Pernod Ricard S.A. Trading as Pernod Ricard Europe v Soho Wine Company Limited

TRADE MARKS ACT 1995

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

Re:Opposition by Pernod Ricard S.A. trading as Pernod Ricard Europe to registration of trade mark application 1242099(32, 33) – SOHO Logo - filed in the name of Soho Wine Company Limited.

Delegate:

Iain Thompson

Representation:

Opponent: James Ormonde, trade mark attorney of Ormonde & Co

Applicant: Helen Kearney, trade mark attorney of Pipers Patent Attorneys.

Decision:

2011 ATMO 111

s52 opposition - s44 - trade marks deceptively similar - goods of the same description – no honest concurrent use – registration refused in relation to Class 33.

Background

1. In this matter Soho Wine Company Limited (‘the applicant’) of Auckland, New Zealand, has applied under the Trade Marks Act 1995 (‘the Act’) to register a trade mark current details of which are:

Application No: 1242099

Priority Date: 22 May 2008

Convention Date: 26 March 2010 (based on New Zealand application 786461)

Goods:Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Class 33: Red wines, white wines and sparkling wines

Trade Mark:

Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

2. I will term the above trade mark ‘the opposed trade mark’ and the reference to subparagraph 44(3)(b) of the Act as ‘ the endorsement’.

3. The above application was examined in compliance with the provisions of section 31 of the Act and was advertised as accepted for possible registration on 25 March 2010 in the Australian Official Journal of Trade Marks.

4. On 7 July 2010, Pernod Ricard S.A. trading as Pernod Ricard Europe (‘the opponent’) of Paris, France, served and filed Notice of Opposition (‘the Notice’) to the registration of the opposed trade mark. The Notice is broad in its scope and includes the grounds under sections 44, 58 and 60 which were subsequently argued at a hearing.

5. I heard the submissions of the parties on 27 October 2011 by teleconference as a delegate of the Registrar of Trade Marks. Mr James Ormonde, trade mark attorney, of Ormonde & Co represented the opponent. Ms Helen Kearney, trade mark attorney, of Pipers Patent Attorneys represented the applicant.

Other

6. The endorsement arose as a result of an examiner’s recitation of grounds for rejection under section 44 of the Act based on prior registrations or applications which, relevant to this matter, were:

Registration No: 758561

Owner: The opponent

Priority Date: 31 March 1998

Goods: Class 33: Liqueurs, especially lichee based liqueurs

Trade Mark: SOHO

Registration No: 822554

Owner: Southcorp Brands Pty Limited

Priority Date: 7 February 2000

Goods: Class 33: Wines and fortified wines

Trade Mark:

Registration No: 1022158

Owner: The opponent

Priority Date: 24 September 2004

Goods:Class 33: Lichee based liqueurs and alcoholic cocktails with lichee based liqueurs

Trade Mark: SOHO LAI-CHI

Registration No: 1093308

International No: 871787 (31 May 2005 – 05 3 363 143 – France)

Owner: The opponent

Priority Date: 10 November 2005

Goods: Class 33: Liqueurs, particularly lychee-based liqueurs

Trade Mark:

Endorsement: The trade mark consists of the 3-dimensional shape of a bottle including a stylised relief design of a lychee above the neck of the bottle, the combination of colours red, gold and white of its labels attached to the bottle, the word SOHO and the graphic elements including a stylised white design of a junk, as shown on the representation attached to the application form.
Provisions of paragraph s44(3)(b) applied [sic].

7. Following a restriction of the goods of the opposed application in Class 33 from ‘wines’ to those in respect of which registration is now sought, the applicant furnished a letter dated 17 March 2010 from Southcorp Brands Pty Limited (‘Southcorp’) consenting to the use and registration of the opposed trade mark. Subsequently, the application was endorsed so as to indicate that it was accepted because of the “other circumstances” referred to within subparagraph 44(3)(b)[1] and accepted for possible registration.

