Opposition by Bilyara Vineyards Pty Ltd to registration of trade mark application number 2032965 (33) – EAGLE HILL and device - in the name of Group Huge Limited

[2022] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Bilyara Vineyards Pty Ltd to registration of trade mark application number 2032965 (33) – EAGLE HILL and device - in the name of Group Huge Limited

Delegate:	Louise Tuohy
Representation:	Opponent: Treasury Wine Estates Limited Applicant: Internally represented
Decision:	2022 ATMO 19 Trade Marks Act 1995 (Cth) – opposition under section 52 – section 44 considered and established – registration refused

Background

1. This is an opposition brought by Bilyara Vineyards Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) and relates to the registration of the following trade mark application in the name of Group Huge Limited (‘Applicant’):

   Application number:              2032965

   Trade Mark:  (‘Trade Mark’)

   Filing Date:  27 August 2019

   Specification:  Class 33: Wine (‘Goods’)

2. The Trade Mark application was examined as required by s 31 of the Act and advertised as having been accepted for possible registration on 17 February 2020.

3. On 11 March 2020 the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 8 April 2020. The Applicant filed a Notice of Intention to Defend on 30 June 2020.

4. Thereafter the Opponent filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘Regulations’). No evidence was filed by the Applicant.

5. On 11 February 2021 the Opponent requested a hearing by way of written submissions and the opposition was referred to me as a delegate of the Registrar of Trade Marks. The Opponent was represented by Treasury Wine Estates Limited and its submissions were filed prior to the hearing. The Applicant did not file any submissions.

   Evidence

   Evidence in Support

   ·Declaration of Anna Gabrielle Gibson, Global Director of Intellectual Property of Treasury Wine Estates Limited the parent company of the Opponent, dated 1 October 2020 with Exhibits 1-14 (‘Gibson declaration’).

   The Opponent

6. The Opponent is an Australian company established in 1969 by Mr Wolfgang Blass in Bilyara Road, Tanunda in South Australia’s Barossa Valley. The Opponent produces and sells wines under the WOLF BASS and EAGLEHAWK brands.

7. The Opponent’s parent company is Treasury Wine Estates Limited which has a portfolio of over 70 brands which are sold around the world.

   Grounds, Onus and Relevant Date

8. In the SGP the Opponent nominated grounds of opposition under ss 44, 60 and 42(b) of the Act.

9. The Opponent bears the onus of establishing at least one of the grounds of opposition.0F1F[1] The standard of proof is the ordinary civil standard of the balance of probabilities.1F2F[2]    

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

10. The date at which the rights of the parties are to be determined is 27 August 2019 being the convention priority date of the application (‘Relevant Date’).

    Discussion

    Section 44

11. Section 44(1) of the Act provides:

    44  Identical etc. trade marks

    (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

    (a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

    (i)  a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

12. In the SGP the Opponent particularises the s 44 ground of opposition as follows:

    The Opposed Mark is substantially identical with, or deceptively similar to, the [trade marks listed in Annexure A] which cover goods and services that are overlapping or closely related to the applied for goods.

13. To satisfy the s 44 ground the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods, and/or services which are closely related to the Applicant’s Goods.

14. In the SGP the Opponent nominated 13 trade marks which are shown at Annexure A to this decision. However, for the purposes of pressing the s 44 ground of opposition, the Opponent made submissions on the two trade marks appearing in the table below:

Number	Opponent’s trade marks	Class	Priority Date
946978	33	14 March 2003
1205667	33	22 October 2007

1. The Opponent’s trade marks are registrations in the name of a person other than the Applicant and have a priority date earlier than the Relevant Date.

2. The Opponent’s trade marks are registered for Alcoholic beverages (except beer) in class 33 and the registration of the Trade Mark is also sought in respect of the similar goods in class 33. As such, it only remains to determine whether the Trade Mark is substantially identical or deceptively similar to either or both of the Opponent’s trade marks.

   Substantially identical

3. The Opponent does not argue that its trade marks are substantially identical to the Trade Mark. However, I will briefly note that the test for substantial identity requires that the trade marks are considered side-by-side while having regard to the essential features of the trade marks.[3] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.

   [3] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

4. On a side-by-side comparison there are clear differences between the respective trade marks. All the trade marks contain an eagle device. The Trade Mark consists of an eagle device and the words EAGLE HILL. In contrast the Opponent’s trade mark 946978 consists of an eagle device and the words EAGLEHAWK, and trade mark 1205667 is for an eagle device solus. For these reasons, I find that the compared trade marks are not substantially identical. The total impression emerging from a side-by-side comparison is not one of similarity.  

   Deceptively similar

5. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

   10  Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

6. The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.6F[4]

   [4] (1979) 96 RPC 410, 423.

7. The state of the law regarding confusion was neatly summarised by the delegate of the Registrar of Trade Marks in Kicking Horse Coffee Co Ltd:

   In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’. Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’. Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source. 7F[5]

   [5] [2018] ATMO 193, [46] (Delegate Brown) (Citations omitted).

8. When considering the concept of deceptive similarity ‘the marks are to be compared both visually and aurally’8F[6] and all the surrounding circumstances are relevant to the consideration:

   You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods.9F[7]

   [6] Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2010] FCA 1380, [111] (Cowdroy, Middleton, Jagot JJ); see also Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [173] (Katzmann J).

   [7] Pianotist Co.’s Application (1906) 23 RPC 774, 777.

9. The approach requires an appreciation that trade marks will be imperfectly recalled, as explained in Australian Woollen Mills Ltd v F.S. Walton and Company Ltd, where Dixon and McTiernan JJ stated:

   [T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.10F[8]

   [8] (1937) 58 CLR 641, 658.

10. The Opponent’s submissions argue that the eagle device in its trade mark 1205667 is wholly contained in the Trade Mark and that this will result in consumers incorrectly assuming that the ‘wine’ offered for sale under the Trade Mark has some association or connection to the ‘wine’ offered for sale under its trade mark 1205667.

11. I consider that visually, the eagle devices in the Trade Mark and trade mark 1205667 are very similar. The devices are illustrated using similar shading and depict an eagle swooping with talons down, wings and tail spread. The key question then is whether Australian consumers would see the addition of the words EAGLE HILL in the Trade Mark as a point of distinction sufficient to mitigate the risk of confusion. In my opinion the words EAGLE HILL would be seen as a regional location by Australian consumers and the device element would speak to a consumer’s sense of sight and make an emotional connection. As a result I find that the addition of the word elements EAGLE HILL in the Trade Mark are not a transformative addition that, for a significant proportion of Australian consumers, would convey a conceptual meaning that is sufficiently different to that conveyed by the Opponent’s trade mark 1205667.  

12. I find the Trade Mark is deceptively similar to the Opponent’s trade mark 1205667. The Opponent has established this ground of opposition.

    Decision

13. Section 55 of the Act provides:

    55  Decision

    (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

14. The Opponent has established a ground of opposition under s 44. Accordingly, I refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

15. The Opponent sought an award of costs in its favour. 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 Applicant under s 221 of the Act in line with Schedule 8 of the Regulations.

    Louise Tuohy
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    9 February 2020

    Annexure A