Opposition by Institut National de l’Origine et de la Qualité to registration of trade mark application number 1944621 (29, 30, 32, 33) – CHATEAU ROQUEHORT – in the name of Bizko Pty Ltd (as trustee for the Bizko...
[2021] ATMO 5
•21 January 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Institut National de l’Origine et de la Qualité to registration of trade mark application number 1944621 (29, 30, 32, 33) – CHATEAU ROQUEHORT – in the name of Bizko Pty Ltd (as trustee for the Bizko Unit Trust)
Delegate: Debrett Lyons Representation: Opponent: Luke Merrick of counsel, instructed by Corrs Chambers Westgarth, Solicitors
Applicant: Siobhan Ryan of counsel, instructed by Mark My Words Trademark Services Pty LtdDecision: 2021 ATMO 5
Trade Marks Act 1995 (Cth) – section 52 opposition: s 43 of the Trade Marks Act 1995 considered and established in respect of nominated goods – opposition successful – amendment requested to delete nominated goods from specification – trade mark registered with respect to remaining goodsBackground
This matter concerns an opposition under the Trade Marks Act 1995 (Cth) (‘the Act’) brought by Institut National de l’Origine et de la Qualité (‘the Opponent’) to registration of CHATEAU ROQUEHORT (‘the Trade Mark’) made by Bizko Pty Ltd (as trustee for the Bizko Unit Trust) (‘the Applicant’) on 30 July 2018.
The Trade Mark application was examined by the Office as mandated by the Act and published as accepted for possible registration for the following goods:
Class 29: Dairy products; Dairy produce; Cheese; Jams; Food products made from cooked fruits; Food products made from dried fruits; Food products made from preserved fruits; Edible oils; Milk based beverages (milk predominating); none of the foregoing being blue cheese made from sheep's milk
Class 30: Honey; Bread; Bakery products; Tea (not medicinal); Tea-based beverages; Coffee; Coffee beverages; Chocolate; Chocolate beverages; Pastries; Confectionery; Foodstuffs made with flour; Condiments; Mustard; Food dressings (sauces); Sauces (condiments)
Class 32: Non-alcoholic beers; Non-alcoholic beverages (except non-alcoholic beer); Beer
Class 33: Alcoholic beverages (except beer); Wine
The Opponent is a French body which protects appelations of origin including the name ‘Roquefort’ for cheeses. The opposition is directed against the Trade Mark application only insofar as it relates to “Dairy products; Dairy produce; Cheese …” (‘the Opposed Goods’) in class 29.
An endorsement in the following terms was applied to the application but since it relates only to class 33 it can be disregarded for the purposes of this opposition:
It is a condition of registration that the trade mark will only be used under the conditions entered on the Register of Protected Geographical indications and Other Terms for use of the Traditional Expression CHATEAU and that the use will accord with the Wine Australia Act 2013.
It is common ground that Roquefort is a region in the south of France and that the name Roquefort has been used for a specific blue cheese made in the Roquefort region for many centuries. The Opponent sought at the hearing to only press grounds of opposition premised on ss 42(b) and 43 of the Act. Section 42(b) of the Act provides that an application for registration of a trade mark must be rejected if ‘its use would be contrary to law.’ Section 43 provides that:
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.
In short order, the Opponent’s submissions are that:
·The name Roquefort and Roquefort cheeses have a substantial reputation in Australia
·When used on the Opposed Goods, the Trade Mark would have the connotation that such goods either are, or are connected in some way with, Roquefort / Roquefort cheeses since
(a)the word Roquehort is very similar (visually, orally and aurally) to the name Roquefort; and
(b)use of the word ‘Chateau’ reinforces the connection between the Trade Mark and France.