[1] Oddly, in view of registration 758561(33) SOHO which is owned by the opponent, the endorsement on registration 1093308(33) (which is also owned by the opponent) reflects the fact that (although it has a prior registration of the trade mark SOHO) the opponent was obliged (in order to gain acceptance for registration of 1093308) to seek and receive a consent from Southcorp – which inconsistently did not have such an obligation placed on it in regard to both 822554(33) SOHO Logo and the earlier registration of the opponent’s 758561(33) SOHO.

8. I also observe that the prosecution of the application for registration was, until 25 August 2010, handled by a firm of patent and trade mark attorneys other than Pipers Patent Attorneys who now act for the applicant.

Evidence

9. For the sake of brevity and clarity in these reasons I will discuss only the evidence and submissions of the parties which go to the provisions of section 44 of the Act since my considerations of the matter reveal that the ground under section 44 must very obviously succeed.

The parties served and filed evidence as allowed by the Act and regulations thereto. The opponent’s evidence in support comprises a statutory declaration by Eve-Marie Wilmann-Corteau who is attorney in fact for the opponent. Relevantly, the attorney in fact includes details of the opponent’s Australian registrations which comprise of or include the word SOHO that I have mentioned above under the heading ‘Other’.
The evidence in answer is a declaration by John Lindsey Carter who is a director of the applicant. Relevantly, Mr Carter states that the applicant has sold SOHO branded New Zealand wines in Australia since November 2008. However, confusingly, at paragraph 19 of his declaration Mr Carter states:
My company between the period from August 2008 to December 2010 has sold worldwide in volume approximately 10725 cases of wine with the [opposed trade mark]. 15% of the total volume sales were sold in Australia during this period. The total volume of sales equates to approximately NZ$1.670178.67 [sic] of which 13.3% (NZ$222565.02) of this value is attributed to sales in Australia.
The source of confusion is Mr Carter’s implication within the above quotation that wines were sold in Australia by the applicant under the trade mark SOHO within the period August 2008 to December 2010 which includes a period earlier than his prior statement that wines were sold in Australia since November 2008.
I note that both of these prospective dates of first use of the opposed trade mark by the applicant in Australia are after the priority date of the opposed application.
I further note that while the applicant’s goods were restricted from ‘wines’ to ‘Red wines, white wines and sparkling wines’ in order to attempt to avoid conflict with the opponent’s registrations, Mr Carter refers to his company’s goods throughout his declaration as being ‘wines’.

Submissions

Both parties in their submissions referred me to the usual case-law which applies to section 44 of the Act. While Ms Kearney expressly stated that the applicant did not rely on subsection 44(3) of the Act because the ground under section 44 could not be established, I will for the sake of completeness briefly address that provision of the Act. I also note now that both Mr Carter’s declaration and Ms Kearney in her submissions pointed to registration 822554(33) SOHO Logo owned by Southcorp as being evidence of use of that trade mark in Australia by Southcorp: this is obviously wrong.

Onus

The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities. See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.

