Opposition by Cranswick-Smith & Sons Pty Limited (now known as Cranswick Estate Wines Limited) to registration of application 660954 in the name of S. Smith & Sons Pty Limited.

[1999] ATMO 105

TRADE MARKS ACT 1995

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

Re:Opposition by Cranswick-Smith & Sons Pty Limited (now known as Cranswick Estate Wines Limited) to registration of application 660954 in the name of S. Smith & Sons Pty Limited.

Background

On 12 May 1995, S. Smith & Sons (the applicants) filed application of the trade mark AUTUMN BROWN in Class 33 in respect of the goods "fortified wines".  The examiner cited grounds for rejection in terms of both sections 41 and 44 of the Act.  The grounds under section 41 arose through the examiner objecting that, as the words AUTUMN BROWN are defined as a colour in Webster's Third New International Dictionary, it is likely that other traders would need to use the term and that accordingly the trade mark lacked inherent capacity to distinguish.  The grounds under section 44 arose because of the existence of trade mark registration 624838.  As that registration is the one on which this opposition is partially predicated, I will give details of the registration now:

Reg'd No  624838
Priority date               14/03/1994
Trade Mark                AUTUMN GOLD
Class  33
Goods  Wines
Owner  Cranswick Estate Wines Limited

In due course, the applicant led evidence of the use of the trade mark, aimed at overcoming both of the grounds for rejection and the trade mark was accepted for registration with the endorsement:

Provisions of subsections 41(5) and 44(4) applied.

The application was advertised as accepted on 1 May1997.  Subsequently on 1 August 1999, notice of opposition to the registration was lodged by Cranswick Estate Wines Limited.  Evidence in support of the opposition and evidence in answer were served and filed as allowed by the Act and regulations.  In due course, the issue was heard before me, as a delegate of the Registrar of Trade Marks, in Canberra.

The applicant was represented by Mr Colin Oberin of McMaster Oberin Arthur Robinson & Hedderwicks, patent and trade mark attorneys, and the opponent was represented by Stephen Sharp of Griffith Hack, patent and trade mark attorneys.

The evidence
The evidence in support of the opposition consists of statutory declarations by Ignacio Luis Gallegos, Christopher George Walter Wardle and Ian Gower Mackley.  The evidence in answer comprises statutory declarations by Peter Thomas, Daniel Francis Murphy, Frank Salvatore Palumbo, Brad Collings and John McGenniss.  For the sake of brevity, I will refer to these declarations by the surname of each declarant.

The Gallegos declaration
Mr Gallegos states that he is company secretary and finance and administration director of the opponent and has been company secretary since 5 August 1997.  Mr Gallegos joined Francesco Cinzano & Cia (Australia) Pty Ltd in 1987 and in 1989 was appointed financial controller for Cranswick, a position he held till 1991.  At the time that Mr Gallegos joined Cranswick, that company was the Australia distributor for the Cinzano group of companies, as well as Saxonvale, Wyndam Estate, Draytons Wines and Montana Wines; however, it ceased these distribution operations in 1989.  It then continued to own and operate its own winery at Griffith.

Mr Gallegos avers that the opponent has used the trade mark AUTUMN GOLD on or in connection with wines continuously since 10 March 1995.  The particular wine sold bearing the trade mark is a botrytis semillon, it being a wine made from grapes affected by the fungus botrytis cinera, otherwise known as 'noble rot'.
Then Mr Gallegos attests that the wine bearing the trade mark is of high quality and has won numerous awards at Australian and international wine shows - various vintages of the wine are specified which have won particularly many medals for being good wines.

Next specified in this declaration are details of how the various vintages of this wine have been sold and marketed.  I don't need to go into details - it is sufficient to note that the sales and advertising have been moderate when the specialist nature of the wine are taken into account.  Various labels, advertisements and an article featuring the trade mark are appended to this declaration.

Mr Gallegos goes on to state that he made inquiries to discover the extent of the use of the trade mark AUTUMN BROWN by the applicant and has found no evidence that the applicant has continuously used the trade mark for a period ending on 14 March 1994.  This declarant concludes by referring to page 149 of Webster's Third New International Dictionary and the definition of the expression 'Autumn Brown'.  He concludes that the term 'Autumn Brown' describes wines of a particular colour.

