Opposition by Vina Concha y Toro S.A to registration of trade mark application number 1881847 (class 33) - OCHO TORO - in the name of Gregory Hall

[2021] ATMO 13

TRADE MARKS ACT 1995

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

Re:Opposition by Vina Concha y Toro S.A to registration of trade mark application number 1881847 (class 33) - OCHO TORO - in the name of Gregory Hall

Delegate:

Timothy Brown

Representation:

Opponent: Daniel Wilson, Spruson & Ferguson

Applicant: Andrew Butler, DC Collins Pty Ltd

Decision:

2021 ATMO 13

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 – no grounds established – trade mark to proceed to registration.

Background

1. This is an opposition under section 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to the registration of the following trade mark:

   Trade Mark Number: 1881847

   Trade Mark: OCHO TORO  (‘the Trade Mark’)

   Applicant: Gregory Hall (‘the Applicant’)

   Priority Date: 22 October 2017

   Translation: ‘The applicant has advised that the English translation of the Spanish words OCHO TORO appearing in the trade mark is EIGHT BULL’.

   Specifications:

   Class 33: Sangria; Alcoholic beverages containing wine; Wine; Spirit based cocktails (spirits predominating); Spirits (beverages); Sparkling cider (alcoholic); Liqueurs; Alcoholic beverages containing fruit; Alcoholic punches; Fruit based alcoholic beverages

2. The Trade Mark was advertised for acceptance in the Australian Journal of Trade Marks on 15 March 2018.

3. A Notice of Intention to Oppose was filed by Vina Concha y Toro S.A (‘the Opponent’) on 15 May 2018. The Statement of Grounds and Particulars (‘the SGP’) was filed on 7 June 2018.

4. A Notice of Intention to Defend was filed by the Applicant on 23 July 2018.

5. Evidence in Support of the opposition was filed by the Opponent comprising of a declaration made on 31 October 2018 by Carla Errazuriz (‘the Errazuriz Declaration’) and Exhibits 1 to 9, including Confidential Exhibit 2.

6. Evidence in Answer was filed by the Applicant consisting of a Declaration made on 12 February 2019 by Gregory Hall (‘the Hall Declaration’).

7. Evidence in Reply was subsequently filed by the Opponent consisting of a second declaration made by Carla Errazuriz made on the 16 April 2019 (‘the Second Errazuriz Declaration’) and Annexures E to K.

8. Neither party requested a hearing, and written submissions were filed by both parties on the 12 December 2019. 

9. As a delegate of the Registrar I will now determine this matter with reference to the written material filed during these proceedings.

Evidence

The Opponent

1. The Errazuriz Declaration states that the Opponent is the owner of the following Trade Mark registrations (‘the Trade Mark Registrations’):

Trade Mark No.	Trade Mark	Priority Date	Goods
232885	CONCHA Y TORO	30 September 1969	Class 33: Wine and champagne
955323	CONCHA Y TORO, ENRICHING EVERY MOMENT	26 May 2003	Class 33: Wine and sparkling wines
1804262	21 October 2016	Class 33: Sparkling wines; Wine
1804263	21 October 2016
1804264	21 October 2016

1. The Errazuriz Declaration explains that the Opponent’s business was founded in 1883. The Opponent’s business is currently located in Santiago, Chile, and is the largest wine producer in South America.

2. The Errazuriz Declaration outlines the use of the Trade Mark Registrations as follows:

   ·     Use of CONCHA Y TORO as a trade mark began in 1957. It has since been used as the house trade mark on all of the Opponent’s wine products alongside other trade marks particular to the variety of wine.

   ·     First use of the Trade Mark Registrations in connection with wine began in Australia in 2009.

   ·     The Trade Mark Registrations are utilised as the house trade marks for wines produced by the Opponent and appear alongside a range of other trade marks particular to each variety of wine. For example, CASILLERO DEL DIABLO or FRONTERA.

   ·     The Trade Mark Registrations have been used directly on the goods, packaging for the goods, invoices, catalogues, brochures, stationery, and menus and on the Opponent’s website ‘<conchaytoro.com>’.

