Pernod Ricard v West End Drinks Limited
[2020] ATMO 166
•22 October 2020
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 of filing the application and the relevant date is 14 May 2014.
[2] Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].
Application to file late evidence
A declaration by L Eade was sought to be filed by the Applicant on 31 July 2020 by annexing the document to the Applicant’s submissions. I permitted oral submissions about this issue at the commencement of the ex parte Opposition Hearing.
An application to file evidence outside the periods in the Trade Mark Regulations 1995 (Commonwealth) (‘The Regulations’) must provide reasons for any delay. No reasons were provided for the delay in filing the Eade Declaration. The material contained in the declaration was not ‘new material’ in the sense that the material would not have been available to the Applicant at the time evidence was required to be filed. I declined to permit reliance upon or further submissions about the Eade Declaration.
Grounds of Opposition
Section 60 – Trade mark is similar to a trade mark which has acquired a reputation in Australia
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) 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.
Section 60 is discussed in McCormick & Company Inc v McCormick per Kenny J:3F2F[3]
Reputation is ‘the recognition of the [trade] marks by the public generally’.
However, for highly specialised products or products directed at specific markets the relevant assessment of reputation is made in relation to those markets and not the public generally.4F3F[4] Reputation is often proven by a high volume of sales, as well as substantial advertising and promotional expenditures. Direct evidence for consumer appreciation of a mark is often not required.5F4F[5]
[3] (2000) 51 IPR 102 [81].
[4] Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410 [436].
[5] Ibid. [86].
In ConAgra Inc v McCain Food (Aust) Pty Ltd it was stated that reputation cannot be assumed and must be established as a question of fact:6F5F[6]
It is one thing to sell goods, it is quite another to show that they have amassed a reputation which is sufficient to lead consumers into deception or confusion and to satisfy the requirements of s 60.7F6F[7]
[6] ConAgra Inc v McCain Food (Aust) Pty Ltd (1992) 33 FCR 302.
[7] Sara Lee Corp v Bali Blue Pty Ltd (2003) 59 IPR 619 [25].
Earlier use can result in an earlier priority date.8F7F[8] To establish a ground of opposition under s 60, the Opponent must demonstrate that at the priority date of 14 May 2014:
a)there was another trade mark;
b)which had acquired a reputation in Australia;
c)amongst a significant section of the public;
d)such that use of the opposed trade mark would be likely to deceive or cause confusion.
[8] Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR [606].
The Opponent’s Word Mark and the Opponent’s Stylised Mark appeared on the Trade Mark Register approximately 16 and eight years respectively before the priority date.9F8F[9] The evidence provided by the Opponent state the Opponent’s Plain Word Mark was used in Australia from 2004.9F[10] The Opponent states they first used the mark ‘SOHO’[11] on alcoholic beverages in Australia as early as 1998, and have acquired a reputation for those products.[12]
[9] Above at [1] and [4].
[10] Schmidt Declaration, Annexure 5, [7].
[11] Registered trade mark no. 758561.
[12] Schmidt Declaration, Annexure 5, [12].
Use of a word mark on menus is of limited probative value when establishing reputation pursuant to s 60, I am unable to determine any recollection of customers in relation to that use or how many customers may have been exposed to a menu over what period of time.[13] The Opponent’s evidence shows the goods are very often used as an ingredient in a mixed product, namely alcoholic cocktail drinks, this leads to a question for whether the relevant consumer is the public or a commercial buyer.[14] The records of online forum discussions infer that the product does not have direct competitors, the goods are regularly referenced in descriptive terms rather than with the Trade Mark.[15] No advertising or promotional expenditure is before me. Whether the Opponent’s Marks do have esteem or the products enjoy notoriety because they are a unique is poignant.
[13] Schmidt Declaration, [5], pp 54, 75 and 77.
[14] Schmidt Declaration, Annexure 5.
[15] Ibid. pp. 76.
The Opponent’s Marks are clearly visible on goods sold in prominent liquor retailers to the public after the priority date.[16] Other evidence shows reasonable levels of sales in Australia of the bottles displaying the Opponent’s Marks prior to that time.[17] On the basis of the modest sales figures, I will now consider whether the Opponent’s Mark’s have a reputation for the purposes of s 60. [18]
[16] Ibid. [9].
[17] Ibid. [10].
[18] Schmidt Declaration, Annexure 5, [12].
Amongst a significant section of the public
17. The degree of reputation necessary is dependent on the market in question. In Le Cordon Bleu BV v Cordon Bleu International Ltee12F17F[19] Heerey J observed:13F18F[20]
What is “significant” or “substantial” will depend on the nature of the goods or services in question. For highly specialised products, awareness among a few thousand persons, or even less might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.
[19] Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 50 IPR 1; [2000] AIPC 91-661; [2000] FCA 1587; see also Spiral Foods Ltd v Valio Ltd (2000) 50 IPR 473.
[20] Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 50 IPR 1; [2000] AIPC 91-661; [2000] FCA 1587 at 20, [91]; see also Aktion Zahnfreundlich v Suntory Ltd (1998) 42 IPR 593; [1998] ATMO 44.
The relevant market has not been clearly characterised by either party. It is not clear whether the market for the Applicant is even the public, or a subset of commercial customers who prepare cocktails in licensed premises. I am left speculating whether the relevant population are Australian’s over the age of eighteen who consume alcohol or some other subset. It appears that the relevant population is virtually all Australian’s over eighteen years old, the evidence before me does not establish awareness by a significant or substantial portion of the relevant market. I therefore find the Opponent has not acquired the s 60 reputation. For completeness, I will consider the confusion limb of s 60.
