Opposition by Samuel Smith & Son Pty Ltd to registration of trade mark application number 2005063 (Classes 32, 33, and 35) – Southern Vintners & Negociants - in the name of Southern Vintners & Negociants Pty Ltd.

[2021] ATMO 97

TRADE MARKS ACT 1995

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

Re:Opposition by Samuel Smith & Son Pty Ltd to registration of trade mark application number 2005063 (Classes 32, 33, and 35) – Southern Vintners & Negociants - in the name of Southern Vintners & Negociants Pty Ltd.

Delegate:

Blake Knowles

Representation:

Opponent: Louise Emmett of Madderns.  

Applicant: Self-represented.   

Decision:

2021 ATMO 97

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under sections 42(b), 44, and 60 – section 44 established – registration refused.

Background

1. This is a decision on the opposition by Samuel Smith & Son Pty Ltd (‘Opponent’) to registration of trade mark number 2005063 (‘Application’) for Southern Vintners & Negociants (‘Trade Mark’) filed by Southern Vintners & Negociants Pty Ltd (‘Applicant’).

2. The Application was filed on 24 April 2019 (‘Relevant Date’) for the following goods and services:

   Class 32: Alcohol-free wine; Barley wine (beer); De-alcoholised wines

   Class 33: Alcoholic beverages containing wine; Beverages containing wine (wine predominating); Blended wine; Cooking wine; Dessert wine; Drinks containing wine (wine predominating); Dry fortified wine; Dry red wine; Dry sparkling wines; Dry white wine; Dry wine; Fortified wines; Ginger Wine; Hampers consisting predominantly of wine; Low alcohol wine; Mulled wines; Non-sparkling wines; Red wine; Sparkling fruit wines; Sparkling wines; Still wines; Sweet fortified wine; Sweet red wine; Sweet sparkling wine; Sweet white wine; Sweet wine; Vintage wines; White wine; Wine

   Class 35: Cellar door sales of wine

   (‘Goods and Services’)

1. The Trade Mark was examined, accepted for registration, and advertised for opposition purposes. The Opponent filed notice of its intention to oppose registration on 9 December 2019, and a statement of grounds and particulars (‘SGP’) on 23 December 2019. The Applicant subsequently filed a notice of its intention to defend the Trade Mark from opposition.

2. The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14.[1] The Opponent filed Evidence in Support on 28 September 2020. The Applicant did not file Evidence in Answer.    

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) or regulation of the Trade Marks Regulations 1995 (Cth).

3. The parties were given an opportunity to request an oral hearing or file written submissions. The Opponent requested a hearing by video conference. The matter was heard by a delegate of the Registrar on 22 July 2021. The Opponent was represented by Louise Emmett, partner of Madderns Patent & Trade Marks Attorneys. The Applicant did not appear at the hearing or file written submissions. The matter has subsequently been allocated to me, another delegate of the Registrar, for decision. I have made my decision based on a review of the SGP, the evidence, and the submissions of the Opponent made in writing and recorded at the hearing.

Grounds and onus

1. The SGP nominated grounds of opposition under ss 42(b), 44, 58, 58A, and 60. However, the Opponent in submissions pressed only grounds under ss 42(b), 44, and 60.

2. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, 133 (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

1. The Opponent filed the following Evidence in Support:

   Declaration of Robert Smart, Commercial Manager of Risk & Compliance for the Yalumba group of companies, made on 28 September 2020 with Exhibits RS1 to RS13.

2. Mr Smart declares that the Opponent is part of the Yalumba group of companies, and that Yalumba has since 1984 operated a wine distribution company under the trade mark NEGOCIANTS and variants of this mark such as NEGOCIANTS AUSTRALIA and NEGOCIANTS INTERNATIONAL. Mr Smart states that the business distributes wine through various channels, including on premises sales (e.g. restaurants), other wholesalers, and large liquor chains (including Coles and Woolworths). Annexed to the declaration are examples of use of various NEGOCIANTS marks, including as plain words and as composite marks including a device element. The examples of use include extracts from the business website a pricing portfolio, banners, advertisements, third party websites, cartons, and references in media articles. Confidential sales and advertising figures are provided for 2015-2019. The amounts stated are commercially significant. This information is relevant to grounds under ss 42(b) and 60. However, for the reasons given below in relation to the s 44 ground, it is not necessary to discuss this evidence in detail. 