   ·     The wine is sold wholesale to an importer in Australia, which distributes the wine to various retailers, such as BWS and Dan Murphy.

   ·     Wines bearing the Trade Mark Registrations are advertised and promoted via the Opponent’s website < Facebook, and Twitter.

   ·     Wines sold under the Trade Mark Registrations have received a number of industry awards, examples of which are provided in Exhibit 9 of the Errazuriz Declaration.

   ·     The CONCHA Y TORO trade marks, and other trade marks containing this phrase are registered in a number of foreign jurisdictions, including Macau, Norway, South Korea, Taiwan, and the United States of America.

3. The Errazuriz Declaration is accompanied by the following Exhibits:

Exhibit	Contents
Exhibit 1	Examples of CONCHA Y TORO used in Australia as a trade mark on wine.
Exhibit 2 (Confidential)	Sales Information for products sold under the Trade Mark Registrations from 2009 to 2018.
Exhibit 3	Advertisements.
Exhibit 4	Extracts from <
Exhibit 5	Extracts from the Opponent’s Facebook page.
Exhibit 6	Extracts from Opponent’s Twitter page
Exhibit 7	Third party comments on wine provided under the Trade Mark Registrations.
Exhibit 8	Registrations of CONCHA Y TORO in foreign jurisdictions.
Exhibit 9	Examples of awards received by the Opponent.

1. The Second Errazuriz Declaration details the estimated market value generated through the relaunch of its wine brand in 2015 and a cross brand promotion with football club Manchester United in 2016.

2. Annexures G, H and I of the Second Errazuriz Declaration contain market reports outlining growth and performance the Opponent’s trade marks and wines.

3. Confidential Annexure K of the Second Errazuriz Declaration provides details of the amount of wine sold between 2014 and 2017 in Australia and the Opponent’s revenue.

The Applicant

1. The Hall Declaration explains that the Applicant has extensive experience in the Australian beverages market having previously worked with Carlton and United Breweries.  

2. The Hall Declaration further explains that the Applicant was unfamiliar with the Opponent and their Trade Mark Registrations. The Trade Mark was chosen because it invokes images of Spain and the image of a bull is a common Spanish archetype.

3. Identified in the Hall Declaration are a number of trade marks featuring the word TORO. For reference, these are trade mark registration numbers 249403, 355520, 956791, 1294399, 1296688, 1450461, 1480481, 1543661, 1563694, 1572097, 1856226 and 1880916.

Preliminary Matters

1. Before proceeding with the substantive opposition, I note that the Applicant has questioned both the probative value and the admissibility of the Opponent’s evidence because:

   ·     The presence of the watermark ‘Draft’ in the Errazuriz Declaration;

   ·     The Opponent’s reliance on the information Confidential Exhibit 2 of the Errazuriz Declaration may prejudice the Applicant’s position;

   ·     The absence of a dated signature in the Second Errazuriz Declaration.

2. The Errazuriz Declaration features the term ‘Draft’ watermarked of each page of the declaration. I do not consider the presence of this watermark sufficient to render the evidence inadmissible, or, in any material way, indicate that the contents of the declaration are unreliable. The Registrar is not bound by the rules of evidence,[1] and the declaration has been filed in accordance with the requirements of regulation 21.6 of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’). It would not be proper to dismiss or otherwise ignore relevant material where the documentation has been filed in accordance with the relevant legislative requirements. [2]

   [1] Trade Mark Regulations 1995 (Cth) reg 21.15(4).

   [2] See: Malibu Boats West Inc v Catanese (2000) 180 ALR 119; [2000] FCA 1141, [24].

3. Regarding Confidential Exhibit 2 of the Errazuriz Declaration, the Applicant’s concerns over the value of this information, if any, are relevant as the purported confidential information has not be included in the declaration. The omitted information does not detract from probative value of the remainder of the declaration, but it does have relevance to section 60 of the Act, the effect of which will be discussed in more detail when considering that ground of opposition. See paragraphs [51] to [52].

