New Zealand Winegrowers v Lacheteau S.a.s [Sec=Unclassified]
[2009] ATMO 82
•22 October 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Opposition by New Zealand Winegrowers to registration of trade mark application 1126208(33) - KIWI CUVEE - filed in the name of Lacheteau S.A.S.
Delegate: Terry Williams Representation: Opponent: James Omond, solicitor, of Omond and Co, solicitors
Applicant: Barry Newman, patent attorney ,Watermark patent attorneysDecision: 2009 ATMO 82
S 52 opposition: KIWI CUVEE likely to deceive or cause confusion – s 43 established, registration refused.Background
Lacheteau S.A.S. (“the applicant”) a body corporate under the laws of France, filed trade mark application 1126208 on 26 July 2006. That application seeks registration for the trade mark KIWI CUVEE in respect of wines.
The application has been examined and advertised as having been accepted for possible registration. Registration, however, is opposed by New Zealand Winegrowers (“the opponent”). The opponent is an organization that promotes the interests of New Zealand grape growers and winemakers.
The parties have followed the process under Part 5 of the Trade Mark Regulations to file and serve copies of evidence setting out their respective positions. Ultimately, under s 52 of the Trade Marks Act 1995 (“the Act”), the Registrar of Trade Marks is required to decide the opposition after giving the applicant and the opponent an opportunity to be heard. I conducted the necessary hearing, at which the applicant was represented by Barry Newman, a patent attorney from the attorney firm of Watermark. The opponent was represented by James Omond, solicitor, of the law firm of Omond and Co. What follows are reasons for my decision in this matter, made under delegation from the Registrar.
Grounds – overview
The opponent has nominated a number of grounds of opposition, said to arise under various sections of the Act. Chief among them is s 43, which deals with trade marks incorporating a sign with a connotation that is likely to deceive or cause confusion. Mr Omond also traversed grounds under s 41, and under s 42(b) as it relates to alleged breaches of the Trade Practices Act 1974 (Cth). However, as Mr Omond noted at the hearing, those grounds all depend on what I will call the pivotal issue of his submissions, the allegation that the use of the applicant’s the trade mark will be reasonably likely to deceive and/or cause confusion.
Leaving that issue aside, Mr Omond also argued that the use of the applicant’s trade mark would be contrary to, specifically, s 40D(2) of the Australian Wine and Brandy Corporation Act (Cth) (“the AWBCA”) which deals with “false description and presentation of wine”.
At the hearing, both advocates matrixed the evidence against those issues, and it will be efficient for me to do likewise.
Deception or confusion?
Mr Omond relied on a well established line of authority about the nature and causes of deception or confusion[1]. It is for the opponent to satisfy me that there is a reasonable likelihood of either deception or, at least, confusion. In Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599, Gyles J put the relevant standard in terms of the balance of probabilities. See also the recent concurring view of Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891 at paragraphs 22-26.
[1] See, for instance, Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5
Mr Omond referred to the evidence at Exhibit JLO-2, an internet search showing what he called examples of “confusion (at least initially) as to the provenance of the Applicant’s wine”, in Europe. This, he said, was illustrative of the potential for confusion in Australia. The applicant’s trade mark has not yet been used in Australia and evidence from the Australian market cannot adequately test the matter. Mr Omond therefore argued that the opponent’s evidence was highly relevant. The evidence of what he said was overseas confusion interlocked with evidence that:
· The word “Kiwi” was widely used in Australia to indicate New Zealand wine
· New Zealand wines were widely known in Australia
· Cuvee was understood to be a descriptive term in relation to wine, although he agreed that the average consumer might be unsure of what the term indicated.
Mr Omond noted exhibit JPHB-2 in the opponent’s evidence in support. He specifically drew my attention to item 34 therein, a catalogue, dated Spring 2007, from a reasonably well-known Australian wine merchant. At page 11, that merchant advertises for sale a bottle of sparking wine with a label bearing the trade mark DEUTZ. Beside the picture of the bottle, there is text which reads:
Deutz Marlborough Cuvee NV
This Marlborough beauty is allowed to share the name of one of Champagne’s most famous houses. It’s a huge tip of the hat to this Kiwi cuvee.