Reasons

Section 44 of the Act relevantly provides:
Identical etc. trade marks
44.(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
[…]
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
Thus to found its ground under subsection 44(1) the opponent relevantly has to establish to my satisfaction the existence of at least one trade mark registration or application for registration of a trade mark which is owned by a person other than the applicant and that:
· has a priority date earlier than that of the opposed trade mark; and
· is registered or made in respect of the same or similar goods; and
·has a trade mark substantially identical or deceptively similar to the opposed trade mark.
For the sake of brevity I will consider and discuss only the opponent’s registration 758561(33) SOHO on which it relies and that is registered in respect of ‘Liqueurs, especially lichee based liqueurs’ (although it will be perceived from my reasoning that similar observations apply in relation to each of the registrations on which the opponent relies).
The priority date of trade mark registration 758561 is 31 March 1998 which is earlier than the priority date of the opposed application; and the registration relied upon by the opponent is owned by a person other than the applicant.
The logic of subsection 44(1) is such that it suggests that the question of whether the parties’ goods are similar goods be discussed before any comparison of the trade marks. In Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020; (1999) 45 IPR 411; (1999) AIPC 91-499; [1999] FCA 1020, French J stated:
Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second …
Section 14 of the Act relevantly provides:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
What constitutes ‘goods of the same description’ referred to in subparagraph 14(1)(a) has been the subject of considerable judicial discussion. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 the Court stated:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. [1945] HCA 12; (1945) 70 CLR 84, at p90. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application (1946) 63 RPC 59. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application (1946) 63 RPC 59, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”: In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 when he said: “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments” (1945) 70 CLR, at p94. (at p607)
More recently, in McCormick & Co Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, (‘McCormick’) Kenny J summarised these precepts and observed at paragraph 18:
The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.
However, in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386 at paragraph 71, the Court stated of ‘goods of the same description’ (albeit in relation to infringement):
It is to protect the statutory monopoly the registered owner has to use the registered trade mark as a badge of origin. In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description. One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of Burchett J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark :
In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.
Accordingly, the summary of principal factors relating to the assessment of goods of the same description enunciated by Kenny J in McCormick may be restated as:
(1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; (3) the trade channels through which the goods are bought and sold; and (4) consideration of what members of the consuming public might perceive as a result of the use of the opposed trade mark.
According to the Macquarie Dictionary, a liqueur is:
any of a class of alcoholic liquors, usually strong, sweet, and highly flavoured, as chartreuse, curaçao, etc.
And the Macquarie Dictionary defines the word ‘wine’ as meaning:
noun 1. the fermented juice of the grape, in many varieties (red, white, sweet, dry, still, sparkling, etc.) used as a beverage and in cookery, religious rites, etc.
2. a particular variety of such fermented grape juice: port and sherry wines.
3. the juice, fermented or unfermented, of various other fruits or plants, used as a beverage, etc.: gooseberry wine; currant wine.
Two major considerations dictate that the goods of the parties must be considered to be goods of the same description.
Firstly, the goods under consideration are ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages, red wines, white wines and sparkling wines’ on the one hand and ‘Liqueurs, especially lichee based liqueurs’ on the other. The latter specification of goods claims all liqueurs but includes lychee[2] based liqueurs in particular and I am to consider the specifications of goods of the opposed application compared with that of trade mark registration 758561(33) SOHO (on which the opponent relies) at their widest. In this regard French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-4990 (‘Woolworths’) said at 88:
The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101 [Smith Hayden]. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.
[2] The Maquarie Dictionary lists alternative spellings of the word ‘lychee’ as lichee, lichi, and litchi