4. Regarding the Second Errazuriz Declaration, the deficiencies pertaining to the dating and signing of the Declaration were identified during the earlier stages of the opposition proceedings. Regulation 21.4(1)(b) of the Regulations affords the Registrar discretion to treat a document has having been filed and to direct the party to remedy any deficiencies in the filed document to ensure it complies with the requirements of the Act. These issues were communicated to both parties on the 21 June 2019 and the Opponent subsequently provided the necessary documentation on 01 July 2019 in the form of a declaration confirming the date and place of the Second Errazuriz Declaration. There were no further issues with the admissibility of the Second Errazuriz Declaration.

Grounds of Opposition

1. The nominated grounds of opposition are sections 44, 60 and 42(b) of the Act.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition. [3] The required standard of proof is on the balance of probabilities.[4]

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

   [4] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

3. The date at which the rights of the parties will be determined is the date of the application,[5] which in this matter is the priority date of the Trade Mark, 22 October 2017.

Discussion and Reasons

[5] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Section 44

1. Section 44(1) relevantly provides:

   (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.

1. To succeed in this ground of opposition the Opponent must demonstrate that a trade mark registration:

   ·     Has an earlier priority date than the Trade Mark;

   ·     Is registered in respect of similar goods to those of the Trade Mark; and

   ·     Is substantially identical with or deceptively similar to the Trade Mark.

2. In the SGP the Opponent has identified the Trade Mark Registrations as the basis for this ground of opposition.

3. From the information set out in paragraph [10] it is apparent that each of the Trade Mark Registrations have an earlier priority date and are held in the name of a person other than the Applicant.

4. Both parties acknowledge that the goods of the Trade Mark Registrations and the Applicant’s Trade Mark are the same or of the same description.[6] I also am satisfied that the goods are similar, noting that the Trade Mark Registrations and the Trade Mark specify wine in Class 33, and the various other beverages specified in the Applicant’s Trade Mark, such as sangria, cocktails, liqueurs, and punches, may all be characterised as alcoholic beverages.

   [6] Applicant’s Submissions [16]; Opponent’s Submissions [21].

5. The final issue to resolve is whether the any of the Trade Mark Registrations are substantially identical or deceptively similar to the Trade Mark.

Substantially Identical

1. The Opponent was silent on the issue of substantial identity, focusing instead on the issue of whether the Trade Mark is deceptively similar to the Trade Mark Registrations. As such, I will briefly note that the test for substantial identity requires that the trade marks be considered side by side while having regard to the essential features of the trade marks.[7] Where a total impression of resemblance emerges from the comparison the trade marks will be considered substantially identical. Noting the differences in the words CONCHA and OCHO and, in the case of Trade Mark Registrations 1804262, 1804263 and 1804264, the images of a bull and shell, I am satisfied that on a side by side comparison the trade marks do not have a total overall impression of resemblance.

   [7] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, [12]; See also: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [206]; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [51].

Deceptive Similarity

1. The expression ‘deceptively similar’ is defined in section 10 of the Act as:

   For the purposes of this Act, 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.

2. Deceptive similarity is not a side by side comparison, but a question of impression based off an imperfect recollection of a trade mark.[8]It requires there to be real tangible danger of deception or confusion occurring,[9] though it will be sufficient if there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same source.[10]

   [8] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, 415.

   [9] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595; Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) FCR 365, [50].

   [10] Ibid.

3. When undertaking the comparison regard should be afforded to the look and sound of the trade marks,[11]the ideas conveyed by the trade mark,[12] the goods or services that the trade marks are to be applied to,[13] as well as all surrounding circumstances.[14]When considering these factors, it is also important to have regard to the trade marks in their entirety.[15]

   [11] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; 58 CLR 641, 658; Re Pianotist Co Ltd (1906) 1A IPR 379; 23 RPC 774, 777.

   [12] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 539; Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 318, 331.

