Opposition by Southcorp Brands Pty Limited to registration of trade mark application number 2348596 (classes 16, 33 & 35) – Portrait of a woman (figurative) - in the name of Sunshine Millionaire Wines Group Pty Ltd

[2025] ATMO 148

TRADE MARKS ACT 1995

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

Re:Opposition by Southcorp Brands Pty Limited to registration of trade mark application number 2348596 (classes 16, 33 & 35) – Portrait of a woman (figurative) - in the name of Sunshine Millionaire Wines Group Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Jeremy Herz, Herbert Smith Freehills

Applicant: Melissa McGrath of Counsel, instructed by Emerson Lewis Lawyers

Decision:

2025 ATMO 148

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 62A considered and established – trade mark refused registration

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] brought by Southcorp Brands Pty Ltd (‘Opponent’) to registration of the trade mark detailed below filed in the name of Sunshine Millionaire Wines Group Pty Ltd (‘Applicant’):

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Trade Mark:               

(‘Trade Mark’)

Number:2348596  (‘Application’)

Filing Date:                12 April 2023              (‘Relevant Date’)        

Specification:            Class 16: Covers for wine lists; Mats of card for wine glasses; Mats of paper for wine glasses; Printed publications relating to wine; Sleeves bearing printed matter for use in covering wine bottles

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; 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; Wine hampers; Wine-based beverages 

Class 35:  Wine shop services 

(‘Applicant’s Goods and Services’)

2.     Following the advertisement of acceptance of the application for possible registration, the Opponent filed a Notice of Intention to Oppose the registration on 10 November 2023, followed by a Statement of Grounds and Particulars (‘SGP’) on 11 December 2023.  The Applicant filed a Notice of Intention to Defend on 2 February 2024.

3. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support (‘EIS’) on 6 May 2024 followed by the Applicant’s evidence in answer (‘EIA’) filed on 9 August 2024. The Opponent filed its evidence in reply on 16 October 2024 (‘EIR’).

4.     Once the time for filing evidence had ended, the parties had an opportunity to request a hearing.  Both parties requested an oral hearing.  The Opponent filed a written summary of its submissions on 13 May 2025 and the Applicant filed a written summary of its submissions on 20 May 2025.  I heard this matter as a delegate of the Registrar of Trade Marks on 27 May 2025.  At the hearing, Jeremy Herz of Herbert Smith Freehills (observed by Anna Olsen and Jennifer Lai of the Opponent) made submissions on behalf of the Opponent.  Melissa McGrath of Counsel, instructed by Stefano Calabretta of Emerson Lewis Lawyers, made oral submissions on behalf of the Applicant.  I make my decision based on the aforementioned materials and submissions of the parties.

Grounds and onus

5.     In its SGP, the Opponent nominated grounds of opposition under ss 42(b) and 62A.  The        s 42(b) ground of opposition was not pressed by the Opponent.

6.     The Opponent bears the onus of establishing the nominated ground of opposition.[2]  The standard of proof is the ordinary civil standard on the balance of probabilities.[3]  The rights of the parties are to be determined at the Relevant Date being both the filing date and priority date of the Trade Mark.

[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).

Evidence

7.     The following evidence was filed:

Declarant and Position	Date	Exhibits/Annexures
EIS
Louisa Xu, Senior IP Counsel of the Opponent (‘Xu 1’)	6 May 2024	Exhibits LX-1 to 25, LX-27 to LX-32 and Confidential Exhibits LX-26, LX-33 and LX-34
EIA
Wei Kraussman, sole director of the Applicant (‘Krausmann’)[4]	9 August 2024	WK-1 to WK-9
EIR
Louisa Xu (‘Xu 2’)	16 October 2024	N/A

[4] As explained in [20], there appears to be a typographical error in the declarant’s name.

Opponent’s EIS

8.     In summary, the Opponent asserts that the Applicant is one of several sophisticated imitators of the Opponent’s renowned PENFOLDS brand.  The Applicant is alleged to have adopted the Trade Mark in a deliberate attempt to capitalise on the Opponent's reputation, particularly within the Chinese community.  In an attempt to legitimise its behaviour, the Applicant has associated itself with William Penfold Simpson, a 7th generation descendant of the Penfolds family. However, the Opponent argues that the Applicant’s use of PENFOLDS and related indicia far exceeds any permissible use by Mr. Simpson, let alone a third party who, according to the Opponent, has a history of acting in bad faith regarding its intellectual property.  The Opponent’s evidence is summarised below.

