Opposition by SELECCIÓN DE TORRES S.L to registration of trade mark application number 1809309 (class 33) – Celeste Noir Coffee Liqueur (word mark) - in the name of Australian Liquor Company Pty Ltd 608 799 453
[2020] ATMO 19
•11 February 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by SELECCIÓN DE TORRES S.L to registration of trade mark application number 1809309 (class 33) – Celeste Noir Coffee Liqueur (word mark) - in the name of Australian Liquor Company Pty Ltd 608 799 453
| Delegate: | Kate Doherty |
| Representation: | Opponent: Corrs Chambers Westgarth Applicant: Y Intellectual Property |
| Decision: | 2020 ATMO 19 Trade Marks Act 1995 (Cth) – opposition under section 52 – Grounds of opposition pursued ss 44, 60 and 42(b) (Competition and Consumer Act 2010, ss 18 and 29); s 60 is established; trade mark will not proceed to registration. |
Background
This opposition is a proceeding on the written record in relation to the following trade mark under the Trade Marks Act 1995 (‘the Act’):
Trade Mark No: 1809309
Trade Mark: CELESTE NOIR COFFEE LIQUEUR (‘Trade Mark’)
Filing date: 15 November 2016
Applicant: Australian Liquor Company Pty Ltd 608 799 453
Specification of Goods: (at time of filing): Class 33- Coffee based liqueurs; Liqueurs
Endorsement: The applicant has advised that the English translation of the French word NOIR appearing in the trade mark is BLACK – 10 November 2018
The Trade Mark was advertised accepted on 6 April 2017. A Notice of Opposition was filed on 1 June 2017 by SELECCIÓN DE TORRES S.L (‘The Opponent’). On 28 July 2017, the Applicant filed a Notice of Intention to Defend the Opposition. The Statement of Grounds and Particulars (‘SGP’) nominates grounds of opposition under ss 42(b), 44, and 60.
Evidence
The evidence received from the parties.
| Declarant | Party | Evidence Stage | Date | Annexures | Decision Reference |
| T Evans | Opponent | EIS | 3 November 2017 | TE-1 to TE-7 | Evans Declaration |
| A Pujol | Opponent | EIS | 2 November 2017 | AP-1 to AP-5 | Pujol Declaration |
| A Tosh | Applicant | EIA | 29 January 2018 | AT-1 to AT-5 | Tosh Declaration |
| A Petale | Applicant | EIA | 29 January 2018 | AP-1 | Petale Declaration |
| A Pujol | Opponent | EIR | 28 March 2018 | AP-6 to AP-7 | Second Pujol Declaration |
| T Evans | Opponent | EIR | 3 April 2018 | TE-8 | Second Evans Declaration |
| S Stern | Opponent | EIR | 3 April 2018 | SD-1 to SD-4 | Stern Declaration |
The declarations annex evidence which include copies of: product images, confidential sales figures, lists of distributors, online news articles, advertisements and reviews, material associated with industry awards, menus, as well as product listings on various third party wholesaler websites.
The Opponent is the owner of the following registered trade mark:
(‘Opponent’s Mark’):
Words: CELESTE EN LAS NOCHES DE VENDIMIA ESTAS SON LAS ESTRELLAS QUE VIGILAN Y CONTEMPLAN EL NACIMIENTO DE CELESTE SELECCION DE TORRES
Image description: SKY WITH STARS & CONSTELLATIONS; 3 STARS IN SHIELD
Trade Mark No: 1249387
IR Number: 965186
Filing date: 17 March 2008
Class 33: Alcoholic beverages (except beers)
Endorsements: Trade Mark Description: Mark Description: Consists in a graphic comprising an outspread label, with a top frame resembling a sky with stars and constellations, featuring the name CELESTE and underneath it the inscription "EN LAS NOCHES DE VENDIMIA ESTAS SON LAS ESTRELLAS QUE VIGILAN Y CONTEMPLAN EL NACIMIENTO DE CELESTE". Below this inscription is the exact position of this star namely "LAT. 41, 54? NORTE LONG. 4, 14? OESTE"; and below the position is the wording Seleccion de TORRES and a square with three stars. All of the above, as depicted in the attached design.
Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.
The applicant has advised that the English translation of the words appearing in the trade mark is CELESTIAL.
Written submissions were received from both parties.
Onus and Standard of Proof
The relevant standard of proof is the civil standard, or “on the balance of probabilities”.[1]
[1] Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].
The Opponent bears the onus of proof in an Opposition Hearing.[2] The application will succeed if one or more of the nominated grounds are established. The rights of the parties are determined at the date of filing the application, the relevant date is the priority date of 15 November 2016.
Grounds of Opposition
[2] Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].
Section 60 – Trade mark is similar to a trade mark which has acquired a reputation in Australia
Section 60 of the Act provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first mentioned trade mark would be likely to deceive or cause confusion.