Before I detail the next declaration, I observe that I will disregard Mr Gallegos's claim to have investigated the use of the opposed trade mark.  There is no mention of where, when, of who, of what time period of use, or where he might have made any enquiries.  The statement appears to be worded ambiguously so that it is not clear whether the declarant discovered some use, discontinuous use or even continuous use by one of the applicant's predecessors in business or an associated company.

The Wardle declaration
Mr Wardle now manages his family company's business, "Cremorne Cellars" in Military Road, Cremorne and specialises in fine wines.  Mr Wardle has had previous experience in management in the wine and liquor trade during the period 1971 till at least the time his declaration was made.

Mr Wardle states that he is aware of the wine sold by the opponent under the trade mark AUTUMN GOLD.  He further states that he is aware that a fortified wine was sold during the 1970s under the name YALUMBA AUTUMN BROWN, that the product was inexpensive and that he is not aware use of that trade mark since then.

This declarant goes on to give his opinion that the word AUTUMN, common to both trade marks in question, is the more dominant of the two and that (as a consequence of this), consumers may be mislead into thing there is a connection between the two products.  He states his belief that the word AUTUMN gives rise to a certain image and that consumer decisions in this area are strongly influenced by the images associated with trade marks.  Mr Wardle further draws my attention to certain manufacturing, distribution and retail processes common to the both wines and fortified wines.

Of course, Mr Wardle's comments about the comparison of these trade marks are his opinion only.  He has claim to some expertise in the wine industry - however, I note that he states his business specialises in fine wines and he has made reference to the applicant's product as being an inexpensive fortified wine.  It therefore appears to be quite possible that the business that he manages is not one in which he could be logically expected to encounter the applicant's trade mark.

The Mackley declaration
Mr Mackley has been involved in the liquor industry for more than twenty five years and was, at the time of making his declaration, Deputy Chairman of the Australian Wine and Brandy Corporation.  The declarant has had a number of very senior positions with major wine and beer manufacturers since 1980 and, in 1992, was invested as patron of the Australian Wine industry by the Wine Makers' Federation.

In his time in the wine industry, Mr Mackley points to his experience in marketing, including the selection of trade marks while with the Penfolds Wine Group.

He then states his opinion that the trade marks AUTUMN BROWN and AUTUMN GOLD are deceptively similar.  The common elements being the word AUTUMN, coupled with a colour.  He concludes that, based on his experience and understanding of consumers' perceptions of trade marks used in relation to wines, consumers would confuse the trade marks AUTUMN BROWN and AUTUMN GOLD.

While I have no doubt whatsoever as to Mr Mackley's experience and veracity, I have reservations about the question to which Mr Mackley is giving his answer.  It is quite apparent that the declarant is comparing trade marks on 'wines', whereas the question he is answering should have been posed with 'fortified wines' on the one hand and 'wines' on the other.  I cannot be sure, therefore, if Mr Mackley was aware these were the goods in question or, if he was not aware of this, how his answer might have altered.  Unfortunately, this declaration thus is unclear and I must give it no weight.

The Thomas declaration
Mr Thomas is company secretary of Mildara Blass Limited and has worked in that capacity since 1993, prior to which he was director of Human Resources for Sara Lee DE for over four years.

Mr Thomas addresses the Gallegos declaration and states that sales of goods bearing the trade mark AUTUMN BROWN were made during the period 1989 to 1994 and appends invoices regarding the same to his declaration.  Mr Thomas also appends a summary of annual sales of cases of goods bearing the trade mark AUTUMN BROWN to his declaration for the period 1995 to 1998.

The declarant observes that the goods bearing the trade mark AUTUMN BROWN are domestic ports and are listed as such in Thomson's Liquor Guide Vol 23 No. 5 of May 1998, a copy of which entry is appended to this declaration.