9.     The Opponent is a wholly owned subsidiary of Treasury Wines Estates Limited (‘TWE’)[5], one of the world's largest premium wine producers which sells its wines under various well-known brands including PENFOLDS.  The PENDFOLDS brand was founded by Dr Christopher and Mary Penfold at the Penfolds winery at Magill Estate in South Australia and PENFOLDS has been used in Australia since 1844 by TWE (and its predecessors in title) for wine, winemaking and related goods and services. TWE’s PENFOLDS website describes Mary Penfold as ‘the unsung chief of Penfolds with many experimentations, growth and winemaking philosophies originating from her’.

[5] Any reference to TWE in this decision includes a reference to the Opponent.

10.     The Opponent’s PENFOLDS wine and winery have received numerous awards over the years as detailed in Xu 1.  Xu 1 provides details of TWE’s global net sales revenue for 2022 as well as the global and Australia/New Zealand net sales revenue under the PENFOLDS brand for financial years (‘FY’) 2021 and FY22. The sales revenue is extremely substantial and sales of PENFOLDS wine forms a significant part of the overall sales. 

11.     The Opponent owns the following Australian trade mark registration for an image of Mary Penfold:

Number	Trade Mark	Priority Date	Goods
2214668	(Opponent’s Mark’)	29/9/2021	Class 33: Wine; Alcoholic beverages (except beer)

12.     Xu 1 declares that the Applicant is the producer of PENDE VALDE wines in Australia and provides evidence in support of this claim including that:

·     the PENDE VALDE trade mark is registered in Australia in the name of Three Possums Wines Pty Ltd (‘Three Possums’) and the Applicant is the address for service for this registration; 

·     the Applicant owns Australian trade mark registrations for COOK1788 and CAPTAIN COOK WINES.  A photograph of the back label of one of the Applicant’s wine bottles is exhibited which reads ‘Pende Valde for Cook 1788 THE MARY 2017’ and lists the Applicant as the producer and bottler;[6]

·     the website at (‘CCW Website’) features both the COOK1788 and PENDE VALDE brands with the Applicant’s name listed under these brands.[7]  The CCW Website prominently features PENDE VALDE wines branded THE MARY and THE MARY NO.1, the latter label also features the Trade Mark.  

[6] Xu 1, Exhibit LX-11.

[7] Ibid, Exhibits LX-14 and LX-15.

13.     Xu 1 exhibits screenshots of the social media accounts of COOK1788 and PENDE VALDE as well as screenshots of the Pende Valde website at (‘Pende Valde Website’) showing wines from these brands marketed with PENFOLD, MARY PENFOLD, images that are highly similar to the Opponent’s Mark, images of PENFOLDS wine and other indicia that the Opponent claims is intended to suggest an association between the Opponent and its PENFOLDS wine.  Further, Mary and Christopher Penfold are mentioned in the ‘About Us’ section about PENDE VALDE wines on the CCW Website. 

14.     Exhibited to Xu 1 is a copy of a cease and desist letter dated 21 February 2021 that TWE sent to Sunshine Australia Wine Pty Ltd (‘SAW’), addressed to the directors of that company Mr Wei Wang[8] and Mr William Ma (‘Demand Letter’). The Demand Letter claimed that SAW was infringing the Opponent’s PENFOLDS registrations, breaching the Australian Consumer Law (‘ACL’) and engaging in passing off by misrepresenting that SAW is associated or affiliated with the Opponent. Xu 1 also exhibits a historical business name registration by SAW for PENFOLD FAMILY WINE CLUB and Australian Securities and Investments Commission (‘ASIC’) extract showing that business name as cancelled.

[8] The letter was erroneously addressed to Mr Wei Wang instead of Ms Wei Wang.

15.     Current and historical ASIC extracts for the Applicant, SAW and Three Possums exhibited to Xu 1[9] show that Wei Krausmann is a current director of the Applicant and also Three Possums.  William Ma is a former director of SAW and Three Possums.