   [13] Re Pianotist Co Ltd (1906) 1A IPR 379; 23 RPC 774, 777.

   [14] Re Pianotist Co Ltd (1906) 1A IPR 379; 23 RPC 774, 777.

   [15] Clark v Sharp (1898) 15 RPC 141, 146; Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901; 132 FCR 326, [78]; Mars GB Ltd v Cadbury Ltd [1887] RPC 387, 395.

4. The Opponent submits that in light of general lack of Spanish comprehension amongst Australian consumers, the visual and aural similarities derived from the presence of the word TORO, the ‘O’, ‘CH’ sounds and the general assonance of the respective OCHO and CONCHA elements would lead to confusion between the trade marks.

5. The Applicant contends that there are clear phonetic differences between the respective trade marks, and that the differences in both the beginning on the trade marks and the number of syllables provide a basis for distinguishing the trade marks.

6. In an Australian marketplace it may be optimistic to expect any form of consistency in the pronunciation of the Spanish terms present in the trade marks. Nevertheless, in my view, the phonetic differences in first word of each trade mark are significant. The words CONCHA and OCHO commence and end in different syllables. It is unlikely that consumers would ignore the ‘Con’ and ‘Och’ or ‘O-’ sounds at the start of the trade marks. The trade marks may share the ‘ch’ and the stressed ‘O’ sounds, but these similarities are offset by the more overt differences between the other sounds in the words OCHO and CONCHA. Bearing in mind that this comparison is one of deceptive similarity and does not suppose the words would be repeated directly one after the other, I believe that consumers would aurally recognise that the first words of the trade marks are different.

7. The Applicant has also emphasised the effect of the visual differences in OCHO and CONCHA on the trade marks as a whole.[16] I accept the elements OCHO and CONCHA are visually different. The letters that produced the different sounds discussed in the aural comparison are no less relevant to the visual impression of the words. Balanced against the visual and aural differences in the words OCHO and CONCHA is the element TORO, which is a common feature of each trade mark. Greater emphasis is often attributed to the beginning of a trade mark.[17] While the first words in a trade mark may not always be impactful on the impressions conveyed by a trade mark, in this instance it results in two phrases, OCHO TORO and CONCHA Y TORO, that overall are visually and aurally distinct.  

   [16] Applicant’s Submissions [21].

   [17] London Lubricants (1920) Ltd’s Appn(1925) 42 RPC 264; C A Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561, [35]; Re Harrods Ltd (1934) 52 RPC 65.

8. In respect to the idea or concept conveyed by the trade marks, the Applicant notes that the respective translations show that the meanings of the trade marks are different.[18]While this may be the case for those familiar with the Spanish language, to consumers unfamiliar with the Spanish language the meaning of the trade marks is not likely to be understood. However, I do accept that the presence of the word ‘TORO’ in the trade marks does not assist to convey any common or significantly similar idea or concept to the ordinary Australian consumer.

   [18] Applicant’s Submissions [14].

9. The Applicant has also referenced a number of trade mark registrations in Classes 32 and 33 that incorporate the world TORO.[19] Ostensibly, these trade marks are evidence of other trade marks featuring the word TORO. They are not indicative of any degree of commonness in the word TORO, nor have the circumstances behind the registration of these trade marks be made apparent to me. In my view, their existence has little bearing on whether the Trade Mark is deceptively similar to the Trade Mark Registrations.

   [19] Ibid [28]; Hall Declaration [15]-[18].

10. In regard to the other Trade Mark Registrations, in addition to the factors discussed above, the other elements present in the Trade Mark Registrations, being the phrase ENRICHING EVERY MOMENT in Trade Mark Registration 955323, and the phrase GRAN RESERVA and a device depicting a bull positioned in front of a sea shell in Trade Mark Registrations1804262, 1804263 and 1804264, only serve to further distinguish the trade marks.

11. None of the above factors alone are determinative, but considered collectively, I am satisfied that the differences between the Trade Mark and the Trade Mark Registrations are significant enough that even when allowing for imperfect recollection there would be no real or tangible danger of confusion.