The text then goes on to describe the character of the wine itself. This item is a clear example of the use of “Kiwi Cuvee” in a descriptive context but similar examples of Kiwi used to indicate a New Zealand origin for wine in general make up the bulk of the exhibit.
Mr Omond argued that it was sufficient that the opponent satisfy me that, in view of the various ways in which wine could be traded, there was a reasonable likelihood of confusion arising. Here he drew my attention to the “on premises” market: cafes, bars and restaurants. In such situations, unlike a bottle shop where wines were typically on display, wine lists may not give full details of the wine, or may simply be reduced to a blackboard listing. Customers in such places might ask for wine by variety, for example “a Clare Riesling” or, less formally, “a Kiwi Sav. Blanc”. Labels, and the details thereof, of which I will have more to say in due course, do not figure in such conversations. Confusion was inevitable, he argued, and it was not necessary that such confusion persisted up to or beyond the point of sale (Southern Cross, supra, at 595.
For the applicant, Mr Newman was quite critical of the opponent’s evidence. While ultimately his client does not succeed in the present matter, for reasons that will emerge, his criticisms of the evidence are generally appropriate and I will deal with it in his terms, though not necessarily in the same order.
Mr Newman said that the opponent’s evidence at JPHB-2 of the usage of “Kiwi” to indicate a New Zealand origin of wine was a very limited result in an apparent trawling of seven or eight years of newspaper and magazine articles amounting, so he said, to acres of newsprint. It was clear that, in the “vast majority” of the instances which the opponent had been able to find, Kiwi was used descriptively only when the article had already disclosed the New Zealand origin of the wine. Kiwi was thus used, in a limited and colloquial context, only once it was already clear that the wine originated in New Zealand.
This, he argued, was consistent with the ambivalent nature of the dictionary entries on which the parties had relied to support their respective positions. In the Macquarie Dictionary (4th edition, 2005) of which there is an extract in the evidence in support, he noted that there were a number of entries, as follows:
kiwi /'kiwi/noun 1. any of several flightless birds of New Zealand, constituting the genus Apteryx, having vestigial wings, stout legs and a long slender bill. 2. Finance Colloquial the New Zealand dollar. [Maori]
kiwi /'kiwi/ Colloquial-noun 1. a New Zealand soldier or representative sportsperson, especially a Rugby League representative. 2. any New Zealander. adjective 3. of or relating to New Zealand.
Of those, Mr Omond had relied on only one entry, the last. The evidence in answer, as Mr Newman noted, showed dictionary entries that tended in the opposite direction. The Australian Oxford (2004) Collins Dictionary of the English Language (1986) and the Chambers 21st Century Dictionary (1999) all support his argument that “kiwi” is no more than a colloquial reference to a person from New Zealand. He argued that, unlike “Aussie”, which was quite capable of indicating the origin of products as well as people, the word “kiwi” was therefore neither deceptive nor confusing in relation to wine. In the applicant’s case, as the evidence in any case showed, there was indeed a reference to a person, the applicant’s New Zealand winemaker, who works now in France.
Mr Newman submitted that I should give less weight to the Macquarie because it was written to demonstrate “how Australian English is used”. This, I think, is the heart of the matter. Mr Newman did not explain why it was that such demonstrated usage of “kiwi” in Australia would not be relevant. He argued strongly that it was only “very rarely” that kiwi was used in the opponent’s material in a way consistent with the Macquarie. However, I think that, taking the trade usage together with the definition in Macquarie, I should start my decision from the premise that “kiwi” is a word that is fit to be used to indicate, albeit perhaps with some informality, a New Zealand origin for wine.
Mr Newman may well be right, in that the usage on which the opponent relies is not what he called “The common accepted use in Australia” of the word, but that does not save the application. What is at issue is what will be understood, by consumers, from the usage of the word “kiwi” in the context of the applicant’s trade mark. This is not necessarily best measured by the frequency with which the word is adopted by others as an adjective to indicate New Zealand origin, though obviously the frequency is of some weight in the matter.