[9] As noted in [12], Three Possums is the registered owner of the mark PENDE VALDE.

16.     The Opponent alleges that William Ma has used and authorised Chinese entities to use PENFOLD FAMILY WINE CLUB to promote PENDE VALDE wines in both Australia and China.  Xu 1 exhibits a copy of email correspondence from William Ma dated 18 January 2021, indicating William Ma was the General Manager/Director of SAW and Three Possums Wines Pty Ltd, which includes the COOK1788 logo and the CCW Website in William Ma’s email signature. Attached to the email is an authorisation agreement signed by William Ma on behalf of PENFOLD FAMILY WINE CLUB with a copy of the ‘Certificate of Authorisation’ (‘Certificate’) signed by William Ma and featuring the COOK1788 Logo and PENDE VALDE mark.  Xu 1 also exhibits a photo taken on 21 May 2021 of the Certificate of Authorisation for PENFOLD FAMILY WINE CLUB which has been issued to Shanghai Chixia International Trading Co Ltd (‘Chixia’) and Xiatao International Trading (Shanghai) Co Ltd (‘Xiatao’).  In the photo, the Certificate is next to a bottle of ‘Pende Valde for Cook1788 THE MARY 2017’ wine which lists the Applicant as the producer and bottler.  The Opponent notes that this Certificate of Authorisation shows a connection between William Ma, Chixia and Xiatao.

17.     Xu 1 declares that the Opponent has been successful in court action in China against Chixia and Xiatao for trade mark infringement and unfair competition in relation to the promotion of PENDE VALDE wines for using the PENFOLDS mark and associated indicia including images of Christopher and Mary Penfold.  Xu 1 attests that the court of second instance maintained the prior decision in September 2023, confirming that Chixia and Xiatao’s behaviour constituted unfair competition and trademark infringement with respect to use of BEN FU, PENFOLD, Penfolds and Penfolds Family on promotional materials.  Copies of the judgements and English translations are provided.

18.     Xu 1 also notes that the COOK1788 Logo is registered in China in the name of Chixia.

19.     Also exhibited to Xu 1 is a copy of an authorisation agreement (with English translation) signed by William Ma on behalf of PENFOLD FAMILY WINE CLUB and Xiatao.  Xiatao[10] has provided undertakings to TWE regarding the use of its intellectual property and a copy of the translated undertakings are exhibited.

[10] The English translation of Xiatao is China & China International Trading (Shanghai) Co Ltd which is the name in the translation of the undertakings.

Applicant’s EIA

20.     The Applicant’s EIA is sworn by Wei Kraussman as the sole director of the Applicant and sole director of its ‘sister entity’ Three Possums.  As a preliminary comment, I note that on the ASIC extracts for these companies, the declarant’s name is spelt Wei Krausmann.  I am satisfied that despite the spelling differences, these are the same person.  For ease of reference, I will refer simply to the declarant as Krausmann.

21.     Krausmann attests to the incorporation of the Applicant in 2016 and declares that the Applicant operates a vineyard in NSW where it produces wine.  According to Krausmann, the Applicant created the brand COOK1788 in November 2019 and Krausmann confirms that the Applicant operates the CCW Website.

22.     Krausmann declares that Mr William Penfold Simpson made and sold wine under the brand PENDE VALDE from 2002 to 2020.  These wines were promoted on the PENDE VALDE website which Krausman declares included images of Mary Penfold.

23.     In about March 2020, the Applicant purchased wines from Mr Simpson and Krausmann developed a relationship with Mr Simpson.  As a result, Three Possums assisted Mr Simpson in registering PENDE VALDE as a trade mark in China.[11] 

[11] Registration number 2086376.

24.     Krausmann declares that Mr Simpson allowed the Applicant to use his PENDE VALDE brand and that the Applicant intended to ‘honour his work and legacy which implicitly included that of his family in my company’s products’.  Krausmann attests that she communicated with the Opponent about referencing Mr Simpson and his bloodline, including providing brand guidelines, and understood that the Applicant and its related entities had the Opponent’s permission.  Krausmann annexes a copy of the emails in support of this claim (‘Emails’).  I note that the Emails are undated and show no email addresses.  Moreover, the emails are not between the Applicant or Krausmann and the Opponent (or any related entity) but rather appear to be between William Simpson and a person only identified as Jim and further indicate that the Opponent has not consented to many aspects of the Applicant’s marketing involving use of PENFOLDS, the Penfold family name, MARY PENFOLD or Mary Penfold’s image.