Section 60 is discussed in McCormick & Company Inc v McCormick per Kenny J:3F[3]
Reputation is “the recognition of the [trade] marks by the public generally”.
However, for highly specialised products or products directed at specific markets the relevant assessment of reputation is made in relation to those markets and not the public generally.4F[4] Reputation is often proven by a high volume of sales, as well as substantial advertising and promotional expenditures. Direct evidence for consumer appreciation of a mark is often not required.5F[5]
[3] (2000) 51 IPR 102 [81].
[4] Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410 [436].
[5] Ibid. [86].
In ConAgra Inc v McCain Food (Aust) Pty Ltd it was stated that reputation cannot be assumed and must be established as a question of fact:6F[6]
It is one thing to sell goods, it is quite another to show that they have amassed a reputation which is sufficient to lead consumers into deception or confusion and to satisfy the requirements of s 60.7F[7]
[6] ConAgra Inc v McCain Food (Aust) Pty Ltd (1992) 33 FCR 302.
[7] Sara Lee Corp v Bali Blue Pty Ltd (2003) 59 IPR 619 [25].
Earlier use can result in an earlier priority date.8F[8] To establish a ground of opposition under s 60, the Opponent must demonstrate that at the priority date of 15 November 2016:
a)there was another trade mark;
b)which had acquired a reputation in Australia;
c)amongst a significant section of the public;
d)such that use of the opposed trade mark would be likely to deceive or cause confusion.
[8] Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR [606].
The Opponent’s Mark was registered on the Trade Mark Register some years before the priority date.9F[9] Evidence provided by the Opponent shows the Opponent’s Mark was applied to goods in Class 33, and used as a trade mark for alcoholic beverages.[10] Those goods won awards featured in publications which have significant numbers of subscribers in Australia.[11] A list provided of ‘the top’ 80 establishments whom distribute the goods covers a wide variety of locations in Australia.[12] Confidential figures for sales and revenue cover the period 2008 to 2015. The amounts are modest but show an increasing trend with a steady baseline.[13] The Opponent is not required to prove exponential, increasing or even constant use of the goods with the trade mark applied.
[9] Above at [1] and [4].
[10] Evans Declaration Second, Annexure Eight Stern Declaration, Annexures 1 and 2.
[11] Declaration Pujol [13] and [29]; Evans Declaration, [28] – [30] and Annexure Seven; Pujol Declaration Second [9] – [10]; Stern Declaration, Annexure Three.
[12] Evans Declaration, Annexure 1.
[13] Ibid. Annexure 2.
While the sales figures are moderately low, there is a combination of a distinct label and the relevant class of goods are the type of goods persons would ordinarily pay reasonable attention to.[14] None of the menus provided show more than five Spanish wines on their wine lists, and many show just one.[15] Many distributors are niche including moderate to high priced restaurants over a wide geographic range which confer an esteem and persuade me there is a relevant reputation for the purposes of s 60.
[14] Contrast with customers who are children - Coca‑Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; Scotch Whisky Assn v De Witt (2007)FCA 1649 [38].
[15] Stern Declaration, Annexure 1.
Amongst a significant section of the public
The requirement that the deception or confusion should be amongst “a substantial number of persons” must be “properly and sensibly applied”.11F[16] The degree of reputation necessary is dependent on the market in question. [17] In Le Cordon Bleu BV v Cordon Bleu International Ltee12F Heerey J observed:13F[18]
What is “significant” or “substantial” will depend on the nature of the goods or services in question. For highly specialised products, awareness among a few thousand persons, or even less might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.
[16] Re Bali Brassiere Co Inc's Registered Trade Mark [1968] HCA 72.
[17] Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 50 IPR 1; [2000] AIPC 91-661; [2000] FCA 1587; Spiral Foods Ltd v Valio Ltd (2000) 50 IPR 473.
[18] Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 50 IPR 1; [2000] AIPC 91-661; [2000] FCA 1587 [91]; Aktion Zahnfreundlich v Suntory Ltd (1998) 42 IPR 593; [1998] ATMO 44.
The Applicant has submitted that the level of sales for the trade marked goods is not significant and provided a percentage calculation of market share for all wine production in Australia by liters.[19] This is not an appropriate strategy for determining market share or recognition. The wine market can be segmented by price range, broad wine types, grapes, as well as country of origin and other factors: a global and purely numerical ratio is not persuasive. The evidence establishes that the Opponent’s goods are both a well-known and well-regarded Spanish red wine in Australia.[20]
[19] Tosh Declaration, Annexure Five.
[20] Opponents Submissions [29]; Evans Declaration [20].
Likely to Deceive or Cause Confusion
There is no evidence before me of actual confusion, but there is no assertion that the Opponent’s marks are particularly well known.18F[21]
[21] Coldstream Refrigerators Ltd v Aircrafts Pty Ltd (1950) AOJP 1491 [1496].
