Opposition by Yoko Luscher and Andries Mostert to registration of trade mark application number 1797786 (class 33) – BRAVE NEW WORLD - in the name of Accolade Wines Australia Limited.

[2019] ATMO 157

TRADE MARKS ACT 1995

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

Re:Opposition by Yoko Luscher and Andries Mostert to registration of trade mark application number 1797786 (class 33) – BRAVE NEW WORLD - in the name of Accolade Wines Australia Limited.

Delegate:	Louise Tuohy
Representation:	Opponent: Written Submissions by Andries Mostert and Anne Makrigiorgos, Griffith Hack Lawyers Applicant: Written submissions by Julie Ryan, General Counsel of Accolade Wines Australia Limited and Frances Drummond of Norton Rose Fullbright Australia
Decision:	2019 ATMO 157 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58 and 60 of the Trade Marks Act 1995 considered – none established – trade mark will proceed to registration

Background

1. Accoldate Wines Australia Limited (‘the Applicant’), filed trade mark application number 1797786 on 20 September 2016 in class 33 of the International Classification of Goods and Services. Current details of the application are set out below.

Trade Mark:	BRAVE NEW WORLD (‘the Trade Mark’)
Trade Mark application no:	1797786
Filing Date:	20 September 2016 (‘the priority date’)
Specification:	Class 33: Alcoholic beverages (except beers); wines

1. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks dated 16 February 2017. Subsequently Yoko Luscher and Andries Mostert (‘the Opponent’) filed a Notice of Intention to Oppose registration on 18 April 2017 followed by a Statement of Grounds and Particulars on 18 May 2017.

2. The Applicant then filed a Notice of Intention to Defend on 17 July 2017. Thereafter the Opponent and Applicant respectively filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (‘the Regulations’).

3. In the letter issuing from IP Australia on 5 June 2018 the parties were notified that as neither party had requested a hearing, the matter would be given to a delegate of the Registrar for a decision based on the written record.

4. The opposition was referred to me as a delegate of the Registrar of Trade Marks on 8 October 2019.

   Grounds, Relevant Date and Onus

5. In the Statement of Grounds and Particulars (‘the SPG') the Opponent nominates the grounds of opposition under section 42(b), 58 and 60 of the Trade Marks Act 1995 (‘the Act’).

6. The rights of the parties are to be determined as at the date of the application which is generally, but not always, the filing date . For the purposes of section 60 which speaks of the priority date, the relevant date is 20 September 2016 which, in this case, is the same as the filing date of the application. Section 42, however, does not refer to a filing date or a priority date. However, I will proceed on the basis that the filing date of 20 September 2016 is the ‘Relevant date’ at which to assess all the grounds in the proceedings .

7. The Opponent bears the onus of establishing at least one of the grounds of opposition . The standard of proof is the ordinary civil standard of the balance of probabilities .

   Evidence

8. The parties filed evidence in accordance with the Regulations being:

   Evidence in Support

   Declaration by Andries Mostert made 19 October 2017 with Annexures 1 to 7 (‘Mostert 1’).

   Evidence in Answer

   Declaration of Julie Ryan, General Counsel of Accolade Wines Australia Limited, made 28 January 2018 with Annexures JR1 to JR10 (‘Ryan’).

   Evidence in Reply

   Declaration by Andries Mostert made 27 March 2018 with Annexures A to E (‘Mostert 2’).

   Additional Material

   Applicant’s Written Submission by Frances Drummond, Partner, Norton Rose Fulbright Australia made 5 July 2018 (Drummond 1).

   Opponent’s Written Submission by Anne Makrigiorgos, Principal, Griffith Hack made 30 July 2018 (Makrigiorgos 1).

   Applicant’s Written Submissions in Reply by Frances Drummond, Partner, Norton Rose Fulbright Australia made 28 September 2018 (Drummond 2).

   Discussion

   Section 58

9. Section 58 of the Act provides:

   58       Applicant not owner of the trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

10. In order to make out a ground of opposition under section 58, the Opponent must establish three factors:

    1.   1.   that the respective trade marks of the Applicant and Opponent are either identical or substantially identical ,

    2.   2.   that the respective services on which the trade marks have been or are to be used are the ‘same kind of thing’ ,

    3.   3.   that the Opponent has the earlier claim to ownership based on authorship  and use of its trade mark prior to both the filing of the application and any actual use of the opposed trade mark by the Applicant .

11. In the SGP the Opponent has particularised the section 58 ground of opposition as follows:

    The trade mark BRAVE NEW WINE was first used in Australia in relation to wine by the Opponents prior to the date of application of he Opposed Application and prior to the date of any first use of the Opposed Application in Australia.

12. For the Opponent to succeed under this ground it is necessary to show that the first factor is satisfied, namely that the Trade Mark is identical, or substantially identical, to the trade mark relied upon by the Opponent.

13. In assessing whether trade marks are substantially identical the test stated by Windeyer J in Shell Company of Australia v Esso Standard Oil (Australia) Ltd is applied:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison .

