Pernod Ricard v West End Drinks Limited - [2020] ATMO 166

TRADE MARKS ACT 1995

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

Re:Opposition by Pernod Ricard to registration of trade mark application number 1926436 (class 33) – The King of Soho (figurative) - in the name of West End Drinks Limited

Delegate:	Kate Doherty
Representation:	Opponent: G Tsang of Counsel, i/b Omond Trademark Attorneys Applicant: Written submissions only, Davies Collison Cave
Decision:	2020 ATMO 166 Trade Marks Act 1995 (Cth) – opposition pursuant to section 52 – Grounds of opposition pursued ss 44, 60 and 42(b); none established; trade mark will proceed to registration.

Background

This opposition decision follows an online hearing on 7 August 2020 in relation to the following trade mark pursuant to the Trade Marks Act 1995 (‘the Act’):

Trade Mark No: 1926436

Trade Mark: (‘Trade Mark’)

Plain Words: The King of Soho

Filing/Priority date: 14 May 2014

Applicant: West End Drink Limited

Specification of Goods: (at time of filing): Class 33: Alcoholic beverages (except beers)

The Trade Mark was advertised accepted on 20 November 2016. A Notice of Intention to Oppose was filed on 15 January 2017 by Pernod Ricard (‘The Opponent’). The Statement of Grounds and Particulars (‘SGP’) was filed on 15 February 2017. On 25 March 2019, the Applicant filed a Notice of Intention to Defend the Opposition. The SGP nominates grounds of opposition ss 44, 60 and 62A.

Evidence

Evidence in Support (‘EIS’) and Evidence in Answer (‘EIA’) were filed. A summary of the evidence received from the parties is as follows:

Declarant	Party	Evidence Stage	Date	Annexures	Decision Reference
L Schmidt	Opponent	EIS	26 June 2017	1 to 12	Schmidt Declaration
A Robson	Applicant	EIA	28 June 2017	1 to 21	Robson Declaration
L Eade	Opponent	N/A	31 July 2020	1 only	Eade Declaration

The declarations annex evidence which includes copies of: sales invoices, operational documents, news articles, website screenshots, social media pages.

The Opponent is the owner of the following registered trade marks (‘Opponent’s Marks’):

Trade Mark: SOHO (‘Opponent’s Word Mark’)

Trade Mark No: 758561

Filing date: 31 March 1998

Specification of Goods: (at time of filing): Class 33 liqueurs, especially lichee based liqueurs

Trade Mark: (‘Opponent’s Stylised Mark’)

Trade Mark No: 1093308

Filing date: 31 May 2005

Specification of Goods: (at time of filing): Class 33 liqueurs, especially lichee based liqueurs (‘Opponent’s goods’)

Written submissions were received from both parties. The Applicant was not represented at the hearing.

I decided the matter as delegate of the Registrar of Trademarks.

Onus and Standard of Proof

The relevant standard of proof is the civil standard, or ‘on the balance of probabilities’.0F[1]
[1] Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].
The Opponent bears the onus of proof in an opposition matter.1F[2] The application will succeed if one of the nominated grounds is established. In the absence of the application claiming a convention priority date, the rights of the parties are determined at the date…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2020] ATMO 166
Decision Date: 22 October 2020

CaseChat Overview and Summary

Pernod Ricard, the opponent, sought to oppose the registration of a trade mark by West End Drinks Limited, the applicant, before the Australian Trade Marks Office. The dispute concerned West End Drinks' application to register a trade mark.

The opponent advanced grounds of opposition under sections 44, 60, and 42(b) of the *Trade Marks Act 1995* (Cth). Section 44 concerns the identity or similarity of trade marks and goods or services, section 60 relates to the use of a trade mark in relation to goods or services that are the same or deceptively similar to those for which a registered trade mark has been used, and section 42(b) deals with the registration of a trade mark that would be likely to deceive or cause confusion.

The delegate considered each ground of opposition. In relation to section 44, the delegate found that the opponent had not established that the applicant's trade mark was identical or deceptively similar to any of its registered trade marks for identical or similar goods or services. Similarly, the grounds under section 60 and section 42(b) were not established, as the delegate concluded that the use or registration of the applicant's trade mark was not likely to deceive or cause confusion.

Consequently, the delegate determined that none of the grounds of opposition were established and ordered that the trade mark application would proceed to registration.

Orders