·There is no connection between the Applicant or its products and Roquefort / Roquefort cheeses. The connotation of the Trade Mark is therefore likely to mislead or deceive in a manner that it contrary to both s 43 of the Act and s 18 of the Australian Consumer Law (ACL) [thus being ‘contrary to law under s 42(b) of the Act]
The Opponent sought removal of the Opposed Goods from the Trade Mark application and submitted that if the opposition was upheld, the limiting words in the class 29 specification, namely, ‘none of the foregoing being blue cheese made from sheep’s milk’, become superfluous and should be also removed.
The Applicant’s position was that the Opponent’s evidence does not show that the name Roquefort is sufficiently well known amongst Australian consumers for the alleged connotation to arise and, even if it was, the construction of the Trade Mark does not support the alleged connotation.
These arguments were elaborated upon by the parties at a video-conference hearing that was convened on 3 August 2020, where the Opponent was represented by Luke Merrick of counsel, instructed by Stephen Stern, a partner of Corrs Chambers Westgarth, Solicitors and the Applicant was represented by Siobhan Ryan of counsel, instructed by Jacqueline Pryor of Mark My Words Trademark Services Pty Ltd.
I was delegated by the Registrar to take the hearing and my decision which follows is based on the evidence filed by the parties in accordance with the Trade Mark Regulations 1995 (Cth) (‘the Regulations’) and on the parties’ written and oral submissions.
Evidence
The Opponent’s Evidence in Support of its opposition comprises the following declarations:
·John Tony Hajek dated 17 July 2019 with annexure 1 (‘Hajek 1’);
·Alexandre Henri Levy dated 15 July 2019 with annexure AL-1 and
·Grace Allen Borg dated 16 July 2019 with annexures GAB-1 and GAB-2.
The Applicant’s Evidence in Answer comprises the following declarations:
·Karen Roylance dated 22 October 2019;
·Jacqueline Louise Pryor dated 23 October 2019 with annexures JP1 and JLP2 (‘Pryor’) and
·Catherine Macneil dated 21 October 2019 with annexures CM1 through CM13.
The Opponent’s Evidence in Reply comprises the following declarations:
·Will Adam Studd dated 20 December 2019 with Annexure WS-1 (‘Studd’);
·Alexandre Henri Levy dated 18 December 2019;
·John Tony Hajek dated 20 December 2019 with annexure JTH-2 and JTH-3; and
·Matt Henderson dated 19 December 2019 with annexure MH-1.
Consideration
Section 55 of the Act relevantly provides:
55Decision
(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.
Note:For limitations see section 6.
The Opponent bears the onus to establish at least one of its grounds of opposition.[1] The standard of proof is the balance of probabilities.[2] Neither s 42(b) nor s 43 speak of a relevant date at which the ground is to be proven. That date can be treated as the date of filing of the Trade Mark application, 30 July 2018, albeit that nothing critical turns on that date in this case.
[1] See, for example, Lomas v Winton Shire Council (2003) AIPC 91-389 at [36]; Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318 at [15].
[2] See, for example, Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [133].
For the reasons which follow I have found that the Opponent has established a ground of opposition under s 43 of the Act in respect of the Opposed Goods.
Section 43
The Opponent’s assessment of the law is that while there has been some debate about the proper field of operation of s 43, the commentary from works on trade mark law is that the section catches marks that are misdescriptive as to the geographical origin of the specified goods or services. In that regard it has been said that:
The key considerations in this context appear to be the prominence of the term suggesting geographical origin in the mark and how consumers would understand such a term (that is, the likelihood that goods or services in question would in fact come from the place connoted or denoted by the mark).[3]
[3] Burrell and Handler, Australian Trade Mark Law (2nd ed, 2016, Oxford University Press), p 175
The Opponent submits that the Trade Mark ‘has a connotation that any dairy products to which it is applied either are Roquefort cheese or are connected with Roquefort / Roquefort cheeses in some manner’ and that ‘because of that connotation, the use of the [Trade] Mark in Australia on dairy products would be likely to deceive or cause confusion.’ The Opponent further submits that ‘Australian consumers are likely to mistake the word Roquehort for the name Roquefort’. When confronted with the word Roquehort, they would misremember the precise spelling of the name Roquefort and consider Roquehort and Roquefort to be the same word. Further, that many Australians are familiar with the name Roquefort and Roquefort cheeses and recognise, or expect Roquefort to be, a French word. Finally, that the word ‘Chateau’ in the Trade Mark is widely known in Australia as a French word for house or castle; many Australians regularly see this word used in connection with French wines, and when used in the Trade Mark it underlines a connection with France and between dairy products bearing the Trade Mark and Roquefort cheese, a well-known French product.