3. Mr Smart declares that the Opponent is the registrant and applicant for various Australian registered and pending trade marks, namely trade mark numbers 804095, 1905068, 1905328, 1948980, and 2067408. For the purposes of deciding this opposition, the most relevant of these trade marks are the following two pending applications (‘Opponent’s Word Marks’):

   Trade mark number:      1905068

   Trade mark:  NEGOCIANTS

   Priority Date:  6 February 2018

   Goods:Class 35: The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Intermediary business services relating to the commercialisation of goods; Retailing of goods (by any means); Wholesaling of goods (by any means); Advertising; Advisory services relating to advertising; all of the foregoing relating to wine.      

Trade mark number:      2067408

Trade mark:  NEGOCIANTS

Priority Date:                    6 February 2018

Goods:Class 33: Wine  

Discussion

Section 44

1. To establish grounds of opposition under ss 44(1) or (2), the Opponent must rely on at least one pending or registered trade mark that has a priority date earlier than the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark. Further, the earlier mark must be filed or registered in respect of one or more of the following: (i) goods that are similar to the goods of the Application, (ii) services that are similar to the services of the Application, (iii) goods that are closely related to the services of the Application, or (iv) services that are closely related to the goods of the Application.

2. The Opponent in submissions relies on four pending and registered trade marks, including the Opponent’s Word Marks. Originally in the SGP, trade mark number 2067408 was not one of the marks relied on by the Opponent under the s 44 ground. However, during the opposition, trade mark number 2067408 was filed as a ‘divisional application’ based on trade mark number 1905068 (the ‘parent application’). The parent application was initially filed in classes 33 and 35. The divisional application divides out class 33 into a separate application which has the same priority date as the parent application. While no request has been made by the Opponent to amend the SGP to include reference to the divisional application, I consider it is appropriate to allow the Opponent to rely on the divisional application under the s 44 ground. The Applicant has been put on notice from the start of proceedings that grounds of opposition would be relied on under s 44 based on the NEGOCIANTS mark under the parent application in classes 33 and 35. The divisional application is merely a continuation of the parent application for class 33, and there is no unfairness to the Applicant in allowing the Opponent to rely on the divisional application under s 44.   

3. If I am satisfied that grounds of opposition under s 44 are made out based on the Opponent’s Word Marks, it is not necessary to also consider the other marks relied on by the Opponent. Further, given that the Opponent’s other marks contain an additional distinctive device element, these marks would not be considered deceptively similar to the Trade Mark if I find the Trade Mark is not deceptively similar to the Opponent’s Word Marks.

4. The Opponent’s Word Marks have a priority date of 6 February 2018, which is earlier than the priority date of the Application (24 April 2019).  As such, I must determine whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s Word Marks.

5. The test for whether trade marks are substantially identical compares the marks: ‘…side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.’[4]

   [4] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

6. The test for whether trade marks are deceptively similar is broader and requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[5] In determining deceptive similarity, the following must be taken into account:

-There must be a real, tangible danger of confusion. Mere possibility of confusion is not enough.[6]

-The impression of the marks from the perspective of ordinary consumers (not those with high perception or exercising habitual caution, or those who are exceptionally careless or stupid).[7]

-The effect of sound and meaning of the respective marks.[8]

-The way in which the goods or services are ordinarily sold or provided.[9]

-A likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[10]

-Consumers may retain an imperfect recollection of a mark or its essential features.[11]

-The impression of the respective marks as a whole, including the size, prominence and stylisation of word and device elements and their relationship to each other.[12] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[13]

-It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[14]

[5] Trade Marks Act 1995 (Cth) s 10.

[6] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

[7] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

[8] Ibid.

[9] Ibid.