The word ‘liqueurs’ in the specification of 758561(33) SOHO thus includes ‘all liqueurs’ and therefore includes wine liqueurs and the various fruit liqueurs such as might reasonably be expected to be made by wine makers who make red wines, white wines and sparkling wines such as those within the applicant’s specification of goods. In my personal observations of the world the makers of (for example) Seppelt, Charles Melton, Orlando, Bleasdale, Rosemount, Shottesbrooke and Morris branded wines also make liqueur wines. Red wines, white wines and sparkling wines and liqueur wines have similar characteristics in that they have a similar genesis in the fermentation of grape juice, an alcoholic content, and are sold as beverages.
The goods are used in a similar way – that is, they are consumed by the public as aperitifs, as accompaniments to meals, for celebratory and social purposes and so on.
The goods come onto the market in the same way – that is, ‘red wines, white wines and sparkling wines’ and ‘liqueurs’ (particularly ‘liqueur wines’) are sold through ‘bottle shops’, hotels, supermarkets etcetera often in close proximately to each other.
The public is accustomed to seeing the trade marks of the manufacturers of ‘red wines, white wines and sparkling wines’ and ‘liqueurs’ (particularly ‘liqueur wines’) as indicating a common source in trade of the goods sold under those trade marks.
In view of the above considerations, the goods ‘red wines, white wines and sparkling wines’ and ‘liqueurs’ (particularly ‘liqueur wines’) are goods of the same description.
Secondly, I note that the expression ‘red wines, white wines and sparkling wines’ which is the Class 33 specification of the opposed application includes in terms of Smith Hayden all red wines, all white wines and all sparkling wines and thus must include fruit wines other than those made from grapes – for example lychee white wines and sparkling wines made from lychees most relevantly – but also all of the fruit wines which are the bases for fruit liqueurs. Fruit wines are (according to the tests I have outlined and discussed above) goods of the same description as fruit liqueurs; and, in particular, lychee wines (which are included within the specification ‘red wines, white wines and sparkling wines’) are goods of the same description as ‘liqueurs, especially lychee based liqueurs’ which goods constitute the specification of goods of 758561(33) SOHO on which the opponent relies.
From this other viewpoint, the goods of the parties are again of the same description.
I turn now to a comparison of the trade marks and firstly consider whether the trade marks of the parties are substantially identical. The classic test lies in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 (‘Shell’) where Windeyer J said at paragraph 12:
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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …
On a side by side comparison of the trade marks, the maze-like graphic within the opposed trade mark has some prominence and obviously affects the identity of the trade marks under evaluation. Although as Mr Ormonde observed, the maze graphic is not obvious in the opposed trade mark as it appears in use (the maze being in use only apparent in a matt finish causing a slight difference in the amount of light reflection from the black background of a glossy label), it is not the trade mark in use which I am to compare with the opponent’s trade mark SOHO. The applicant’s trade mark that I am to compare is the trade mark which appears on the application form. While this distinction might redefine the problem[3] for the applicant in its use of the trade mark, this is not the case here. I further note that the maze device within the opposed trade mark appears, prima facie, to be both a particular of the opposed trade mark which is inherently adapted to distinguish and does not perform the same kind of function as did the representation of a foot in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; [2010] AIPC 92-381; (2010) 86 IPR 224; (2010) 84 ALJR 352 where French CJ, Gummow, Crennan And Bell JJ said at paragraph 68:
In support of this contention Lion Nathan relied on Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506. The registered trade mark in that case was for the word “Colorado”, which, by reason of its geographical significance, was not inherently adapted to distinguish the owner’s goods from the goods of other persons as required by s 41(3) of the Trade Marks Act. As noted by Gyles J, it was difficult to obtain registration of a geographical name as a trade mark under the Trade Marks Act 1955 (Cth) by reason of s 24(1)(d) of that Act[52]. The trade mark for the word “Colorado” had been used in conjunction with a mountain peak device, which reinforced the geographical connotation of the word. Allsop J found that the mark used was a composite mark and that the mountain peak device was not a mere descriptor but a distinguishing feature.
This is to be contrasted with the position in this case. The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT . The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which “do not substantially affect the identity of the trade mark”. Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1)
[3] Arguably, the opposed trade mark as actually used is substantially identical to the opponent’s trade mark.
In view of the above considerations, the trade marks of the parties are not substantially identical.
I next consider whether the trade marks under evaluation are deceptively similar.
The standard which is applied to the evaluative process is that specified in Woolworths at paragraph 50 by French J who said:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
And the consideration of deceptive similarity is to take place in the context of the marketplace for the goods. This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J, as he then was, said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p658.