In my view, it is probably relevant that the Macquarie entry is the most recent of the dictionaries in evidence, and therefore perhaps best reflects the changing nature of the English language in Australia. Mr Newman, however, drew attention to the evidence in answer relied on by the applicant. If, as he argued, “Kiwi wine” was commonly used as a descriptive term in relation to wine, and understood that way, such usages would have show up on an internet search conducted by the applicant and put into evidence. Instead, the result of the search, using the search engine Google, showed very few such usages, of which most referred to wine made from kiwi fruit. Mr Omond replied that this result reflected, not the “meaning” of kiwi, but how the search engine was constructed and the differing values assigned to descriptive and other uses of a search term. However, while Mr Omond may have a point, the applicant’s search still tends to suggest that, just as the dictionaries show, “kiwi” can be used in a number of ways.
Here Mr Omond brought up a telling argument. Section 43 of the Act, to which I will come in due course, deals with trade marks that would cause deception or confusion because of “a” connotation they possess. It need not be the primary connotation, or the only connotation, so long as the end result is that, on balance, a significant risk of deception or confusion arises. A similar reading would apply, I believe, to the other and quite diverse provisions underlying the opponent’s remaining grounds.
Both representatives based arguments on the state of the register. Mr Newman noted that, of the registrations surveyed by the opponent, 65% did not reveal, either by a relevant endorsement of the register, or from the statement of goods, any apparent connection with New Zealand. Mr Omond argued that, of these, the long-standing registrations of KIWI for boot polish and related products should be set to one side. Those registrations were what he called iconic trade marks in their own right, notwithstanding that their original connection with New Zealand had been a fanciful one, an acknowledgement of the country of origin of the wife of the inventor of the original formulation. Mr Newman, however, replied that, far from being set aside, the motivation evident with KIWI boot polish was very similar to the applicant’s motivation in adopting the word “kiwi” as a trade mark, and the end result would be equally problem-free.
Having looked at the evidence, I will not give much weight to the state of the register. Such an analysis would be clouded by other issues, such as the presence, or otherwise, of a device of the wingless bird in question, or of a kiwifruit as part of the trade mark. However, the chief problem for the applicant is that, from my own experience, English usage in Australia has become more casual over time.
Mr Newman’s strongest point, in my view, was that the ordinary consumer wouldn’t think the usage of “kiwi” was descriptive, simply because it looked otherwise in the context of the applicant’s trade mark. As he argued it, “we all know what a wine label will look like”. There will be, as he noted, a trade mark, together with a description of the wine. He referred me to exhibit JPBH-3, which lists distribution information for a wide range of wine products the description of which includes the word “cuvee”, to illustrate his point. I agree with him that, on a bottle of BOLLINGER champagne, for example, it is much clearer that “cuvee” is part of a descriptive element (“Special Cuvee Brut”, and similar) than it is in the present matter.
In oral submissions, Mr Newman noted the alliteration in the trade mark. This, he said, in its context, would assist in preventing. However, as Mr Omond pointed out, the applicant seeks to register the trade mark KIWI CUVEE, not a wine label. Used with “cuvee”, a clearly descriptive (even if imperfectly understood) word, Mr Omond argued that any possible trade mark function of the word “kiwi” would be severely compromised. Mr Newman was quite critical of this assertion. As he countered, there is no particular reason why the trade mark function of the word “kiwi” would be compromised by the fact that “cuvee” clearly serves a different function. In KIWI CUVEE, just as in WALLY’S WINES, an example he made up to illustrate his point, the first word was, in his view, clearly serving a trade mark function.
Another item in the opponent’s evidence suggests that, to put it bluntly, the applicant is deliberately emulating a New Zealand product: Sauvignon Blanc is the archetypical New Zealand wine variety, and screw cap bottles such as the applicant uses, while being the preferred choice for New Zealand wines, are anathema to traditional French winemakers. Mr Newman described this as unsupported speculation. Mr Omond did not press that aspect, but said that, as part of the context of usage of the trade mark, the applicant’s actual trading practices needed to be considered. He was therefore particularly critical of the limited size, and inconspicuous appearance, of the words “Produce of France”, in the label the applicant actually uses in Europe, which I will now set out:
Mr Newman went on to argue that this matter was not comparable to YANX Trade Mark[2], where device elements of stars and stripes were used with the word in question, adding to the risk of confusion despite the presence, also, of the much smaller words “Made in England”. Mr Newman argued that the way in which the trade mark was presented on the label of the applicant’s goods would negate any risk of confusion. He indicated that his client would consent to any condition of registration, as to use of the applicant’s trade mark with a sufficiently clear indication of origin, that I required. He said that, if different labeling was required for Australia, his client would ensure that this was done.