[10] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

[11] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

[12] Optical 88 Ltd v Optical 88 Pty Ltd [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

[13] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

[14] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

1. The Trade Mark consists of three words ‘Southern Vintners & Negociants’. The Opponent’s Word Marks consist of a single word, NEGOCIANTS. The presence of a single common word between the respective trade marks in these circumstances is not sufficient to create a total impression of resemblance. As such, I do not consider the Trade Mark to be substantially identical to the Opponent’s Word Marks.

2. Turning to the question of deceptive similarity, the fact that an earlier trade mark is wholly contained within a later trade mark does not automatically render the respective trade marks as being deceptively similar. It is necessary to consider the respective trade marks as a whole. In this case, if the visual, aural, and/or conceptual impact of the additional words in the Trade Mark would significantly reduce the potential for confusion with the Opponent’s Word Marks, then it may be that the trade marks as a whole are not deceptively similar.  

3. I also take into account that the term NEGOCIANTS has a descriptive meaning, being French for ‘trader’. The online Collins English dictionary indicates that the term also refers to a wine merchant who buys grapes or wines and sells them under his or her own name, although there is no evidence before me that this usage is particularly common in the Australian market.  I also note that the Opponent’s Word Marks are still pending, and it is possible that one or both may be refused or rejected based on a lack of capacity to distinguish. However, the ultimate fate of the applications for the Opponent’s Word Marks is not something that I can consider in reaching my finding in this opposition. I must assume that it is possible the Opponent’s Word Marks may achieve registration and attract the statutory rights that registration entails.

4. I consider that the Trade Mark is deceptively similar to the Opponent’s Word Marks. While the term NEGOCIANTS has some descriptive significance, it is also the most memorable essential feature in the Trade Mark. The other words ‘Southern Vintners’ in the Trade Mark are themselves somewhat descriptive in nature (i.e. describing a vintner located in or servicing a southern location) and this reduces their impact in distinguishing the respective trade marks. I consider that a person familiar with the Opponent’s Word Marks who later encounters the Trade Mark may be caused to wonder whether the marks originate from the same source or are otherwise related. For example, a consumer may consider that the Trade Mark refers to a joint venture, or a southern office of the NEGOCIANTS business.  Even if a consumer does not reach one of these specific conclusions, the presence of the entirety of the NEGOCIANTS mark within the Trade Mark is enough so that an appreciable number of ordinary consumers could ‘entertain a reasonable doubt’ regarding the trade source of the relevant goods or services.

5. I must now consider whether the Goods and Services are either the same as the goods and services covered by the Opponent’s Word Marks, or whether the respective goods and services are ‘of the same description’.  The test for determining whether goods and services are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods or services, their respective uses, and the trade channels through which they are sold, with no single factor being determinative. [15]

   [15] Re Jellinek’s Application (1946) 63 RPC 59, 70.

6. The goods in Classes 32 and 33 of the Trade Mark are wines and wine-based beverages, which are the same as (or of the same description, based on their very similar nature, use, and trade channels) the claim for wine covered under trade mark number 2067408. Similarly, the services of the Trade Mark in Class 35 ‘cellar door sales of wine’, fall within the scope of the claim in Class 35 of trade mark number 1905068 for ‘retailing of goods (by any means); all of the foregoing relating to wine’.

7. For the reasons given above, the Opponent has satisfied all of the requirements for the s 44(1) and (2) ground of opposition. I also note that the Applicant has not filed any evidence which would support a claim of prior use under s 44(4), or honest concurrent use under s 44(3).

8. As I have found that grounds of opposition are established based on the Opponent’s Word Marks, it is not necessary to consider the other trade marks relied on by the Opponent under s 44, nor is it necessary to consider any other grounds of opposition.   

Decision and costs

1. The Opponent has established the ground of opposition under s 44. As such, I have decided to refuse registration of the Trade Mark for all of the Goods and Services. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

2. It is usual for costs to follow the event.  As there is no reason to depart from the general rule, I award costs against the Applicant.

Blake Knowles

Hearing Officer

Delegate of the Registrar of Trade Marks

6 September 2021