Both Mr Carter in his declaration and Ms Kearney in her submissions appear to argue that there are potentially a number of different SOHO trade marks allowed by Southcorp’s letters of consent to co-exist on the Australian register of trade marks which reflects (in the applicant’s submissions) the fact that the public distinguishes between the trade marks as used. In fact it does nothing of the sort. The most obvious reason which would prompt Southcorp to issue letters of consent is that it does not use its registered trade mark and wishes to both preserve its registered trade mark should it ever wish to use it and not be put to the expense and inconvenience of defending an application under section 92 of the Act for the removal of its trade mark from the register of trade marks. And, if the applicant’s logic is correct that a number of different SOHO trade marks co-exist on the register of trade marks and therefore its SOHO trade mark may be registered, it follows that any other trader could put some other symbol or graphical element around the word SOHO and register it for the goods of interest to the current applicant.
The number of people who own registered trade marks in Classes 32 and 33 which incorporate the word SOHO is just two: these being the opponent and Southcorp. Whatever the merits of letters of consent in situations such as these,[4] the opponent owns registered trade marks whose co-existence with the Southcorp trade mark cannot be regarded as somehow indicating that their collective presence on the register of trade marks can be ignored.
[4] The opponent’s ‘senior’ registration 758561(33) SOHO was secured by obtaining a consent from Southcorp in relation to Southcorp’s earlier registration 770823 (now removed from the register as un-renewed).
I therefore had some difficulty with Ms Kearney’s submissions to the effect that the letters of consent from Southcorp to both the applicant and opponent should allow the trade marks of the parties to co-exist. This submission is to an extent echoed in Mr Carter’s declaration. While Southcorp has issued letters of consent to the parties to this dispute, it is plain that that opponent does not consent to the registration of the opposed trade mark; indeed, that is what the opposition to registration, the hearing and this decision are about. Southcorp quite plainly does not speak for the opponent: Southcorp and the opponent are rivals in the same trade.
In the comparison of the trade marks, I do not consider that the fact that the one trade mark is written vertically and the other is written horizontally is a distinguishing feature in the assessment – in fact, the notional use of the short word SOHO which constitutes the opponent’s trade mark might in terms of Smith Hayden, above, be seen to extend to the vertical representation of that word. The word SOHO within the opposed trade mark is very obviously the word SOHO and the trade mark of the opponent if rendered vertically would palpably remain the word SOHO. If hypothetically considered in terms of actual (and opposed to notional) use, section 17 of the Act allows:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
I can see no reason why the same sort of principle should not extend to considerations of what the notional uses of a registered or pending trade mark might be in order to establish the basis of valid comparisons when considering any potential similarity to another trade mark. Thus, while the rendition of a long word vertically might be beyond the bounds of what might be considered to be the notional use of that word as or within a trade mark, I am satisfied that the word SOHO rendered vertically comes within what may be considered to be the notional use of the word registered as a trade mark and rendered on the register of trade marks horizontally.[5]
[5] See the trade mark in Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft [1965] HCA 71; (1965) 120 CLR 285
The goods are not of particularly high expense such that meticulous caution would be expected to be associated with distinguishing between the trade marks upon their purchase by a member of the public who would have the usual pressures attendant upon them when selecting consumer goods from the shelves of bottle shops or supermarkets: Re Stuart Alexander and Co (Interstate) Pty Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV v Blenders Pty Limited [1981] FCA 152; (1981) 53 FLR 307.
While the graphical device which I have called a maze forms a major feature of the opposed trade mark, the word SOHO is the only means by which the goods sold under either of the trade marks may be requested. The word SOHO is also, in my consideration, most likely to be the only way in which the trade marks will be identified and remembered by the public. Indeed, in the opponent’s trade mark 758561(33) SOHO the word is the only way in which that trade mark may be remembered and recalled. However, even if another graphical feature comparable with that of the applicant’s maze were included within registration 758561(33) SOHO, I would remain inclined to the view that the element SOHO within such a registered trade mark must inform the basis for any recollection (imperfect or otherwise) of the trade mark by a potential purchaser: Aristoc Ltd v Rysta Ltd [1945] AC 68, see also Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, which was explained in Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196; (2004) 61 IPR 21 by Moore, Sackville and Emmett JJ in its application to such cases at paragraph 82:
In Saville, the infringement action was brought by the proprietor of a trade mark consisting of the word ‘June’ printed in a special manner. The word appeared with a bar as a background behind the letters. The word ‘June’ therefore occupied a prominent position in the mark. A relatively small garland of flowers joined the ends of the bar in the form of an arc. (The report of the case does not reproduce the mark, but Mr Shavin helpfully provided the Court with a copy of the mark itself.) The appellant’s trade mark was registered in respect of perfumery, including toilet articles and had been extensively used and advertised. The respondent sold toilet articles under the name ‘June’. Not surprisingly, it was found that some members of the public asked for the respondent’s preparation by the name ‘June’.
Viscount Maugham (with whom Lord Russell of Killowen and Lord Romer agreed) said that it was manifest from an inspection of the respondent’s mark that the distinguishing feature was the word ‘June’ in a special script. It was that essential feature that the appellant had used as a mark for goods of the class for which the respondent’s mark was registered. That use was one which (at 175) was:
‘likely to deceive or cause confusion in the minds of purchasers with a normally imperfect recollection of the precise picture representing or containing the registered mark’.