[2] Ex parte Amalgamated Tobacco Corporation Ltd., (1951) 82 CLR 199
I put no weight at all on the second-hand evidence that the opponent has attempted, in Europe, to enforce rights in its registered trade mark KIWI RED. As Mr Newman noted, aside from the fact that there is no direct evidence that this attempted enforcement had occurred at all, or under what circumstances, it may very well be that the word KIWI has a different connotation in the European market.
Mr Newman argued that the instances of alleged European confusion set out in exhibit JLO-2 were not as they had been described. They were more correctly typified as journalistic usage or exaggerations, often found in some third party internet web log (“blog”) site of questionable authority. I agree with this, and will set out his detailed criticisms which I hope will be sufficiently clear with my added comments in italics and square brackets:
· The applicant’s own website, which notes that “we are employing new world (read New Zealand) techniques …”. This is not evidence of confusion – it is a statement of fact.
· A throwaway line from a US online wine review, that ‘you could have fooled me’ [about the origin of the wine]. Self evidently, the reviewer had not been fooled.
· A reference to a news piece in the New Zealand Herald, quoting a sensationalist portion of a news report [about the alleged enforcement of the applicant’s rights, in Europe, in KIWI RED]. Again, there is no suggestion of any confusion.
· An extract from a wine blog quoting the same New Zealand Herald story.
· An online article noting that KIWI CUVEE is not from New Zealand. Again, there is no suggestion of confusion. In fact, the author notes that the bottle is clearly marked as being French.
· A Google extract of a blog, without any hint of context or provenance.
· A third-hand account of the New Zealand Herald story.
· A blog posting declaring that “… they’d really rather you thought it was from New Zealand”. Other than the obvious fact that there is no basis for this opinion, it is clear that the writer was not confused.
· Another quoting of the New Zealand Herald story.
· An extract from a book noting that New Zealand winegrowers weren’t happy about the [applicant’s] trade mark.
Both representatives made brief submissions about the Federal Court decisions in Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428, and Scotch Whisky Association v De Witt (2007) 74 IPR 382. Ultimately, Mr Newman said that I lacked a sufficiently clear basis in the evidence from which to infer that there would be a significant likelihood of confusion. He noted the reference in Bavaria to the significance of a lack of evidence of confusion.
As Mr Omond noted, wine was perhaps an intermediate case, sitting midway between the two products in question in those decisions, beer and spirits. Wine was not necessarily purchased in the same manner as beer. While I acknowledge the decision of Bennett J on the appeal, I also note the observation Hearing Officer O’Brien, in the original Bavaria decision[3]:
A beer label will generally not be given the same close inspection as would a medicine label. As noted by Lord MacNaghten in Montgomery v Thompson[4]: 'Thirsty folk want beer, not explanations'.
[3] Verbrand Bayerische Ausfurbrauereien Eingetragene Verein v Bavaria N.V. [2006] ATMO 53
[4] (1891) 8 RPC 361 at 368
Be that as it may, as Mr Omond also pointed out, wine is generally not in a price range that might attract the more cautious appraisal noted in Scotch Whisky Association v De Witt, supra. In that case, Sundberg J observed that:
Second, involved and uninvolved purchasers of bourbon and scotch whisky products review product labels. T his is the fair and normal way in which consumers behave. In this case, confusion is mitigated by the circumstances in which such products are bought and sold. Bourbon products are typically labelled as bourbon, bourbon whiskey or Tennessee whiskey. Importantly, a consumer of these products must be 18 years of age. Bourbon products are much more expensive than impulse products such as soft drinks and confectionary … Purchasers of alcohol generally tend to be discerning in their purchasing habits: compare Henschke & Co vRosemount Estates Pty Ltd (2001) 52 IPR 42 ; [2001] FCA 1539 and Shanahan at 211–12. Where goods are denoted as being from a particular country, this constitutes another factor that reduces the possibility of confusion: Green’s Application (1946) 64 RPC 14.