25.     On about 19 November 2020, Three Possums signed an exclusive distribution agreement with Mr Simpson to become the sole global distributor and agent of PENDE VALDE wines (‘Agreement’).[12]  According to Krausmann, the Agreement provides that subject to the Applicant placing a volume of orders, it has the exclusive right to:

a.   use all of the intellectual property of Mr Simpson including PENDE VALDE throughout Australia (except for South Australia where Mr Simpson retains the rights) and globally;

b.   use the website at including maintaining the product list and contents, as well as the right to create a Chinese language version; and

c.   merge the COOK1788 brand into a subcategory of PENDE VALDE which can feature Mr Simpson’s signature.

[12] Krausmann, Annexure WK-8.

26.     Krausmann declares that Three Possums has consented to the Applicant’s use and registration of the Trade Mark.

27.     Krausmann acknowledges that William Ma was previously a director of Three Possums but attests that he ceased being the General Manager of Three Possums in March 2022 after a breakdown in their relationship and transferred his shares in Three Possums to Krausmann in around March 2024.  Krausmann further declares:

Mr William Ma and his company Sunshine Australia Wines Pty Ltd are not related to me or the Applicant and I no longer have a relationship with him.

28.     According to Krausmann, she briefed the creative agency Asian-Pacific Elites Culture Media Pty Ltd to create ‘an elegant woman in an oval shape as that is often used in historical portraits particularly those of the 18^th century when grape vines were first introduced in Australia’.

29.     The remainder of Krausmann comments on the sales channels for goods bearing the Trade Mark and on the contents of Xu 1.  It is not necessary to summarise the remainder of the EIA, other than to note that Krausmann denies that Mr William Ma, SAW, Chixia and Xiatao are related to her or the Applicant and that she never intended to ‘leverage or utilise any part of the Opponent’s intellectual property’.

Opponent’s EIR

30.     Xu 2 exhibits an ASIC Personal Name Extract for Wei Krausmann which notes that she was formerly named Wei Wang and records Krausmann as a director of the Applicant, SAW and Wang’s Holding Aust Pty Ltd (‘Wang’s) which company is the sole shareholder of Three Possums.  An ASIC extract for Wang’s is exhibited.

31.     According to Xu 2, TWE had historical dealings with William Simpson in relation to TWE’s intellectual property.  Xu 2 attests that TWE was asked by Mr Simpson to comment on proposed brand guidelines for PENDE VALDE (‘Guidelines’) and that the Emails (referred to at [25]) contain TWE’s verbatim feedback to Mr Simpson on the Guidelines.  A copy of the Guidelines and email correspondence between TWE and Mr Simpson are provided in Confidential Exhibits LX-3 and LX-4 to Xu 2.  Xu 2 declares that if TWE had been aware that Mr Simpson was submitting the Guidelines on behalf of the Applicant, it would never have engaged with the Applicant or the request given the ‘history of bad faith dealing by the Applicant and its related parties and associates in respect of TWE’s intellectual property’.  Further, Xu 2 notes that no agreement was ever reached between Mr Simpson and TWE regarding the Guidelines.

32.     Finally, Xu 2 notes that the statement in Krausmann about Three Possums filing application 2086376 for PENDE VALDE with Mr Simpson’s consent and that application proceeding to registration without opposition is false.  Xu 2 declares that the PENDE VALDE application was filed in the name of D.J Khouzam & W.P Simpson and was opposed by the Opponent.  The opposition was settled with Mr Simpson, who assigned it to Three Possums once the application was registered.

Discussion

Section 62A

33.     Section 62A provides:

62A  Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

34. Bad faith is not defined in the Act but there have been two Federal Court decisions that substantively considered s 62A: Fry Consulting v Sports Warehouse Inc (No 2)[13] and DC Comics v Cheqout Pty Ltd[14] (‘DC Comics’). The following propositions relevant to the present opposition emerge from these two decisions:

[13] [2012] FCA 81 (‘Dodds-Streeton J) (‘Fry Consulting’).