Mr Thomas then gives his view of the marketing of ports and wines, the bottle sizes, price ranges and the respective places in which these goods would be found within liquor stores and concludes that, in his opinion, the risk of confusion would be minimal.

He concludes by stating that he is not aware of any instances of actual or potential confusion or deception between the trade marks in question or of any conflict with the opponent apart from the current proceedings.

The Murphy declaration
Mr Murphy is the secretary of Dan Murphy Holdings Limited (DMHL).  Dan Murphy Wine Stores is, as I understand it, a wine and liquor retailer.  Mr Murphy has been involved in the liquor industry for 60 years.  The declarant states that he has had close dealings with the applicant, the opponent and their associated companies through the sale of their products and is familiar with their product range.  He says that he has no interest in the outcome of this matter.

Mr Murphy avers that he has been aware of the fortified wine product sold under the name AUTUMN BROWN since 1977 and was involved in purchasing the product until about 1995.  [It is unstated in the declaration that these purchases were from S Smith].  Since 1977 product bearing the trade mark AUTUMN BROWN has been marketed and regularly purchased by DMHL from Southern Cross Wines, a trade division of Mildara Blass.

The declarant states that he is aware also of the product sold under the opponent's trade mark AUTUMN GOLD and was aware of the introduction of the opponent's goods sold under the trade mark in 1995.

Mr Murphy then declares his belief that the goods sold under the respective trade marks would be associated only with the owners of those trade marks by the purchasing public and that there would be no confusion between the trade marks - particularly as the applicant's trade mark has existed in the market-place for many years.  He says he is not away of any instances of deception or confusion between the trade marks.

The Collings Declaration
Mr Collings is group tax and legal manager of the applicant's business.  He says that the applicant's trade mark has been in use on or in connection with fortified wines continuously since prior to 1956.

Mr Collings appends a copy of a label bearing the trade mark AUTUMN BROWN to his declaration which dates from prior to 1956.  He also appends a quote dated 18 November 1959 for the printing of various AUTUMN BROWN labels.

This declarant states the business records of the applicant have been destroyed over the years so it is difficult to show examples of the use of the trade mark going back to the first date of use.  However, Mr Collings does append to his declaration records of sales from the years 1974, 1978 and 1990.

Mr Collings further states his belief that fortified wines sold under the AUTUMN BROWN trade mark would be associated with the applicant and not the opponent. Consumers would not be confused or deceived since the goods are different products and the product sold under the trade mark AUTUMN BROWN had existed in the market place for many years prior to the introduction of the opponent's product and trade mark AUTUMN GOLD.

The McGenniss declaration
Mr McGenniss is liquor merchandising manager of Australian Safeway Stores Pty Ltd and had been so for 12 years at the time of making his declaration.  He states that he has worked in the liquor industry for over 25 years. 

Mr McGenniss says that he has had close dealings with all major wineries and wholesale liquor merchants because of his position.  In particular he has had dealings with the applicant and Mildara Blass Limited but is independent of those organisations and has no interest in the outcome of these proceedings.

This declarant avers he had been aware of a fortified wine product sold under the name AUTUMN BROWN since about 1969.  Until 1995, Mr McGenniss purchased the product from S Smith and thereafter he purchased it from Southern Cross Wines, a trading division of Mildara Blass.

In response to the putative question of whether he has been confused between AUTUMN BROWN and the dessert wine AUTUMN GOLD, Mr McGenniss states that he is not aware of the AUTUMN GOLD wine.  He states, however, that the fortified wine sold under the AUTUMN BROWN trade mark is associated with the applicant and is distinctive of its goods and enjoys a well-known reputation in the industry and among consumers.

Mr McGenniss further states that he is not aware of any instances of confusion between the AUTUMN BROWN trade mark and any other trade mark and that he would expect to have been made aware of any instances of such confusion if they had occurred.

I believe that a parallel can be drawn between the declaration of Mr McGenniss and that of Mr Wardle, which I discussed earlier in these reasons.  While one might not expect Mr Wardle to have encountered the AUTUMN BROWN trade mark because his is an up-market wine store, Mr McGenniss might not have encountered the AUTUMN GOLD trade mark in a chain store like Safeway because the product is an up-market or specialist wine.  However, the McGenniss declaration is a very useful confirmation of the continuing use of the trade mark AUTUMN BROWN since at least 1969.

