Opposition by Pernod Ricard Winemakers Pty Ltd to registration of trade mark application number 1993395 (classes 24, 33, 35 and 43) – Richmond Park Estate – in the names of Clare Frances Eddington and William...

[2021] ATMO 94

TRADE MARKS ACT 1995

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

ReOpposition by Pernod Ricard Winemakers Pty Ltd to registration of trade mark application number  1993395 (classes 24, 33, 35 and 43) –  Richmond Park Estate – in the names of Clare Frances Eddington and William Henry Eddington

Delegate:                 Debrett Lyons

Representation:       Applicant: Michael Cooper, COOPER IP

Opponent: James Ormond, Ormond & Co.

Decision:                   2021 ATMO 94

Trade Marks Act 1995 (Cth) – opposition to registration of trade mark – s 44 ground of opposition not established – trade mark to be registered

Background

1. This decision is pursuant to an opposition brought by Pernod Ricard Winemakers Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (‘Act’) to registration of the trade mark detailed below in the names of Clare Frances Eddington and William Henry Eddington (‘Applicants’).

   Trade Mark:              Richmond Park Estate (‘trade mark’)

   Application No.:       1993395

   Filing Date:               4 March 2019

   Goods/Services:        Class 24: woollen fabric; woollen cloth; textiles; textiles made of wool

   Class 33: wine; dry wine; dry sparkling wines; sparkling wines; dry white wine; dessert wine; white wine; dry fortified wine; sweet fortified wine; blended wine; still wines; red wine

   Class 35: cellar door sales of wine

   Class 43: wine tasting services (provision of beverages); wine bar service

2. The Trade Mark was examined and accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks.  Thereafter the Opponent filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’) on 28 November 2019.  The Applicants filed a Notice of Intention to Defend.

3. No evidence was filed by the Opponent.  The Applicants relied on the declaration of William Henry Eddington dated 20 June 2020.

4. The parties asked to be heard and elected for a decision based on their written submissions.  Along with the evidence and records of this Office, I have in reaching my decision taken into account the written submissions filed on behalf of the Opponent by James Ormond of Ormond & Co. and on behalf of the Applicants by Michael Cooper of COOPER IP.

   Grounds of Opposition, Onus and Standard of Proof

5. The Opponent’s written submissions make clear that the opposition is only directed towards classes 33, 35 and 43. 

6. In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 44 and 60 but the submissions explain that the nominated ss 42(b) and 60 grounds are not pressed. 

7. Furthermore, only s 44(1) is cited and there are no submissions in respect of the service classes and so, by reduction, the opposition as argued is based on s 44(1) and raised against the class 33 goods[1].

   [1] See also [10] below.

8. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The rights of the parties are to be determined as they stood at 4 March 2019, being in this case both the filing date and priority date of the application.[4]

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

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ).

   Consideration

   Section 44

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

   44Identical 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.

10. In its SGP the Opponent asserts that the Trade Mark is substantially identical or deceptively similar to ‘a number of trade marks registered by another person in respect of similar goods, namely the trade mark registrations numbered:

    ·     849938 for the composite mark including the words RICHMOND GROVE and the image “MANSION WITH TOWER & GARDEN IN ANULLUS” in the name of the Opponent registered in class 33 for “Wines, spirits and liqueurs”; and

    ·     1206194 for the simple word mark RICHMOND GROVE in the name of the Opponent registered in class 33 for “Wines, spirits and liqueurs” (‘the Grove Mark’)’

11. Having thus defined registration 1206194 there is, in the later written submissions, no use of that definition.  Instead, the registrations are together referred to as the ‘prior marks’ and the submission is that:

    [t]here can be no debate that the prior marks are registered in relation to similar (indeed, identical) goods to those in respect of which the Applicant seeks registration of the opposed mark, namely, wine.

    Accordingly, the key question for consideration is whether the phrase RICHMOND PARK ESTATE is substantially identical or deceptively similar to the phrase RICHMOND GROVE. If so, section 44(1) of the TMA will be enlivened, and a ground of opposition established.

12. There is no discussion of the graphic element of the composite mark of registration 849938.  The ‘prior marks’ are both registered for wine and so cover, as the Opponent states, identical goods to those claimed by class 33 of the trade mark.  Accordingly, the Opponent’s case can rise no higher than comparison of the trade mark with the word mark of registration 1206194 (‘prior mark’).  The priority date of the prior mark precedes that of the trade mark and so I am in agreement with the Opponent’s submission that key question is whether RICHMOND PARK ESTATE is substantially identical or deceptively similar to RICHMOND GROVE.

13. The Opponent seeks to persuade me that those marks are substantially identical, positing that the time honoured test based on the comparison of essential features laid out in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd[5] (‘Shell’) has in recent times been re-engineered by the Full Federal Court of Australia. 

    [5] (1963) 109 CLR 407 at 414; [1963] HCA 66.