[14] [2013] FCA 478 (Bennett J) (‘DC Comics’).

(a)Bad faith for the purposes of s 62A must be [as at the priority date] and must relate to the making of the subject of the application;[15]

[15] Fry Consulting (n 14), [145].

(b)Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion. However, evidence to that effect may be persuasive in considering whether the application to register a mark was in bad faith;[16]

[16] DC Comics (n 15), [76].

(c)       The onus of proving bad faith rests upon the opponent;[17]

(d)All of the circumstances surrounding the application to register the mark are relevant;[18]

(e)The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading:[19]

(f)While the seriousness of an allegation of bad faith that ‘impugns the character of an individual or collective character of a business’ requires correspondingly cogent evidence, the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt;[20]

(g)Conduct which falls ‘short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area’ is sufficient. Dishonesty is not required. Bad faith requires both subjective and objective elements; it is a combined test;[21]

(h)It is difficult to see how a person who applies to register, in his own name, a mark he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. Combining the mark with the applicant’s own name is no answer to that criticism;[22]

(i)An act of bad faith cannot be cured by an action after the date of application;[23] and

(j)Conduct after the priority date can be used to shed light on the Applicant’s intent at the filing date.[24]

[17] Fry Consulting (n 14), [145].

[18] DC Comics (n 15), [62].

[19] Ibid.

[20] Fry Consulting (n 14), [145].

[21] Ibid [147], [148] and [165].

[22] DC Comics (n 15), [62].

[23] Ibid, [62]; See also Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3) [2017] FCA 60, [196].

[24] DC Comics (n 15), [71].

35.     The Opponent notes that in DC Comics, Bennett J found that Cheqout’s application for SUPERMAN WORKOUT had been filed in bad faith and held it could be inferred from Cheqout’s decision to display DC Comics’ Superman shield in conjunction with the opposed mark, that:

(a) Cheqout intended to use the opposed mark in combination with the shield in order to strengthen the allusion to DC Comics’ Superman hero; and

(b) this use was designed to appropriate DC Comics’ reputation in the shield image for the purpose of furthering an association in the mind of the viewer between the opposed trade mark and DC Comics’ unregistered Superman word trade mark.

36.     It was also relevant to the finding of bad faith that the red, white and blue colours traditionally used by DC Comics in conjunction with its Superman character had been used by Cheqout together with the opposed mark.

37.     The Opponent submits that the present situation is similar to that in DC Comics, with the Applicant using various aspects of the PENFOLDS brand and indicia in combination with the Trade Mark to suggest an association with the Opponent.  These branding elements include PENFOLD, PENFOLDS, the name and images of Mary Penfold and red italicised font.  The Opponent claims that the Applicant has engaged in this conduct despite receiving the Demand Letter in 2021.  Moreover, the Opponent claims that Wei Wang changed her name to Wei Krausmann to avoid ‘scrutiny and detection by TWE of the Applicant’s intellectual property infringements’.  Furthermore, the Opponent submits that the Applicant has made a number of false, misleading or deceptive statements in her evidence and this conduct ought to weigh heavily in favour of a finding that the Application was filed in bad faith. 

38.     The Applicant contends that the Opponent’s submissions ‘go well beyond the evidence and legitimate inference’ and by way of example, notes that there is no factual basis to assume that Wei Krausmann changed her name to avoid the attention of TWE.  Further, there is no evidence that the Applicant is associated with Chixia and Xiatao so the Opponent’s evidence regarding the Chinese proceedings against those companies is irrelevant as is the evidence regarding Mr Ma’s activities and entities other than the Applicant.  It is the Applicant’s submission that:

a.   in filing the Application, Krausmann’s intention was simply to honour the history of viticulture and its leaders in Australia;

b.   she has never attempted to pretend that her companies or products are related to any other person with each product and website mark as originating from the Applicant;

c.   Mr Simpson authorised the Applicant’s activities in selling PENDE VALDE wines and the Applicant believed that Mr Simpson was entitled to licence his own name and intellectual property associated with his existing line of wines;

d.   the Applicant has acted transparently and honestly.  Ms Krausmann was mindful of TWE’s intellectual property and communicated with Mr Simpson about ‘the rights he was entitled to bestow on the Applicant’ in particular, the Applicant believed that the Opponent had in principle agreed to the Applicant referring generally to Mary Penfold given her significance to Australian viticulture;