Sundberg J’s reference to Henschke leads me to a helpful distinction drawn by Finn J at first instance in CA Henschke & Co v Rosemount Estates Pty Ltd (1999) 47 IPR 63. In his view, and not challenged on appeal, there are two broad categories of wine consumers, involved and uninvolved. Finn J made this distinction in his decision under the Trade Practices Act and he did not need to extend it to the dispute as it arose under the Trade Marks Act. However, I think that it is this distinction that explains why in my view the arguments of both parties in the present matter have some merit.
Mr Newman is probably correct when he portrays the likely reactions of some consumers - particularly the reaction of an uninvolved wine consumer, someone who has little knowledge of wines - making a purchase in a typical bottle shop or liquor store. To that person, the applicant’s trade mark, in the context of the label, may not look like a description. It would have what Mr Newman called the “look” of a wine label about it. The uninvolved consumer is perhaps less likely to assume that (colloquial or otherwise) use of Kiwi as a description of the origin of the wine is what is intended.
However, Mr Omond is also correct when he points out that not all such purchases happen in this way. More knowledgeable consumers, in particular, may ask for a wine by reference to its district or country of origin. These are the consumers who would be most easily led astray by usages on wine lists or in other circumstances where brief descriptions may be used. It is probable that such an error would be discovered before the wine was purchased, but, as Mr Omond pointed out, the confusion or deception with which, inter alia, s 43 is concerned need not be permanent, nor need it persist up to the point of sale.
Perhaps, too, the opponent’s case has become more tenable over time, as stipulations based on knowledge of what is “proper” English have broken down. Old “rules” such as not ending a sentence with a preposition, and not splitting infinitives, are concepts with which very many Australians would be unfamiliar. At the same time, colloquial and colourful language are more readily used in Australia now than they were 20 years ago and I think that, whatever may be the case in the European wine market, “Kiwi” is readily susceptible to informal descriptive use, here, in relation to New Zealand wine.
Accordingly, while the Act has changed, and language has changed with it, an observation made by Dixon J some 60 years ago is still appropriate. In Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175 he said, at p.184:
But again I think that the question depends upon the use to which it is intended to put the word mark ... But the meaning of all the words is governed by their context and how words are understood depends upon the universe of discourse. Here the scope of the use of the word is settled by the application for registration, which is in respect of cultivating implements. In that setting "rohoe" will carry to the mind of a horticulturist what would never occur to the hearer if, for instance, he were a seaman heaving on a line.
The distinction that Dixon J drew between a seaman and a man on the land can also be appropriately drawn between involved consumers discussing a wine list or requesting a wine in general terms, and (in particular) uninvolved wine consumers looking at labels in bottle shops. I am satisfied that there is a real and significant risk that confusion will arise through the use of the applicant’s trade mark KIWI CUVEE.
Grounds considered, registration refused
Section 43 ground
This section provides:
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.
I have already concluded that there is a significant risk of confusion in the context of aural use of the applicant’s trade mark, or its written use on wine lists etc in restaurants and bars. This confusion would arise because of one of the connotations of the applicant’s trade mark, as I have previously noted. In the context in which such confusion would arise, the label on which the trade mark is used will not mitigate the problem.
The opponent has therefore established a ground of opposition and I refuse to register the trade mark.
AWBCA and other grounds
Mr Newman made submissions as to s 40D(2) of the AWBCA. His argument is that the use proposed by the applicant would constitute a false description and presentation of wine and thus be contrary to law. However, I agree with Mr Omond that, having decided the trade mark should not be registered because of a ground arising under s 43 of the Act, I do not need to consider this or the remaining grounds.
Costs
I direct that the applicant pay the costs of the opponent in terms of the scale in the regulations
T. E. Williams
Hearing Officer
Trade Marks Hearings
22 October 2009
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