contended, that a sign may be registrable as a trade mark even though it is used together with another trade mark, and that there can still be use of a mark where it is a component of a larger composite mark: see Chocolaterie Guylian at 93 [97]; also E & J Gallo Winery at 662 [68]-[69]; also E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69 at 108 [186] (Flick J). Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 74 IPR 246 (‘Colorado’) is not authority for the contrary proposition. Each case turns on its own facts and the trade mark in question viewed in the context of those facts.[10]

    [10] [2010] FCA 664, [133].

29. In addition, I consider that the Removal Opponent’s promotional material has focused on educating the public to see the Trade Mark as a product name and also indicative of trade source by exposing consumers to the plain words THE BOXER and showing the Trade Mark used in different font and against different backgrounds. Such as the Removal Opponent’s technical sheets which draw attention to the Trade Mark by mixing elements from its label and features the Trade Mark inside a red banner.

30. The evidence shows the Removal Opponent has objectively committed to offering its shiraz wine bearing the Trade Mark in the course of trade. The Removal Opponent’s website shopfront uses the Trade Mark as the heading for purchases and promotes it interactively by using it as the heading in a popup dialogue box.

31. The Removal Opponent’s social media is used as a sales platform with regular and specific posts for the shiraz wine bearing the Trade Mark. The posts describe the shiraz wine as THE BOXER or BOXER which in terms of s 7(1) of the Act, I consider to be use of the Trade Mark with alterations that do not substantially affect its identity. The Removal Opponent’s Father’s Day post also shows a special wine label attached to its 6 litre bottle of shiraz wine, where the words THE BOXER feature at the top of the label and in the same font size as the house brand which is positioned underneath the Trade Mark. The Removal Opponent’s direct marketing emails serve to promote its 2017 vintage with the Trade Mark heading sales information and awards won.

32. I note that the Removal Opponent has not offered any sale figures to demonstrate its turnover. However, the Removal Opponent’s technical sheets show that it has released a vintage of its shiraz wine bearing the Trade Mark every year since 2005 and the promotional materials and third party retailers all provide genuine offers for sale of the product.

33. Regarding whether the Trade Mark is used ‘as a trade mark’ or is merely used as a style or product name, the authorities have found that in the wine industry there is no clear distinction, and a sign may perform both functions. It would be artificial to suggest that recognition of the respective trade marks would be compartmentalised in the minds of consumers such that they recognise the house brand and/or cartoon device as a badge of origin and regard the word THE BOXER as a style or product descriptor.[11]   

    [11] See also (2016) FCA 1515, [82], (Charlesworth J).

34. I have found that there is use of the Trade Mark during the Relevant Period in relation to shiraz wine, however there is no use on other wine varieties. As such the grounds for Complete Removal under ss 92(4)(a) and 92(4)(b) have been rebutted. The Removal Opponent has failed to show use of the Trade Mark for the goods sought to be removed in the application for Partial Removal. Furthermore, the Removal Opponent does not claim nor does the evidence raise matters which could be regarded as obstacles to use of the Trade Mark in the Relevant Period, pursuant to s 100(3)(c) of the Act.

    Registrar’s Discretion

35. Section 101(3) of the Act provides:

    If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

36. Section 101(4) of the Act provides:

    Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

    (a)  similar goods or closely related services; or

    (b)  similar services or closely related goods;

    to those to which the application relates.

37. The question to be asked is whether it is reasonable not to remove the Trade Mark in respect of the Amended Goods, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to those goods.[12]

    [12] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).

38. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[13]

    [13] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

39. The Removal Opponent submits that the discretion should be exercised to retain the registration in relation to the registered goods and that it is not necessary to show use in relation to ‘every conceivable subcategory of the relevant registered goods’.[14] ‘Some latitude is to be permitted’[15] and the question is not to be ‘considered with an eye to fine distinctions between goods on the Register’.[16]

    [14] Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39, [188] (Stewart J) (appeal allowed0, [2021] FCAFC 8, but appeal did not concern this point.

    [15] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [146] (Burley J).

    [16] Ibid.

1. The Removal Opponent further submits that restricting the registration of the Trade Mark to the Amended Goods is likely to cause confusion if it leads to other traders using the name THE BOXER in relation to other wine varieties or alcoholic beverages as the Removal Opponent has an established reputation vesting in the Trade Mark in relation to wine. Moreover, the Trade Mark will continue to block the Removal Applicant’s pending trade mark applications as shiraz wine constitutes goods of the same description to beer.[17]   

   [17] E&J Gallo Winery v Lion Nathan (Aust) Pty Ltd (2009) 175 FCR 386, [74] (Moore, Edmonds and Gilmour JJ).

2. The Removal Applicant submits the purity of the Register should be considered as well as its pending trade mark applications. In support of its contention that the goods should be refined to shiraz wine, the Removal Applicant refers to various authorities where the goods on which a mark has been used are able to be clearly and separately identified, such as flour, semolina, wheaten meal, and other products of cereals altered to noddle flour.[18]

   [18] George Weston Foods Ltd v Manildra Flour Mills Pty Ltd [1999] ATMO 41, (Hearing Officer Williams).

3. In this instance I find the Removal Opponent’s arguments more persuasive. I do not consider that a restriction of the type proposed by the Removal Applicant would serve any practical purpose, as drawing fine distinctions within the already confined sub-set of class 33 wines would not assist in progressing its pending trade mark applications.

   Decision

4. I am satisfied that the Trade Mark has been used by the Removal Opponent in relation to the shiraz wine. As such, the Removal Opponent has successfully rebutted the Complete Removal allegations made under s 92(4)(a) and 92(4)(b).

5. In relation to the Partial Removal application, I find that it is appropriate to exercise discretion to not remove the Trade Mark for the Amended Goods.

6. Accordingly, I direct that trade mark registration 1110015 remain on the Register. If the Registrar is serviced with a notice of appeal within the relevant timeframe, the disposition of the Complete and Partial Removal applications will instead be subject to the decision made by the Court.

   Costs

7. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Applicant as allowed by Schedule 8 of the Trade Marks Regulations 1995 (Cth) in the following way:

   ·     Full costs as per scale, for filing the Notices of Intention to Defend in relation to the Complete and Partial Removal.

   ·     Full costs as per scale, in relation to the Complete Removal.

   ·     At 20% of the scale, in relation to the Partial Removal.

   Louise Tuohy
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   14 September 2022