12. The ground of opposition under section 44 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish the ground of opposition under section 60 of the Act, the Opponent must demonstrate:

   ·That another trade mark had a reputation in Australia prior to the priority date of the Trade Mark, 22 October 2017; and

   ·Because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.

Reputation of the Trade Mark Registrations

1. In order to establish that an earlier trade mark had ‘acquired a reputation in Australia’, the Opponent must demonstrate that a reputation existed in another trade mark in Australia amongst a significant or substantial number of people as of the priority date of Trade Mark.[20]

   [20] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 176; 33 FCR 302, [131]-[132].

2. The Opponent submits that the Trade Mark Registrations have acquired significant reputation in Australia in relation to wine, such that the use of the Trade Mark would be likely to deceive or cause confusion. In support of this contention, the Opponent relies on evidence demonstrating that the Trade Marks Registrations had been used in Australia since 2009.

3. Reputation has been held to refer to the ‘recognition’ of the [trade mark] by the public generally’[21]. The reputation in the other trade mark must be acquired amongst a significant or substantial number of Australians consumers.[22]As noted in ConAgra Inc v McCain Foods Aust) Pty Ltd (1992) 33 FCR 302 at [132], for there to be ‘a sufficient reputation in the forum requires something more than a reputation among a small number of persons, although the size and extent of the class may vary according to the circumstances of the case’.

   [21] McCormick & Co Inc v McCormick [2000] FCA 1335, [81].

   [22] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170.

4. The Applicant raised several issues with the Opponent’s evidence that were discussed earlier in my decision at paragraphs [20] to [23]. Particularly relevant to this ground of opposition is the absence of information in Confidential Exhibit 2 of the Errazuriz Declaration pertaining to the sales of the Opponent’s wines in Australia. The Applicant’s reservations regarding the probative value of this evidence are relevant only in so far as information regarding sales of the relevant goods is typically a common manner of establishing reputation.[23]However, the absence of this information is not necessarily fatal to the Opponent’s argument. Ultimately, section 60 requires the Opponent to establish the good will and public recognition of the trade mark. This is not contingent upon demonstrating sales of goods or services bearing the trade mark, and may be established by a variety of different means.[24] Nevertheless, I accept that volume of sales and advertising expenditure may often correspond to public awareness and appreciation of a good or service.[25]

   [23] McCormick & Co Inc v McCormick [2000] FCA 1335, [86]; Hugo Boss AG v Jackson International Trading Company Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423; [1999] ATMO 23, 436.

   [24] ConAgra Inc v McCain Foods Aust) Pty Ltd (1992) 33 FCR 302, 343.

   [25] Ibid.

5. The Opponent has supplemented this missing information with Confidential Annexure K of the Second Errazuriz Declaration, which details the sales of a substantial amount of wine in Australia. The sales relate specifically to the Opponent’s FRONTERA and CASSILERO DEL DIABLO wines. However, it is apparent from the evidence that the Trade Mark Registrations are also consistently featured alongside the FRONTERA and CASSILERO DEL DIABLO trade marks. On this basis, I am satisfied that these sales also demonstrate exposure of the Trade Mark Registrations to Australian consumers.

6. The Applicant submits that the presence of these other trade marks on the relevant goods subsumes the Trade Mark Registrations. There is some merit to this submission. The evidence provided by the Opponent demonstrates the Trade Mark Registrations used alongside a number of other trade marks, notably FRONTERA and CASSILERO DEL DIABLO. The use and reputation of the FRONTERA and CASSILERO DEL DIABLO trade marks is also consistently demonstrated throughout Opponent’s evidence. The Global Wine Brand Power Index of 2019 provided by the Opponent states that CASSILERO DEL DIABLO is one of the world’s leading wine brands. It does not necessarily follow that the Trade Mark Registrations enjoy the same brand recognition. It is also apparent from the evidence of third-party marketing and promotion of the Opponent’s goods that there is a tendency to refer to the CASILLERO DEL DIABLO or FRONTERA trade marks when referencing the Opponent’s goods.[26]

   [26] See: Second Errazuriz Declaration Annexures I, H.