I will come to the Applicant’s counter-arguments shortly but I am in general agreement with the Opponent’s submission that the words Roquehort and Roquefort are likely to be confused. They are very similar visually and aurally, having the same length, the same beginning, the same ending and differ by one letter. I barely need the assistance in Hajek1 of Professor Hajek, a professor of linguistics at the University of Melbourne, to guide me to this conclusion.
The connotation can be that of the Trade Mark or of a sign contained in it. In the case of Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt the Registrar’s delegate, Mr Forno, said that:
The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.[4]
[4] (1998) 41 IPR 632 at p 644.
It follows that whatever connotation the word Roquehort may carry is enough, unless for example, the addition of Chateau were to dispel that connotation. I do not find that to be the case here; on the contrary I am agreement with the Opponent’s submissions set out above regarding the likely influence of the word Chateau. I reject the Applicant’s argument based on the Pryor evidence of the state of the Register that the word Chateau is limited in its influence to use in connection with wines.
The evidence shows that the name Roquefort became an appellation of origin under French law decades ago. Roquefort cheeses entitled to use the Roquefort AOC must meet specific organoleptic characteristics and production methods. The cheeses must be made exclusively from Lacaune sheeps’ non-pasteurised full-cream milk and must be produced and aged in the geographical area of production which includes most of the Aveyron Department and parts of its neighbouring Departments including Aude, Lozère, Gard, Hérault and Tam.
It might be noted here that Chateau Roquehort[5] is an actual place located near Pau, approximately 400kms away from Roquefort-sur-Soulzon, the town at the centre of Roquefort cheese production. There is no connection in a geographical sense and no production of Roquefort cheese in or around Chateau Roquehort.
[5] built in 1811 and located in the town of Roquehort.
The evidence shows that Roquefort cheeses have been sold in Australia since the 1960s. Whilst importation and sale ceased between 1995–2005 in consequence of a ban on most cheeses made from unpasteurised milk, importation and sale recommended after the ban was lifted and the evidence details the many ways in which Roquefort cheeses reach the Australian public nowdays. So, for example, Studd is the evidence of a prominent cheese retailer, wholesaler and cheese educator working in Australia having extensive dealings with Roquefort cheese who declares:
… with certainty that the name ROQUEFORT has long been known by many Australian consumers as a name referring to blue vein cheese from France. Not only has Roquefort cheese long been known in Australia, it is also a “go-to” product, a “benchmark cheese” in respect of blue cheese in Australia.
Survey results provided in evidence show that the name Roquefort is recognized by a significant percentage of the Australian public and, of those people, a great percentage connected the name with cheeses from France.
The Applicant sought to convince me that Australian sales of Roquefort cheeses did not establish a reputation for the name in this country. Evidence showed sales of the cheeses to Australia for the years 2005–18, peaking at 42,293 kgs in 2015. Further statistics published in 2015 by Foods Standards Australia New Zealand indicate that Australia imported approximately 25.5 tonnes of Roquefort cheeses per annum in the years 2008–14. By contrast, total cheese consumption in Australia was estimated at 320,000 tonnes in 2017. The Applicant’s submission was that the sale of Roquefort cheeses ‘accounts for a minuscule percentage of the total cheese consumption’ in this country.
