Oregon Brewing Company v Thira Holdings Pty Ltd

[2011] ATMO 33

TRADE MARKS ACT 1995

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

Re:Opposition by Oregon Brewing Company to registration of trade mark application 1281229(32) – ROGUE LAGER - in the name of Thira Holdings Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Opponent: Andrew Fox of counsel, instructed by Peter Maxwell & Associates Applicant: None[1]
Decision:	2010 ATMO 33 s.52 Opposition – s.58 – applicant not the owner of the trade mark. Ground established. Costs awarded against applicant.

[1] See the qualifying comments in paras. 5 to 7 below.

Background

1. Beverage Holdings Pty Limited applied under the Trade Marks Act 1995 (‘the Act’) to register a trade mark, current details of which appear below:

   Application No:  1281229
   Priority Date:  16 January 2009

   Goods:Class 32: “Alcoholic beers; beer; bitter beer; dark beer; malt beer; malt-containing beverages (beers); pilsner beer”.

   Trade Mark:  ROGUE LAGER

   (‘the opposed trade mark’)

2. The opposed trade mark was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks after which Oregon Brewing Company (‘the Opponent’) served and filed Notice of Opposition (‘the Notice’) to the registration of the opposed trade mark. 

3. The matter came before me on 18 February 2011 in Sydney for a hearing of the submissions of the parties. 

4. At the hearing, the Opponent was represented by Mr. Andrew Fox of counsel, instructed by Pater Maxwell & Associates, Patent & Trade Mark Attorneys.  The day before the appointed hearing date, Beverage Holdings Pty Limited telephoned IP Australia to ask that the hearing be postponed.  Beverage Holdings Pty Limited was told that a postponement would only be permissible at that very late stage with the agreement of and at the joint request of the Opponent.

5. On the day of the hearing, solicitors not yet on record as address for service for Beverage Holdings Pty Limited appeared for the Applicant and sought an adjournment of the hearing.

6. I heard preliminary submissions from both sides as to the appropriateness or otherwise of an adjournment after which I proposed directions which were accepted by both sides that the hearing would go ahead, after which Beverage Holdings Pty Limited would have a period of time expiring on Friday, March 4, 2011 to file written submissions in response to Mr. Fox’s oral and written representations.  I stipulated that those submissions could not include evidence of any kind.  I further directed that the Opponent would be allowed 7 days following the receipt of those submissions to make any written reply, again without the introduction of new evidence.

7. No submissions were received by the due date, or at all.

8. Following the hearing, but before this decision, the application was assigned to Thira Holdings Pty Limited.

   The Evidence

9. In support of the Opposition, the Opponent served and filed the statutory declaration of Brett Joyce of 6 January 2010.

10. In answer, Beverage Holdings Pty Limited served and filed the statutory declaration of Timothy Xenos of 7 August 2010.

11. In reply, the Opponent served and filed the declaration of Brett Joyce of 3 November 2010.

    Submissions and Reasoning

12. While the Notice cites numerous grounds of opposition, at the hearing Mr. Fox indicated that the Opponent limited the grounds to those under sections 42, 58 and 60.

13. I am proceeding on the basis that the Opponent need only establish one of those grounds of opposition on the balance of probabilities[2]. For reasons which emerge, it is only necessary for me to consider the section 58 ground.

    [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [27] and Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 (25 June 2010) at [26] to [40].

14. Section 58 states:

    Applicant not owner of 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.

15. The case law developed under section 58 requires the Opponent (in order to establish their opposition) to show that a person or persons other than Beverage Holdings Pty Limited first used the opposed trade mark in Australia for goods adjudged to be “the same kind of thing” as those covered by the application before the filing date of the application, or before Beverage Holdings Pty Limited’s first use of the opposed trade mark for those goods, whichever is the earlier[3].

    [3]  Re Hicks’ Trade Mark (1897) 22 VLR 636.

16. Mr. Joyce has been the President of the Opponent since 2008.  He declares that the Opponent first used the trade mark ROGUE in Australia in 1999 in respect of beer when it entered its beers into beer competitions in this country.  He declares that between 2001 and 2009, the Opponent competed in the Australian International Beer Awards, and has won a number of awards for various kinds of its beers, all marketed and branded under the trade mark ROGUE.

17. It is clear from the evidence that the Opponent markets a wide range of beers by reference to the word ROGUE, used together with other, essentially descriptive, matter.  Those beers include:

    §  Rogue Oregon Golden Ale;

    §  Rogue Honey Cream Ale;

    §  Rogue American Amber;

    §  St Rogue Red;

    §  Rogue Shakespeare Stout;

    §  Rogue Mocha Porter;

    §  Rogue Mo Ale;

    §  Rogue Brew 5000;

    §  Rogue Old Crustacean Barleywine;

    §  Rogue Buckwheat Ale;

    §  Rogue Yellow Snow Ale;  and

    §  Rogue Smoke Ale.

18. Mr Joyce says that in 2008 the Opponent sold US$18,000 worth of those beer products in Australia. 

19. The Opponent’s beers are distributed in Australia by Innspire Pty Ltd.  The earliest evidence of beer sales by the Opponent to Innspire Pty Ltd is from August 2008.  Invoices from August and September 2008 are provided.

20. Mr Timothy Xenos describes himself as the Managing Director of Beverage Holdings Pty Limited. He declares that “the applicant launched its product Rogue Lager in about March or April 2009”. Since Beverage Holdings Pty Limited’s use postdates the application date of the opposed trade mark and the proven first use date by the Opponent I am left only the residual questions under section 58, namely, the comparison of the respective goods and the respective trade marks.

21. The Opponent has used the trade mark on beers, the “same kind of thing” for the purposes of section 58 as all of the goods covered by the application.

22. When comparing trade marks for the purposes of section 58, nothing less than a substantial identity will satisfy the ground[4], albeit that the courts have been prepared to heavily discount added matter in a trade mark which is purely descriptive[5].

    [4] Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.

    [5] PB Foods Limited v Malanda Dairyfoods Limited [1998] ATMO 66.

23. The invoices put into evidence by the Opponent show a slight stylisation of the letter ‘O’ in the word ‘ROGUE’.  In my consideration, this is insufficient to alter the identity of the word ‘ROGUE’.  Moreover, the word ‘LAGER’ in the opposed trade mark is simply descriptive of the type of beer in relation to which Beverage Holdings Pty Limited proposed to use the trade mark, and so its presence in the opposed trade mark does not alter the fact that ‘ROGUE’ is the essential and prominent element of the opposed trade mark.  Accordingly, the presence of the word ‘LAGER’ does not affect in any way the strong correspondence between the two marks and the test[6] of substantial identity is satisfied.

    [6] See Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, per Windeyer J at page 414; see also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602.

24. The Opponent has established its ground under section 58 of the Act.

    Decision

25. Section 55 of the Act relevantly provides:

    Decision

    55. Unless the proceedings are discontinued or dismissed, 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.

    Note:  For limitations see section 6.

26. I refuse to register application 1281229.

    Costs

27. Having succeeded in its opposition, the Opponent is entitled to its costs.

28. As mentioned, the application has been assigned to Thira Holdings Pty Limited.  Section 108(2) states that:

    On and after the day on which the Registrar records the particulars of the assignment or transmission, the person to whom the trade mark has been assigned or transmitted is taken, for the purposes of this Act, to be the applicant for the registration of the trade mark.

29. Accordingly, I award costs at the official scale against Thira Holdings Pty Limited.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    13 April 2011