7. Despite the deficiencies in the Opponent’s evidence, on balance I am satisfied that the Opponent’s Trade Marks enjoyed reputation amongst wine consumers prior to the priority date of the Trade Mark. It is evident from the Opponent’s evidence that they are one of the largest producers of wine in the world, and I can infer from the financial information provided in Annexure I and K of the Second Errazuriz Declaration that the Opponent has sold a substantial amount of wine bearing the Trade Marks Registrations in Australia. With the additional industry reports, industry awards and examples of both first and third party advertisements and cross promotions, I am satisfied that as of the priority date of the Trade Mark, the Opponent’s Trade Marks were well known and respected in the wine industry in Australia.

Likelihood of Deception or Confusion

1. The existence of a reputation does not necessarily mean use of the Trade Mark would be likely to deceive or cause confusion. The strength of the reputation is a factor that informs the assessment of likelihood of deception or confusion under section 60. Other factors, such as the similarity of the trade marks,[27] or the connection between the relevant goods and/or services, are also relevant.[28] The section 60 ground of opposition will only be established if the reputation of the Opponent’s trade marks is such that the use of the Trade Mark would likely result in a real tangible danger of deception or confusion.

   [27] See: Qantas Airways Limited v Edwards [2016] FCA 729, [142].

   [28] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40].

2. As with deceptive similarity, a trade mark will be likely to cause deception or confusion if its use would result in people being caused to wonder whether its goods or services derive from the same trade source as another trade mark.[29]

   [29] Register of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50].

3. The Applicant has noted several differences between the Opponent’s wines and the goods sold under the Applicant’s trade mark, namely the differences in price point and the differences between sangria and the wines.[30] I accept that there are some differences between wine and sangria with the latter beverage composed of wine and many other ingredients. However, I am not convinced that this particularly assists the Applicant’s argument. Section 60 is considered in the context of notional and fair use of the trade marks. Furthermore, the question of deception or confusion must be answered with reference to the use to which the Trade Mark can be reasonably put.[31]  The designated goods of the Trade Mark include, amongst other things, wine and descriptions of goods that would notionally include wine. If the Trade Mark were to be registered the Applicant would be entitled to use their Trade Mark in relation to wine. That there might be differences with some of the goods that fall within the scope of the Trade Mark’s specification does not materially affect the question whether use of the Trade Mark would result in deception or confusion.

   [30] Applicant’s Submissions [57].

   [31] See: Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362.

4. The differences between the trade marks were canvassed at length in my discussion of the section 44 ground of opposition. I refer to my discussion and conclusion on deceptive similarity in paragraphs [35] to [45]. Section 60 does not require the trade marks to be deceptively similar, but the differences between the trade marks raised in that discussion remain relevant to my assessment under section 60. The presence of the elements OCHO and CONCHA Y create a reasonable degree of visual and aural distinction. Combined with the lack of any common concept or idea between the trade marks, there are enough differences to render the likelihood of consumer confusion unlikely. Even accounting for the reputation of the Opponent’s Trade Mark Registrations and the relevant class of consumer, I am not convinced that there would be a likelihood of deception and confusion between the trade marks.

5. Although I accept that the evidence establishes a reputation for the Trade Mark Registrations in Australia as of the 22 October 2017, I am not satisfied that because of that reputation, there would be a real or tangible danger that use of the Trade Mark is likely to deceive or cause confusion amongst a significant number of Australian consumers.

6. The Opponent has failed to establish the section 60 ground of opposition.

Section 42(b)

1. Section 42(b) of the Act provides:

An application for the registration of a trade mark must be rejected if:

…

(b) its use would be contrary to law.

1. The Opponent has identified sections 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 to the Competition and Consumer Act 2010 (Cth), the tort of passing off, and trade mark infringement under section 120 of the Act as the basis for this ground of opposition.