Discussion of evidence
Before I detail any of the submissions, it is convenient for me to state just what I believe that this evidence shows: much of the submission from the legal representatives of the parties was based on the veracity and probity of the evidence, in particular the evidence in answer, and the conclusions that can be drawn from it.  By discussing it in this order, I may save more elaborate discussion of the submissions.

In general, tribunals of this kind are entitled to act on any material that is logically probative, provided that the rules of natural justice are applied, and both sides have had a fair opportunity to comment upon or contradict any such material: Lord Denning MR in T A Miller Ltd v The Minister For Housing & Local Government (1968) 1 WLR 992, and Deane J in Minister For Immigration & Ethnic Affairs v Pochi (1980) 31 ALR 666.

The five main arms of the evidence in answer are internally consistent.  They corroborate each other and, in turn, provide some confirmation of the dates and use of the applicant's trade mark.  The supporting documentation appended to the declarations supports the statements of the declarants.

The supporting material lodged with the declarations such as the label from prior to 1956, the quote for printing labels from 1959, the annual sales figures from the years 1974, 1978 and 1990 and so on is so extensive and elaborate that it is more logical to accept that they support the statements of the declarants than to suppose that they might be part of a complicated sham.

The declarants in the evidence in answer are making statements as to facts that ought to be within their own knowledge concerning their own organisation's purchasing, marketing strategies and so on.  Exhibits support these statements and, as there is no conflicting evidence which throws those statements into doubt, these statements should stand.

As I have previously inferred, I am not satisfied with the evidence led in support of the opposition.  It is most unclear what Mr Mackley is stating in his declaration and I am left in considerable doubt as to whether he was at all aware of the specifications of goods involved here.  Mr Gallegos' claims to have investigated the use by the applicant of the trade mark AUTUMN BROWN are completely unsupported.  His further claim that the expression AUTUMN BROWN describes wine of a particular colour is unusual when, as an expert in the area, he should know that fortified wines are most usually sold in coloured bottles and thus cannot be bought by consumers by reference to the colour of the goods.  And that ports are fortified wines that could not normally be described as 'brown' or the more normal terms used in relation to the colour of those goods which are 'tawny' or 'ruby'.  Finally, as regards Mr Wardle's declaration, I have twice already made reference to the relevance of statements by the manager of an up-market wine cellar attesting to his lack of knowledge of the use of a trade mark for a down-market fortified wine.

I conclude that the evidence shows that the applicant adopted the trade mark AUTUMN BROWN in, or shortly prior to, 1956 for use on, or in relation to, a fortified wine product.  I think that it is reasonable for me to conclude from the evidence that the applicant used the trade mark continuously on those goods from 1956 until at least the time that the evidence before me was lodged.  It is true that the applicant has not been able to produce sales figures from each year, but the figures that it has produced, coupled with the supporting statements from independent persons in the liquor industry I have detailed above, build a very convincing picture of the use of the trade mark AUTUMN BROWN on or in relation to a fortified wine.

The submissions
Mr Sharp, for the opponent, made extensive submissions addressing subsections 44(1), 44(3) and 44(4) concerning the deceptive similarity of the trade marks and the honest concurrent user and prior user provisions allowed by the Act.  He also addressed section 41(6) and argued that the trade mark is incapable of becoming distinctive and, finally, argued that the applicant is not the owner of the trade mark.

Mr Oberin's submissions consisted of arguments couched at refuting these grounds.

Reasons
Section 44

This section allows, insofar as is relevant to these reasons:

Identical etc. trade marks

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

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

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

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

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

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

(3) If the Registrar in either case is satisfied:

(a)  that there has been honest concurrent use of the 2 trade marks; or

(b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)  beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)  ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

Subsection 44(1).       It appears to be common ground between the applicant and the opponent that, as the goods are goods of the same description, the trade marks AUTUMN BROWN and AUTUMN GOLD are deceptively similar and the priority date of the application is subsequent to that of the opponent's trade mark, the application must be rejected.