e.   she believed that providing information on the Penfold’s family tree was akin to a public service rather than an encroachment on the Opponent’s rights;

f.    the Trade Mark was devised by a third party creative agency and is not the same or similar to the Opponent’s Mark and was adopted with knowledge that Mr Simpson had used images of a woman in relation to his PENDE VALDE wine previously

g.   on the one occasion that the Applicant’s wines were featured in a photo with the Opponent’s wine, the Opponent’s wine was a genuine product of the Opponent;

h.   the Applicant has an existing business with brands that are distinct from those of the Opponent and the use of the brands PENDE VALDE, COOK1788 and CAPTAIN COOK WINES negates any change of confusion or deception with the Opponent’s wines; and

i.    there is no evidence that the filing of the Application is part of an ongoing strategy to exploit a connection between the Applicant and the Opponent or the Opponent’s Marks.

39.     I do not find Ms Krausmann to be a credible witness.  She is not forthcoming in her evidence and a number of statements are misleading or not substantiated.  It is apparent that Ms Wei Wang and Ms Krausmann are the same person.  Whilst the failure to mention this change of name may not necessarily indicate that the Applicant was seeking to escape the Opponent’s attention, it is suspicious in the face of her denial that she has no connection with Mr Ma or SAW. 

40.     Wei Krausmann is the sole director of Three Possums and the sole shareholder of that company through her 100% ownership of Wang’s Holding Aust Pty Ltd.  She is also the sole director and shareholder of the Applicant.  By virtue of her corporate positions, Ms Krausmann is responsible for the manner of use of PENDE VALDE, CAPTAIN COOK WINES and COOK1788. 

41.     Mr Ma and Ms Krausmann were both directors of SAW until the company was deregistered in February 2022.  Mr Ma was a director of Three Possums from 14 March 2020 until 26 January 2024.  The Applicant argued that Ms Krausmann’s statement that she is not associated with Mr Ma or SAW was a statement that was true at the time it was made.  I do not accept this argument and consider the statement to be misleading at best.  It is apparent from the Opponent’s evidence that Ms Krausmann worked with Mr Ma both at SAW and Three Possums for a number of years and both were engaged in promoting the wines of these companies.     

42.     Ms Krausmann was aware of TWE’s objections to her use of PENFOLD and PENFOLD FAMILY WINE since 2021 when the Demand Letter was sent to SAW.  The examples of the  use complained of in the Demand Letter included:

43.     It is apparent from the Opponent’s evidence that the Applicant uses the Trade Mark on its wine PENDE VALDE THE MARY No.1 which is promoted on the Pende Valde Website and CCW Website. These websites feature numerous references to the Penfold family and Mary Penfold including the following:

44.     Other examples of promotion of the Applicant’s PENDE VALDE THE MARY NO. 1 wine include (as highlighted by the Opponent):

45.     Moreover, the PENDE VALDE mark is most often used in red italicised script resembling that used by PENFOLDS as shown below:

46.     More generally, the Applicant promotes its wines in the following manner (as highlighted by the Opponent):

47.     Ms Krausmann gives evidence that she communicated with the Opponent about reference to Mr Simpson and his bloodline and understood ‘that the Applicant and its related entities could refer to Mr Simpson and his bloodline including Mary Penfold given her historical significance in Australia’.  Ms Krausmann did not communicate with the Opponent, rather it was Mr Simpson who provided the Guidelines to TWE and it was made clear to the Applicant what uses were allowable and which were not permitted.  It is not possible to interpret this correspondence between TWE and Mr Simpson as allowing the conduct of which the Opponent complains.  In my view, it is readily apparent from the Emails that TWE did not consent to the Applicant’s use of images or photos of Mary Penfold, the repeated references to the Penfold family and MARY PENFOLD nor PENFOLD FAMILY WINE CLUB nor use of PENDE VALDE in a bright red colour.

