Opposition by Southern Vintners & Negociants Pty Ltd to registration of trade mark application number 1905068 (35) – NEGOCIANTS - in the name of Samuel Smith & Son Pty Ltd

[2021] ATMO 149

TRADE MARKS ACT 1995

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

Re:Opposition by Southern Vintners & Negociants Pty Ltd to registration of trade mark application number 1905068 (35) – NEGOCIANTS - in the name of Samuel Smith & Son Pty Ltd

Delegate:	Louise Tuohy
Representation:	Opponent:   Not represented Applicant: Louise Emmett of Madderns Patent and Trade Mark Attorneys
Decision:	2021 ATMO 149 Trade Marks Act 1995 (Cth) – opposition under section 52 – section 41 considered - ground not established – trade mark to proceed to registration

Background

1. This is an opposition by Southern Vintners & Negociants Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark application in the name of Samuel Smith & Son Pty Ltd (‘Applicant’):

   Application Number:            1905068

   Trade Mark:  NEGOCIANTS (‘Trade Mark’)

   Filing Date:  6 February 2018

   Specification:  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. (‘Services’)

   Endorsement:   Evidence and/or other circumstances provided under subsection 41(4)

2. The Trade Mark application was examined as required under s 31 of the Act and accepted pursuant to s 41(4) of the Act after the provision of evidence of use by the Applicant. Acceptance of the Trade Mark for possible registration was advertised on 21 February 2020.

3. On 19 April 2020 the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark, followed by a Statement of Ground and Particulars (‘SGP’) on 19 April 2020. A Notice of Intention to Defend the Trade Mark from opposition was filed by the Applicant on 24 June 2020.

4. Thereafter the Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (‘Regulations’). No evidence or submissions were filed by the Opponent.

5. On 31 March 2021 the Applicant requested an oral hearing and the opposition was referred to me as a delegate of the Registrar of Trade Marks. I heard the matter on 17 November 2021 by way of video conference. The Opponent did not appear at the hearing. The Applicant was represented by Louise Emmett of Madderns Patent and Trade Mark Attorneys and its oral submissions were supported by written submissions filed prior to the hearing.

   Grounds, Onus and Relevant Date

6. In the SGP the Opponent nominated the ground of opposition under s 41 of the Act.

7. The date at which the rights of the parties are to be determined is 6 February 2018 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

8. The Opponent bears the onus of establishing at least one of the grounds of opposition.0F[1] The standard of proof is the ordinary civil standard of the balance of probabilities.1F[2]

   Evidence

   Evidence in Answer

   ·Declaration of Robert Smart, Commerical Manager – Risk & Compliance of the Yalumba group of companies for the Applicant, made on 9 December 2020 with Exhibits RS-A to RS-C (‘Smart declaration’). Exhibits RS-A and RS-B to the Smart declaration consists of two declarations made by Robert Smart on 4 April 2019 (with Exhibits RS1 to RS11) and 14 November 2019 (with Exhibits RS12 to RS27) filed in response to reports issued during the examination of the Trade Mark.

   Discussion

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

   Section 41

9. Section 41 of the Act provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)  This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   (iii)  any other circumstances.

   (5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

10. Section 41 must be assessed having regard to s 33 of the Act, which embodies a ‘presumption of registrability’. Section 33(1)(b) compels the Registrar to accept a trade mark for registration unless the Registrar is satisfied that grounds exist for rejecting the application.

11. To determine the merits of the ground for rejection under s 41, the extent of the Trade Mark’s inherent adaptation to distinguish the Applicant’s Services must be assessed. In Clark Equipment Co v Registrar of Trade Marks, Kitto J stated that this was to be assessed:

    [B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[3]

    [3] [1964] HCA 55, [5]; cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’) [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ).

12. The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited indicated that the test for distinctiveness under s 41 of the Act involves a two-step process. The first step requires consideration of the ‘ordinary signification’ of the words proposed as trade marks to any person in Australia concerned with the services to which the proposed trade mark is to be applied. The second step involves considering whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar services. ^[4]

    [4] Cantarella, [71], although this process was formulated in the context of goods, it is equally applicable to services.

13. In the SGP the Opponent particularised the ground of opposition under s 41 as follows:

    Negociant is a common word meaning Wine Merchant, Grape Buyers, Wine Marketers, deals etc. (Collins English Dictionary). The word is in use describing the activity of Wine Merchant prior to use by Samuel Smith & Sons Pty Ltd. It is a word that any Wine Merchant or dealer should be able to use to communicate what they do.

14. The Trade Mark consists of the plain word NEGOCIANTS. The SGP emphasises that the Collins English Dictionary defines the word NEGOCIANTS as Wine Merchant, Grape Buyers, Wine Marketers, deals etc. This definition was not disputed by the Applicant.

15. In my view, NEGOCIANTS is a French word and has an ordinary meaning in English which would be clear and immediate to persons concerned with the Services. The ordinary signification of the Trade Mark is that of a trader who deals in wine. Having determined the ordinary signification of the Trade Mark, the enquiry turns to whether other traders might legitimately desire to use the word NEGOCIANTS, for its ordinary signification, in respect of the Services.