However, the applicant argues that either of subsections 44(3) or 44(4) may be applied; and, the opponent argues that these sections may not be applied.

Subsection 44(3).       In effect, what the honest concurrent use provisions provide for, and the case-law surrounding the concept accepts, is a situation where the usual tests applied under the Act result in a finding that an application should be rejected because the criteria under subsections 44(1) or (2) are satisfied but in reality, because of the reputations and market niches established and occupied by the respective products, the consumer does, in fact, distinguish between them.

In John Fitton & Co Ltd’s Appn (1949) 66 RPC 110, five main areas are set out in which the circumstances of the mark and its use should be considered to determine whether there is honest concurrent use. The “factors” or areas are based on the decisions in Maeder’s Appn (1916) 33 RPC 77 and Pirie’s Application (1932) 49 RPC 195; 50 RPC 147, and were also considered in Electrix Ltd’s Appn [1957] RPC 369 at 379 where Wynn-Parry J cited the five factors delineated by Lord Tomlin in Pirie’s Appn, supra, and said:

I do not read his Lordship as intending to make an exhaustive statement of the factors which a judge should take into consideration when deciding how to exercise his discretion. The discretion is unfettered, and it appears to me that any relevant circumstance may, and indeed ought, to be considered. What is a relevant circumstance must depend on the facts in each case. Nevertheless, the five points considered by Lord Tomlin must obviously form a most useful guide to a court’s decision.

The five criteria are:

• the honesty of the use which has been made of the applicant’s mark

• the extent of use in duration, area and volume

• the degree of confusion likely between the trade marks in question

• whether instances of confusion have in fact occurred

• the relative inconvenience that would be caused to the respective parties if the applicant's trade mark were to be registered or not

The opponent submitted that there is no evidence on file as to the honesty of the applicant's use of the trade mark AUTUMN BROWN.  However, I may safely infer from the material before me that the applicant has been honest in its use of the trade mark: it adopted the trade mark before or in 1956; it appears to have continued to use the trade mark in the same manner ever since; it has not changed the use of the trade mark or the product to which it is applied since the opponent's adoption of the AUTUMN GOLD trade mark.  Thus the question does not give rise to the type of issue considered in New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1990) 18 IPR 385.

I would deviate slightly from the criteria in Pirie's Appn, supra, and mention here that the representatives of the applicant and opponent both made argument about the relevance of registration 234440(33) YALUMBA AUTUMN BROWN, registered in the name of the applicant in this matter, for the goods, 'Wines, spirits and liqueurs.'  I consider this registration has some bearing on demonstration of the honesty of the applicant's use of the trade mark AUTUMN BROWN.  While Mr Sharp, for the opponent, argued that the applicant's actual use of the trade mark had mirrored its registration for the words YALUMBA AUTUMN BROWN (that the words AUTUMN BROWN had never been used separately form the word YALUMBA), the applicant's representative, Mr Oberon, argued that it was common in the trade for traders to have a house-mark which is used in conjunction with a number of subsidiary trade marks.  He observed that in the evidence, the term AUTUMN BROWN is frequently used solus.  He further pointed to a label in the opponent's evidence in support that shows that the opponent is using the words CRANSWICK ESTATE AUTUMN GOLD in the same way that the applicant is using the words YALUMBA AUTUMN BROWN.

I agree with Mr Oberin.  While there is no mention in evidence that the trade mark YALUMBA is being used as a house mark, I believe that I can take account of my own knowledge of the notoriety of this trade mark's use as a house mark - Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999). I can also pay attention to the state of the Register of trade marks (regulation 21.15 (8) applies) where there are some 18 records of existing and expired registrations of the applicant's YALUMBA indicium, both on its own and in combination with other matter. I therefore accept both that YALUMBA is a house mark of the applicant and that AUTUMN GOLD is a separate trade mark of the applicant.