48.     I am satisfied that Ms Krausmann, and hence the Applicant, was well aware of the Opponent and its famous PENFOLDS brand prior to filing the Application and knew of the Opponent/TWE’s objections to its use of the term PENFOLD from the Demand Letter in 2021.  Despite this awareness, the Applicant formed a connection with Mr Simpson and leveraged that relationship as a basis for promoting its wines in association with PENFOLD and other indicia that are the same or similar to those associated with the Opponent’s PENFOLDS brand.  Evan after being informed that the various uses of PENFOLD, PENFOLD FAMILY WINE CLUB, the Opponent’s Mark and other indicia were not permitted, the Applicant has nevertheless filed the Application and persisted in its use of the objectionable marks and indicia. 

49.     The Applicant seems to rely on the Agreement and its relationship with Mr Simpson to justify its use of PENFOLD and other indicia such as the images of Mary Penfold.  The Agreement entitles the Applicant to use Mr Simpson’s Signature but does not otherwise provide authority for the Applicant to use his name or the name PENFOLD.  In any event, Mr Simpson does not have the authority to authorise use of his middle name nor an image of Mary Penfold in the manner in which these indicia have been used, for wine or related goods/services in the face of the Opponent’s trade mark registrations and reputation.  Moreover, it appears that Mr Simpson is no longer involved with the production of PENDE VALDE wines, having ceased producing and selling PENDE VALDE wines in 2020.[25]  The use of Mr Simpson’s name and reference to him being a ‘7^th GENERATION PENFOLD FAMILY MEMBER’ for wine with which Mr Simpson is no longer connected and which is produced at the Applicant’s vineyard may itself be misleading.

[25] Krausmann, [14].

50.     The Applicant has promoted its PENDE VALDE and other wines using the Opponent’s Mark (and similar variations of that mark), PENFOLD FAMILY WINE CLUB, PENFOLD and the Opponent’s own PENFOLDS wine.  The only reasonable explanation for such behaviour is to suggest an association with the Opponent.  

51.     The Opponent’s Mark is not the only available image of Mary Penfold[26] yet this is the image that the Applicant frequently uses in promoting its wines.  The Applicant claims that the Trade Mark was designed by a third party who was briefed to create an elegant woman in an oval portrait.  I note that the invoice for the design of the Trade Mark includes the description ‘Mary Logo design-Premium style’[27] suggesting that the agency was instructed that the image should be that of Mary Penfold or at least suggestive of her.  I also note that Krausmann’s brief to the creative agency specifies that the mark is to be oval shaped in a portrait style which is the same style as the Opponent’s Mark.  Whilst the Applicant claims that Mr Simpson had used images of Mary Penfold in the past, there is no evidence that this was the case.  The Applicant does not ‘celebrate’ any other viticulture leaders and focuses solely on Mary Penfold and the Penfold family.

[26] See for example Krausmann, Annexure WK-5.

[27] Krausmann, Annexure WK-9.

52.     With regards to the use of PENFOLD and PENFOLDS FAMILY WINE CLUB and Chixia and Xiatao, I do not consider it necessary to decide whether the Applicant has a relationship with these entities and whether these uses are part of the pattern of bad faith conduct by the Applicant. 

53.     I am satisfied on the subjective and objective tests for bad faith that the Application was filed in bad faith.  The Applicant knew of the Opponent’s objections to its use of PENFOLD and PENFOLD FAMILY WINE at the time of filing the Application.  Objectively, the Applicant has used the Trade Mark in a manner to suggest an association with the Opponent by using the Trade Mark on wine with the PENDE VALDE brand which is produced in a similar colour and script to PENFOLDS and promotes its wine bearing the Trade Mark on the Pende Valde Website and CCW Website with the Opponent’s Mark and other references to PENFOLD and the Penfold family.  The PENDE VALDE range of wines is generally marketed in association with the Penfold name, similar images to the Opponent’s Mark and PENFOLD.  Taking into consideration all the surrounding circumstances, I am satisfied that the Applicant’s conduct in filing the Application falls short of acceptable standards of commercial behaviour in the wine industry and hence the s 62A ground of opposition is established.  

Decision

54.     Section 55 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.

55.     The Opponent has established a ground of opposition under s 62A and accordingly, I refuse to register trade mark number 2348596.   This refusal will be recorded one month from the date of this decision unless the Registrar of Trade Mark is served with a notice of appeal.  If an appeal is filed, the disposition of the application shall be in accordance with the Court’s order or direction.

56. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under s 221 in line with Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

28 July 2025