2. The Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene the ACL, constitute the tort of passing off or amount to trade mark infringement.[32]

   [32] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28]; Primal Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411].

Australian Consumer Law

1. Section 18(1) of the ACL provides:

   A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

2. Section 29 of the ACL relevantly provides:

   (1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services: …

   (g) make a false or misleading representation that goods or services have sponsorship approval, performance characteristics, accessories, uses or benefits;

   (h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;

3. Unlike section 60 of the Act, sections 18 and 29 of the ACL require there to be a likelihood that the relevant consumer would be misled of deceived as to the origin of the Applicant’s goods due to the conduct of the Applicant. The requirement that consumers be misled or deceived is a higher threshold than confusion under section 60 of the Act.[33]

   [33] Monster Energy Company v Mixi Inc [2020] FCA 1398, [33].

4. As previously stated, the opponent failed to establish the ground of opposition under section 60 of the Act. Consequently, I am also satisfied for the same reasons that use of the Trade Mark would not be likely to mislead or deceive the ordinary or reasonable consumer of the relevant goods in believing that there is an association between the Trade Mark or any of the Trade Mark Registrations.

5. The Opponent has failed to establish that the Applicant’s use of the Trade Mark would contravene sections 18 and 29 of the ACL.

Passing Off

1. Where a trade mark does not contravene sections 18 or 29 of the ACL, it is unlikely to amount to passing off.[34]In ReEquity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 Hill J discussed the tort of passing off and operation of 52 and 53 of the Trade Practices Act 1974 (Cth), the predecessors to sections 18 and 29 of the ACL:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[35]

   [34] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58].

   [35] ReEquity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40].

2. Given my findings in relation to sections 18 and 29 of the ACL, it follows that use of the Trade Mark would not constitute passing off.

Section 120 of the Act

1. The Opponent submits that use of the Trade Mark would amount to trade mark infringement under section 120 of the Act for the same reasons provided in relation to section 44.

2. Although section 42(b) is not prescriptive in terms of the legislation or law that may be considered, there are several reasons why it would be inappropriate to find use of the trade mark contrary to law on the basis of trade mark infringement.

3. First, sections 44 and section 60 of the Act cover the same criteria used to assess infringement under section 120 but operate in a context that is relevant to an application for registration of a trade mark. Given my findings regarding deceptive similarity and section 60, it would follow that, in my view, use of the Trade Mark would not amount to infringement.

4. Second, an action for infringement may only be brought in a prescribed court,[36] or any other court that has jurisdiction to hear the action.[37] Opposition proceedings before a delegate of the Registrar is not a prescribed court.[38] While this would not necessarily preclude consideration about whether use of trade mark would amount to trade mark infringement, it would be redundant given the operation of sections 44 and 60 in an opposition under section 52 of the Act.

   [36] Trade Marks Act 1995 (Cth) s125(1).

   [37] Ibid s125(2).

   [38] See: Trade Marks Act (Cth) section 190.

5. Third, although section 42(b) is determined at the priority date of a trade mark application,[39] prospective conduct can be considered.[40] Should the Trade Mark proceed to registration, its use within the scope of section 20 of the Act would not constitute trade mark infringement because section 122(1)(e) of the Act provides that a person will not infringe a registered trade mark when ‘the person exercises a right to use a trade mark given to the person under this Act’.

   [39] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411].

   [40] Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited [2003] FCA 1502, [47].

6. In light of the above I am not satisfied that use of the Trade Mark would be contrary to law. The ground of opposition under section 42(b) has not been established.

Decision

1. Section 55(1) of the Act provides:

   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.

2. The Opponent has not established any of their nominated grounds of opposition. Accordingly, the trade mark 1881847 may proceed to registration one month from the date of this decision.

3. Should the Registrar be served with notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

Costs

1. Both parties have sought an award of costs. As the Opponent has not been successful in their opposition, I award costs against the Opponent under section 221 of the Act in accordance with Schedule 8 of the Trade Marks Regulations1995 (Cth).

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

24 February 2021