There is no suggestion from either party that the word SOHO in itself lacks inherent adaptation to distinguish the goods of either party and as such should be discounted to some extent in a comparison of the trade marks – but in so remarking I am cognizant of the fact that the word SOHO is the only feature within registration 758561(33) SOHO and that placing some kind of discount on that feature is accordingly inappropriate.
In regard to all of the foregoing, I consider the trade marks of the parties to be deceptively similar.
Having established that one of the trade marks on which it relies has a priority date earlier to that of the opposed application and is registered in respect of similar goods and is deceptively similar, the opponent has established its ground under section 44(1) of the Act.
I have mentioned that Ms Kearney submitted at the hearing that the applicant had no need to invoke subsection 44(3) of the Act (honest concurrent use) due to the fact that it is the applicant’s belief that the trade marks of the parties could co-exist. However, it would appear that the evidence of the use of its trade mark and details of revenue under, and promotion of, the opposed trade mark must have been served and filed for some end and, if it is not the establishment of honest concurrent use, the content of this evidence appears not to go to any other ground. I will therefore briefly discuss it but for reasons which I will explain, it is clear that the evidence of the applicant does not establish honest concurrent use.
In McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J said of subsection 44(3) and honest concurrent use:
Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.
See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.
THE HONESTY OF THE USE
The rights of the parties are to be determined as at the date of the application for registration - in this case, 9 March 1992: Southern Cross at 594-95; In Re Simac S p A Macchine Alimentari’s Application (1987) 10 IPR 81 (“Simac”) at 90-91; Aromas Pty Ltd v Aroma Coffee & Tea Co Pty Ltd (1997) 40 IPR 75 (“Aromas”) at 86; and Trepper v Miss Selfridge Ltd (1991) 23 IPR 335 at 346.
The honesty of concurrent use refers to “commercial honesty, which differs not from common honesty”: see In Re Parkington & Co Ltd’s Application (1946) 63 RPC 171 at 182. In that case, Romer J said at 181-182:
[T]he circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user.
The rights of the parties are to be considered as at the date that the opposed application was filed – 22 May 2008.
The applicant’s use started in November 2008, after the filing of the application for registration and thus could not establish any right at the date of filing of the application.
Additionally, Mr Carter’s declaration does not attest to the circumstances which attended the adoption of the trade mark – although he does record that the word SOHO forms a part of the name of the applicant. He does not state whether he was aware of the opponent’s trade marks when the opposed trade mark was first used in Australia but the timing of the examiner’s adverse first report – issued on 8 June 2008 – which drew attention to the prior registrations of both the opponent and Southcorp suggests that the applicant knew of the conflicting registrations. The subsequent use of the opposed trade mark by the applicant in Australia from November 2008 in the face of the conflicting registrations (and prior to both the amendment of the specification of goods of the opposed application in Class 33[6] on 25 March 2010 and the issuance Southcorp’s letter of consent dated 17 March 2010) suggests, prima facie, at least a degree of insouciance on the part of the applicant.
[6] Although with hindsight the ‘restriction’ by amendment on 25 March 2010 of the specification of goods achieved little, it was apparently believed by both the applicant and examiner at that time that it distinguished the goods of the parties.
The evidence of the applicant’s use of the opposed trade mark, had it been called upon in the hearing, does not establish honest concurrent use.

Decision

Section 55 of the Act relevantly provides:
55Decision
(1)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.
Ms Kearney did not argue for a preservation of goods in Class 32 on the application – the submissions at the hearing were apparently on an ‘all or nothing’ basis. Likewise, the goods in Class 32 of the application did not attract comment from Mr Ormonde for the opponent. However, the opposition is established only in relation to goods in Class 33 of the application. Accordingly, it is convenient to refuse to register application 1242099 in its entirety but to allow that if the applicant seeks amendment of the application by excising both the Class 33 claim and ‘Red wines, white wines and sparkling wines’ from the specification of goods of the opposed application within one month from the date of this decision, the application should be allowed to proceed to registration.
If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.

Costs

As the opponent has been, to all intents, successful in relation to the goods of interest to both parties, it is entitled to its costs which I award against the applicant at the official scale.

Iain Thompson

Hearing Officer

Trade Marks Hearings

14 November 2011

[2011] ATMO 111

14 November 2011

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Intellectual Property

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