To my mind, that reasoning is misleading. The case law is at pains to distinguish the s 43 enquiry from the s 60 analysis and its dependency on an Australian reputation at the relevant time.[6] As I recently noted,[7] the inter-dependency between reputation (or at least, public use) and connotation is clear enough but the critical observation is that made by the authors of Shanahan’s Australian Law of Trade Marks and Passing Off [8] who write of s 43 that:
the nature of the previous use of the sign will have included use that is not use as a trade mark and, indeed, that use will be predominantly non-trade mark use.
… In order to maintain the distinction between s 43 and s 60, it is important to focus on the public knowledge of the sign and what it indicates to the public rather than on the extent to which the sign has been used as a trade mark.
[6] See, for example, Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 where at [79] the court said:
Section 43 … looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion. Section 60 … is concerned with whether the use of the trade mark of which registration is sought would be likely to deceive or cause confusion by reason of the reputation in Australia of another trade mark.
[7] The Sydney Opera House Trust v. Australia China Economics, Trade & Culture Association Incorporated (November 9, 2020), 2020 ATMO 127.
[8] Ian Horak and Mark Davison, Law Book Co., 6th edition. ( does this need a page or paragraph reference?)
What is required for the purposes of s 43 is not proof of reputation, but proof that because of some connotation carried by a trade mark, its use in respect of particular goods or services would be likely to deceive or cause confusion.
Further, in McCorquodale v Masterson Kenny J said[9]:
Allowing for the differences between ss 43 and 44 of the Act, [the observations of French J in Registrar Of Trade Marks v Woolworths [1999] FCA 1020 at [50] regarding assessment of the likelihood a trade mark to deceive or cause confusion] may assist in the construction and application of s 43.
[9] [2004] FCA 1247 at [26]–[27].
And so in Registrar Of Trade Marks v Woolworths, the Court set out a number of guiding principles including:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
I find on the evidence that the names Roquefort and Roquehort would be readily confused and largely mistaken as being the same word. I find that the connotation of Roquefort / Roquehort is that of cheeses coming from France, blue veined or not. As regards the likelihood of deception or confusion, I am guided by Lord Denning’s words in Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at p174 that:
‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.
This is not a case where there is any proof of deception in that sense. The only issue is the likelihood of confusion. In my assessment, the Opponent has met the onus of proof under s 43 by showing that the Trade Mark is likely to cause confusion since there is a real likelihood that some people will wonder or be left in doubt about whether the Opposed Goods have the imprimatur of the Opponent.
The Applicant suggested that any risk of confusion is substantially lessened by the class 29 exclusion agreed by the examiner: ‘none of the foregoing being blue cheese made from sheep’s milk.’ The Applicant reminded me that this is the only type of cheese to which the Roquefort name could apply. I find that this current limitation to the class 29 specification is unnecessary in light of my decision. In any case, were it to remain as part of an alternative outcome where the Opposed Goods were retained, the s 43 objection would still not be overcome since the resulting registration would give protection to a plainly misdescriptive mark – one that covered, inter alia, non-blue vein cheeses not made from goat’s milk.
In the result I find that the Opponent has established a ground of opposition under s 43 in respect of the Opposed Goods.
Decision
Section 55 has been set out above. In Apple Inc. v Registrar of Trade Marks Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, it is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[10]
[10] [2014] FCA 1304, [232].
In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.
The opposition, although successful, was limited to the Opposed Goods and so I provided the Applicant with an opportunity to remove the Opposed Goods (and the class 29 limitation). I wrote to the Applicant’s representatives allowing them time to request deletion of the Opposed Goods and the class 29 limitation from the application. That letter made it plain that if the Applicant did not request those deletions then the Trade Mark would be refused in its entirety. The Applicant made that request and so, whilst the opposition has been successful, in consequence of the requested amendment, application no. 1944621 may proceed to registration subject to the amendment being made.
Costs
Both parties sought their costs in the event of success. The Opponent has been successful in this matter and I accordingly award costs against the Applicant at the official scale set out in Schedule 8 to the Regulations.
Debrett Lyons
Hearing Officer
Hearings and Oppositions
21 January 2021
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