Although it is not necessary that goods or services are of the same type for consideration in relation to s 60, where goods and services are associated the threshold to establish a likelihood of deception or confusion will be lower. The overlap of goods in Class 33 enlivens this consideration as well as an alert for notional use. [22] Though one application is for liqueur and the other is for wine the channels where the goods are sold are likely to overlap significantly, as well as many of the rules and regulations in relation to their sale.[23]
[22] Re Smith Hayden & Co (1946) 63 RPC 97 [101].
[23] E and J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; Jellinek's Application (1946) 63 RPC 59.
The Opponent’s evidence contains screenshots of the product with the trade mark prominently displayed for sale on various websites including major distributors. 19F[24] The Applicant’s goods are also shown as offered for sale on some of the same online distributors as the Opponent’s goods.[25] The Applicant’s evidence states the brand name aetiology reflects that the coffee plantation is some 5,000 ft above sea level. Similarly, the Opponent claims that the word ‘Celeste’ was chosen as the vineyards are located 895 metres above sea level and are therefore ‘close to the sky’.[26]
[24] Evans Declaration, Annexure 3.
[25] Tosh Declaration, Annexure Three.
[26] Pujol Declaration [27].
There is an image in evidence of the Applicant’s goods showing a bottle with a label stating ‘Celeste Noir’ in a text box, with ‘coffee liqueur’ immediately below the text box, the image has a pair of wings depicted above the textbox.[27] The Opponent states “the Celeste label is a striking image of the night sky featuring constellations as seen above the vineyards in which the grapes for the Celeste wine are grown” and that the label is “unusual and catches the eye of consumers”. [28] Although the label features many words, there is only one word easily recognisable in the English language, ‘Celeste’ which is also a given name.[29] The device is a mere illustration of the words and may be somewhat discounted.[30] The words are highly descriptive and add little to distinguish the marks.[31] I find this is a dispute where the translation of the text which appears in Spanish is not critical or relevant in this matter. The large amount of small text has not been translated and appears merely ornamental to the device and the word ‘CELESTE’.[32] I find that while the additional text is unequivocally part of the Opponent’s Mark, it would be discounted by potential purchasers who would view ‘Celeste’ as the memorable feature.
[27] Tosh Declaration, Annexure 2.
[28] Declaration Pujol One, [23].
[29] Evans Declaration, Annexures Four and Seven – shows labels showing use as a trademark.
[30] E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15.
[31] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56.
[32] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48.
The Opponent states that the label sometimes uses the word ‘Crianza’ and that this is a descriptive word relating to the age of the wine.[33] Evidence is provided showing unrelated companies using that term and I am satisfied of the Opponent’s assertion to the meaning on that basis.[34] The only non-descriptive part of either mark is the use of the word ‘Torres’ in the Opponent’s mark. I do not find the use dominant at a level which would displace the prominence of the word ‘Celeste’. In any event, ‘Torres’ is separately registered as a Trade Mark for Class 33 goods and is not consistently applied.[35]
[33] Pujol Declaration [26].
[34] Evans Declaration Second, Annexure Eight; Stern Declaration, Annexure Four.
[35] Trade Mark Registration Number 1141776.
Allowing for imperfect recollection, I find the idea of the trademarks are highly similar. [36] The dominant feature of both trademarks is the word ‘Celeste’.[37] Viewing the Trade Mark as a whole there is insufficient evidence before me to show that this would not be likely to mislead or confuse a substantial number of persons.[38] The word ‘Noir’ does little to distinguish a could indicate a different grade of the good, many products have a ‘black label’ or luxury version and this is a reasonably common terminology.
[36] Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Ltd [2004] FCAFC 196 [77].
[37] Polo Textile Industries v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227.
[38] Registrar of Trade Marks v. Woolworths Limited [1998] FCA 1268.
The test is not for confusion. It is for real, tangible danger of confusion.[39] The goods in the Application are for the types of goods for which there is ordinarily a close examination prior to purchase that would eliminate or reduce confusion.24F[40] But allowing for the level of similarity between the marks, accessed by the same types of consumers, from the same types of retailers and distributors: close examination would not conclusively overcome an examination between the goods at their point of sale by a reasonable consumer.
[39] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd [1954] HCA 82.
[40] Fratelli Fantini SpA v Beverley Harris [2019] ATMO 44 [54].
While there is no monopoly for the word Celeste, there must be more than a descriptive addition to the Trade Mark for goods in the identical class. I find the s 60 ground of opposition is established.
Decision
The Opponent has established a ground of opposition. Pursuant to section 55(1) of the Act, Trade Mark number 1809309 will not proceed to registration.
The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that the Trade Mark shall not be removed from the Register until the appeal has been decided or discontinued.
Costs
Costs ordinarily follow the event for an Opposition Hearing. No reason has been advanced to displace this proposition, therefore I award costs against the Opponent under s 221 of the Act in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Kate Doherty
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
11 February 2020
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