14. The respective trade marks to be compared are as follows:

The Trade Mark	Opponent’s trade mark
BRAVE NEW WORLD	BRAVE NEW WINE

1. On a side by side comparison there is a clear difference between the respective trade marks, in that the Trade Mark includes the word WORLD and the Opponent’s trade mark the word WINE as the third word making up a complete phrase. The words WORLD and WINE have completely different meanings, they look different and they cannot be interpreted in the same way. A total impression of dissimilarity emerges from a side by side comparison of the trade marks which is sufficient for me to conclude that the respective trade marks are not substantially identical .

2. The Opponent has not established the ground of opposition under section 58 of the Act.

   Section 60

3. 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.   (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.   (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.

   Note: For priority date see section 12.

4. In the SGP the Opponent particularised the section 60 ground of opposition as follows:

   Before the priority date of the Opposed Application, the trade mark BRAVE NEW WINE had acquired a reputation in respect of wine.

5. To establish a ground of opposition under section 60 the Opponent must demonstrate that the trade mark upon which it relies had a reputation in Australia at the priority date and because of that reputation the use of the Trade Mark would likely deceive or cause confusion.

6. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in section 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’ . Her Honour quoted with approval the following words of Lockhard J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…

7. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves . 

8. As stated above, in assessing reputation under section 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. Heerey J in Le Cordon Blue BV v Cordon Blue International Ltd states (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1995) provided some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient …

9. The Opponent has particularised that before the priority date of the Trade Mark, their trade mark BRAVE NEW WINE has acquired a reputation in respect of wine in the SGP.  The Applicant has made extensive submissions that the Opponent’s evidence does not support a conclusion that the Opponents have, or indeed at the priority date had, the necessary reputation in the Opponent’s trade mark to establish the necessary reputation among a significant or substantial section of the Australian public .

10. The evidence before me shows the Opponent first offered for sale and sold wine under or by reference to the trade mark BRAVE NEW WINE since December 2015 . The Opponent advertised and promoted the wine goods through their social media platform on Instagram , and through third parties in order of a Western Australia wine industry event  and reviews of a range of the Opponent’s wine goods by Winefront an Australian online wine review site . I note however that the Opponent has not provided details of any advertising expenditure and parts of the evidence provided cannot be taken into consideration as it postdates the priority date. 

11. Marked as confidential the Opponent’s have also provided what I would characterise as modest sales figures for its wine products for the period from December 2015 to September 2016 being the priority date . Further, the Mostert Declaration 1 states that the main customers of the wine bearing the trade mark BRAVE NEW WINE are wine retailers and restaurants, along with customers at wine tastings and that since January 2016 they have sold wines to over 40 wine retailers and restaurants across Australia . Nonetheless there are no exhibits of invoices or order forms to show details of these sales or any third party advertising or promotion by these entities relating to the Opponent’s goods up to the priority date.

12. The evidence before me shows that the Opponent has obtained moderate sales leading up to the priority date, and they have conducted limited advertising and promotion of their trade mark in the market. However, given the size of the wine industry in Australia the evidence does not demonstrate the ‘recognition’ and ‘esteem’ required to show a significant or substantial reputation in the trade mark to the relevant Australian public.

    The Opponent has not established the ground of opposition under section 60 of the Act.

    Section 42

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

    Section 42(b) Trade Mark scandalous or its use contrary to law

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

    (a)…

    (b) its use would be contrary to law.

14. The SGP the Opponent has particularised the section 42(b) ground of opposition as follows:

    The use of the trade mark BRAVE NEW WORLD would be passing off and would breach ss. 18 and 29 of the Australian Consumer Law and is therefore contrary to law.

15. As with all the grounds of opposition, the onus of proof rest with the Opponent and in that regard the case law on section 42(b) requires it to show that use of the Trade Mark would be, rather than could or might be contrary to law .

16. There is no relevant misrepresentation that would support this claim. Section 18 of the Australian Consumer Law (‘ACL’) is concerned with misleading or deceptive conduct. I have found that the Opponent failed to establish a ground of opposition under section 60 of the Act and the case law relevant to the ACL has made it plain that section 18 imposes a more stringent test than that for deception or confusion under section 60 . Further, the alleged breaches of section 29 of the ACL can also be dismissed since it has been held that where a trade mark does not offend section 18 of the ACL, neither will it offend section 29 of the ACL or constitute the tort of passing off.

17. The Opponent has not established the ground of opposition under section 42(b) of the Act.

    Decision

18. Section 55 of the Act provides:

    55 Decision

    1. (1)       Unless subsection (3) applied to the proceeding, the Registrar must, at the end, decide:

    a.   (a)  to refuse to register the trade mark; or

    b.   (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.

    Note:   For limitations see section 6.

19. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark 1797786 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before this time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Courts order or direction.

    Costs

20. Both parties sought their costs. Costs may follow the event and I award costs against the Opponent at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.

    Louise Tuohy
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    1 November 2019