16. The Trade Mark has an ordinary meaning in English that directly describes the kind and purpose of the Services. Therefore the Trade Mark is a word which other traders in the same class of Services might legitimately, without any improper motive, desire to use in relation to their own Services. Consequently, I find that the Trade Mark is not to any extent, inherently adapted to distinguish the Services and as such falls within the category set out under s 41(3) of the Act.

17. I now must determine whether the Trade Mark had in fact become capable of distinguishing because of the extent of its use at the Relevant Date.

    Consideration of evidence

18. The Smart declaration submits that the Applicant 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 trade mark being NEGOCIANTS AUSTRALIA,  (‘logo trade mark’), NEGOCIANTS NEW ZEALAND and NEGOCIANTS INTERNATIONAL.  The Australian arm of the business is a fine wine merchant, distributing premium Australian wines as well as prestigious imported brands from around the world. NEGOCIANTS INTERNATIONAL is an exporter of Australian and New Zealand wine, exporting wine to all major and emerging markets including: the United Kingdom, Canada, the United States of America, South America, Africa, Asia, Europe, the Middle East and the Pacific.

19. The Smart declaration submits that the Applicant has offices in South Australia, New South Wales, Victoria, Western Australia, and Queensland. The Applicant distributes its wine through various sales channels including on premises sales (i.e. restaurants), other wholesalers, and large liquor chains such as Woolworths and Coles and their retail outlets.

20. Confidential Exhibit RS5 contains sales and advertising figures for the financial years 2013 to 2018.

21. Examples of use in the Smart declaration includes use of the Trade Mark on the Applicant’s website at and Facebook account under the handle @negociantsaustralia. Exhibit RS6 provides a copy of the Applicant’s Pricing Portfolio bearing the Trade Mark and logo trade mark which includes the list of wines available for sale in Australia, in addition to other products such as Primo Olive Oil, Anitpodes water, Riedel glassware, and Coravin wine storage accessories. Exhibit RS9 provides photographs showing examples of imported wine bottles featuring the Trade Mark and logo trade mark on the back label to indicate the wine was imported by the Applicant. Exhibit RS10 provides photographs showing cartons featuring the Trade Mark and logo trade mark utilised for postage and transport of wine Australia wide.

22. Further, the Applicant’s promotion of the Trade Mark includes its participation at National Wine Shows and State Royal Shows. Exhibit RS7 provides examples of advertising material used at these events including a signage banner used at National Wine Shows, and printed advertisements used for the Sydney Royal Wine Show, Lark Hill Wine Show (2017), National Wine Show of Australia and State Royal Shows (2016) all bearing the Trade Mark and logo trade mark.

23. The Smart declaration also discusses the Applicant’s ‘Negociants Working with Wine Fellowship’ set up to encourage the new generation of Australian Wine professionals. The fellowship was introduced in 1998 and is run every third year. The Fellowship is a recognised award within the Australia wine industry and community. Exhibit RS14 is a copy of an article entitled ‘Negociants 2016 Working with Wine Fellowship’ dated 25 November 2016 from the Drinks Association noting that the 12^th Negociants Australia Working with Wine program received 4,000 registrants with 120 final interviews and 24 fellowships rewarded.

24. The Trade Mark is also promoted in publications focused on the Australian wine industry including articles in: The Drinks Association; Winetitles Media; The Wine Collective; The Age Lifestyle Magazine; The Shout; and Drinks Trade. The articles dated from 2014 to 2017 discuss the Negociants Working with Wine Fellowship and new wine brands added to the Negociants distribution portfolio.[5]

    [5] Smart declaration, [Exhibits RS15, RS16, RS19, RS20, RS21, RS22 and RS25].

25. It is clear from these Exhibits that the Applicant uses the Trade Mark when advertising and promoting its Services not only through more traditional channels such as advertising at Wine shows and on packaging, but also through social media and sponsorship of the widely acclaimed Working with Wine award. In my assessment the sales and advertising figures provided are commercially significant and the sales figures indicate a strong customer base. While I note that the Trade Mark is either used solus, with geographical descriptors such as AUSTRALIA or INTERNATIONAL, or as a predominant part of the logo trade mark, the extent of use over the 30 year period satisfies me that the Trade Mark has become capable, in its own right, of distinguishing the Applicant’s Services from those of other traders in the market.

26. In reaching my finding, I note that I have not been assisted by evidence by the Opponent as to the extent of use of the term NEGOCIANTS by other traders within the Australian Wine Industry. Such evidence may have been probative and ultimately influenced the outcome of the opposition.

27. The Opponent has not established its ground of opposition under s 41 of the Act.

    Decision

28. Section 55 of the Act 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.

29. The Opponent has not established the ground of opposition nominated in the SGP. Accordingly, I decide that trade mark number 1905068 may proceed to registration one month from the date of this decision, subject to an endorsement that the provisions of s 41(3) of the Act were applied. If the Registrar is served with a Notice of Appeal before that time, I direct that the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

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

    Louise Tuohy
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    7 December 2021