As regards the extent in duration, area and volume of the use of the applicant's trade mark, I have already accepted that use has been continuous since 1956.  The invoices supplied in the applicant's evidence in answer are from the States of New South Wales, Victoria, South Australia and Western Australia - on that basis I will accept that use has been throughout Australia.  Sales figures have been deleted from the receipts but it is clear from the bulk-purchase discount figures (which do remain in the documents and which amount to thousands) that sales have been quite considerable in volume.

I cannot realistically agree with the opponent that there is an unacceptably high degree of confusion likely to ensue between an up-market Botrytis Semillon bearing the trade mark AUTUMN GOLD and a fortified wine carrying the trade mark AUTUMN BROWN.  Typically, sherries, ports and the like are not sold amongst white or red wines within liquor shops or bottle shops.  Often, the white wines are kept refrigerated and very much apart from the rest of the stock.  While I am, when considering the issue of deception or confusion, to anticipate what the owners of the respective trade marks could do if they used their respective trade marks to the breadth of the specifications of goods, (re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101) I must conclude that while there is a theoretical likelihood of deception or confusion, this is in reality not to an unacceptably high degree as would happen if the trade marks and the goods were identical.

The opponent has not brought any instances of confusion to my attention and the declarations of Mr Murphy and Mr McGenniss, for the applicant, who have both had extensive experience in bulk liquor purchasing and sales, state that they are not aware of any instances of confusion.

Although Mr Sharp made submissions to the contrary, I cannot understand how the opponent could be disadvantaged by the registration of a trade mark that was in use long before its own was put on the market.  The market segments catered to under the trade marks are, in practice, quite discrete.  Registration in this circumstance is a pragmatic acceptance of the current state of play.

I therefore dismiss the opposition in terms of subsection 44(3); and, as I have found that the applicant has had continuous use from 1956, earlier than the priority date of the registration on which the opponent relies (14 March 1994), the opposition under subsection 44(4) must also be dismissed.

Section 41

This section 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).

The opponent's arguments here are based on an entry in Webster's Third New International Dictionary.  Webster's defines the term AUTUMN BROWN as denoting 'a grayish to moderate brown that is yellower and darker than dark beaver'.

Justice Branson, in the recent Federal Court decision of Blount Inc v Registrar of Trade Marks, (1998) 40 IPR 498, the Oregon case, observes that, in applying the provisions of s 41, and in deciding whether a trade mark is capable of distinguishing, the registrar has three options. S/He may 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 distinguishing the designated goods or services.

Branson J says:

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).

In determining the issues of s 41 Branson J directs that the first step is:

to take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods of other persons.

Inherent adaption is to be gauged by reference to the likelihood that other traders will need, without improper motive, to use the indicium in relation to their own goods to describe, for example, the origin, some property or the nature of their goods.

I can think of no reason why some other trader would, without improper motive, need to use the words AUTUMN BROWN in relation to fortified wines.  The colour described by the dictionary entry, above, does not seem to me to be any colour which one would reasonably expect a fortified wine to be.  Even, if this colour were to be one that could describe a fortified wine, the term 'autumn brown' does not seem to have been used in this way by any other trader, anywhere in the world.  An additional problem that I have in regarding this heading of opposition as having any merit is that fortified wines are most usually sold in coloured bottles where the colour of the contents is obscured.  Thus the colour of the contents would appear to be irrelevant to the purchaser, apart from the usual terms in the trade such as 'ruby or 'tawny'.

It follows that the term AUTUMN BROWN appears to me to be evocative, rather than lacking in inherent distinctiveness.  Thus, it is not necessary for me to go on and consider the balance of the tests under section 41.

Accordingly, I find that this ground of opposition must also fail.

Decision
Subject to any appeal from this decision, I find that the opposition fails on each of the heads it was argued and the application may be registered subject to the endorsement:

The provisions of subsections 44(3) and 44(4) applied.

I note, in entering this endorsement, that the prior acceptance under the provisions of subsection 41(5) is varied as I do not find it is required or appropriate.

Costs
I award the applicant is entitled to claim its costs at the official scale.

Ian Thompson
Hearing Officer

21 October 1999