14. To the extent that the concept of substantial identity has been given renewed attention[6], I think all that has been agreed of relevance is the observation that descriptive elements are unlikely to be the dominant cognitive cues when comparing two marks.  After an initial flurry of interest it has generally been appreciated that the test in Shell is undisturbed. 

    [6] Accor Australia v New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83.

15. In any event, I am not convinced that the determination of essential features should be the focus of attention in the comparison here.  Certainly, the marks share the word, ‘Richmond’, to which the prior mark add word ‘grove’ and the trade mark adds the phrase ‘park estate’, but that is not to say that the word ‘Richmond’ is somehow distinctive or that the two marks should not more properly be compared as wholes.

16. The Opponent claims that:

    … the word RICHMOND appears only four times on registered marks in class 33 - and two of these are the prior marks. … On the other hand, the word PARK appears 51 times in registered marks in class 33, so it should be considered a common geographical feature [and] the word ESTATE appears more than 800 times.

17. I am not in agreement with the Applicant that the words ‘grove’ and ‘park’ are very similar; they are not synomyms and the word ‘grove’ has an arcadian character not present in ‘park’.  Yet, I concede that there is a relationship of sorts between the words and I note, too, that the Trade Marks Office Manual of Practice & Procedure recognises that wine labels commonly feature words such as ‘estate’ and I would expect that to be so. 

18. Nevertheless, a great many trade mark registrations for wine consist of, or include, placenames and my assessment is that the public is astute to that fact even if the placename ‘Richmond’ is not itself the subject of multiple registrations.  The word is very obviously a geographical name (also a surname, further decreasing its distinctiveness) and one with connotations of many places.[7] 

    [7] The Applicant observed that it is the placename of 17 Australian Postcodes.

19. In my assessment, the word ‘Richmond’ barely stands taller than the other words in terms of inherent distinctiveness.  It follows in my judgement that the marks Richmond Park Estate and RICHMOND GROVE should be compared as wholes, side-by-side, with the inevitable finding that they are not substantially identical.

20. Section 10 of the Act provides that ‘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.’  The observations already made in the preceding paragraphs continue to have relevance to the determination of ‘deceptive similarity’.  The Applicants’ submissions include argument that:

    … while the marks being compared contain a common element caution should be exercised when comparing composite or multi word trade marks (Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79]) so as not to assume that the common word is an essential element. The common element RICHMOND is not the essential element of the marks. The marks should be considered as a whole taking into account the overall impression of the mark, the aural and visual comparison and the conceptual comparison or meaning.

    In Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, the Full Court considered whether the marks 'AUSTRALIA POST' and 'DIGITAL POST AUSTRALIA' were deceptively similar. The Full Court considered the whole mark 'DIGITAL POST AUSTRALIA' with 'AUSTRALIA POST', looked to the visual and aural composition of the marks and concluded that the essential element of the former mark was 'DIGITAL POST', which was distinct and conveyed different ideas to the consumer. Ultimately, the Full Court held that the marks were not deceptively similar.

21. Perhaps the case which requires consideration above others is that of Pernod Ricard Winemakers Pty Ltd v Cracka IP Pty Ltd 2018 ATMO 110 where the Opponent successfully argued s 44 before Hearing Officer Smith leading to the refusal of registration of the trade mark, RICHMOND PARK.  In case there be any doubt about my finding that the at-issue trade mark is not substantialy identical to RICHMOND GROVE, it is noteworthey that Hearing Officer Smith found on the same authorities that RICHMOND PARK and RICHMOND GROVE were not substantialy identical.

22. That said, he went on find deceptive similarity in a case, unlike this, where the applicant did not file evidence in reply.  Moreover, as in most trade marks cases, shades of grey divide one decision from another and in my assessment the determination of deceptive similarity falls the other way in the present case.  It is noteworthy that Hearing Officer Smith observed that:

    [w]hile the words ‘park’ and ‘grove’ potentially refer to a geographical area from which wine could be produced, they are not entirely descriptive words to be discounted for the comparison.

23. I am in agreement.  When I couple the low distinctive character of the word ‘Richmond’ which features widely as a placename and is a not uncommon surname, with the fact that the trade mark adds the word ‘estate’, or as I would suggest, the phrase, ‘park estate’, together with the commonplace observation that even casual wine purchasers exercise some degree of care when comparing wines, then I come to the finding that the likelihood of confusion is not sufficiently real and tangible to engage s 44. 

24. I find that the marks are not substantially identical or deceptively similar and so find that the Opponent has not established its ground of opposition under s 44.

    Decision and costs

25. Section 55 of the Act relevantly 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.

    Note:For limitations see section 6.

26. The Opponent has not established the ground of opposition under s 44.  Accordingly, I direct that the trade mark application proceed to registration one month from the date of this decision unless the Registrar has been served with a notice of appeal before that time.  In that case I direct that the disposition of the application be in accordance with the court’s orders.

27. Both parties sought an award of costs. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Opponent.

    Debrett Lyons
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    2 September 2021