Likely to Deceive or Cause Confusion
The following statements apply to consumers of the relevant class of goods pursuant to s 60:
a) In Australia alcohol is purchased by consumers over the age of eighteen years, a licensed sales assistant, or bartender, is ordinarily involved in each sale.
b) Consumers of alcohol do not generally make impulse purchases. Pricing and product quality are relevant considerations.[21]
The requirement that the deception or confusion should be amongst ‘a substantial number of persons’ must be ‘properly and sensibly applied’.11F16F[22]
[21] Contrast with customers who are children - Coca‑Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; Scotch Whisky Assn v De Witt (2007) FCA 1649 at [38].
[22] Re Bali Brassiere Co Inc's Registered Trade Mark [1968] HCA 72.
Although it is not necessary that goods or services are of the same type for consideration in relation to s 60, where goods and services are associated the threshold to establish a likelihood of deception or confusion will be lower. The Applicant’s goods include all alcoholic beverages except beers, this clearly encompasses the Opponent’s goods which are liqueurs. Though the Applicant’s evidence before me only shows used of the Trade Mark in relation to the alcoholic spirit gin, I am required to consider notional use. I therefore find that the goods are the same for the purposes of s 60.
There is no evidence before me of actual confusion, but actual confusion is not a mandatory requirement and so this absence is not fatal to the application. The word ‘SOHO’ is common to the Trade Mark and both the Opponent’s marks. The font on the Trade Mark is elaborate and stylised, the word very much appears because of the stylisation to say ‘SOH’. Without the context of a place name in Australia, it is not possible for me to infer how the Trade Mark would be read or understood.
The inherent capability of the Applicant’s mark to distinguish is reasonably high, the font is distinct, and the predominant part of the mark is a highly striking device. The goods in the Application are for the types of goods for which there is ordinarily a reasonable examination prior to purchase and repurchase, which would eliminate or reduce confusion.24F24F[23] When allowing for the level of similarity between the marks when accessed by the same types of consumers I find they are unlikely to be confused.
[23] Fratelli Fantini SpA v Beverley Harris [2019] ATMO 44 [54].
The Opponent has not established that it has a sufficient reputation pursuant to s 60 and I find the probability of confusion occurring between the marks is negligible. I find that the s 60 ground of opposition is not established.
Section 44 – Identical etc. trade marks
Section 44 of the Act provides:
44 Identical etc. trade marks
(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) it 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.
To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1) which are that at least one of the trade marks upon which it relies:
1.Has a priority date which is earlier than that of the Trade Mark (‘the first requirement’), and;
2.Is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’), and;
3.Is in respect of similar services which are closely related to the Opponent’s services (‘the third requirement’)
The first requirement is not in dispute, the priority dates of the Opponent’s Marks are substantiated by the Register and are approximately eight and sixteen years earlier than the priority date for the Trade Mark.
| SOHO 758561 |
| 1093308 |
In relation to the second requirement: the marks are not substantially identical. The test for this is to compare the marks side by side.33F[24] The marks share a word but few other similarities. Differences include the number of words, the Trade Mark is heavily stylised in a distinct font which bears no resemblance to any of the Opponent’s Marks. The Trade Mark includes a number of distinct features including a fox tail, top hat, peacock feather, trumpet and book. Only one word is shared, I find the word is distorted in the Trade Mark due to the placement and font and this feature can be minimised. The marks are not substantially identical.
[24] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66, [12].
For the Opponent’s Stylised Mark, these differences are amplified. The sole shared feature is a word with its noted distortion, the distinct get-up of the Opponent’s bottle design includes only text and distinct stripes bearing no resemblance to the prominent device in the Trade Mark.
Deceptively similar is an additional consideration, the Act states:
Section 10 – Definition of deceptively similar
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.
Resemblance pursuant to s 10 relates to the overall impression of the mark. The marks share a word, SOHO, but the font and typesetting distort the readability of that word within the Trade Mark which detracts from the significance of that particular similarity, the many differences have been listed above.[25] I find that while the goods may be the same the overall impression of the trade marks are significantly different.
[25] See paragraphs: [18]-[22], [26].
The third requirement is that the marks are for similar goods or services, this is not in dispute. Statutory use rather than actual use is relevant for s 44, and the Trade Mark is for class 33 and this overlaps with the Opponent’s goods. I do not find the marks are substantially identical or deceptively similar. Therefore, I find the ground of opposition pursuant to s 44 is not established.
Section 42(b) –Trade mark is scandalous or contrary to law
Section 42 of the Act provides:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(b) its use would be contrary to law.
Where misleading and deceptive conduct is established, use would be contrary to law. Pursuant to Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd the Opponent must demonstrate that use of the Trade Mark would, not could,be contrary to law.[26]
[26] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24.
Section 18 of the Australian Consumer and Competition Act 2010 (‘ACL’), concerns whether there have been false representations and/or relevant consumers would be misled or deceived about the true origin of the Applicant’s goods or that they had some connection with the Opponent. In Puxu it was stated that ‘conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach [consumer law]’.[27]
[27] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44.
Cogent evidence is required to support a fining of misleading conduct or deception. The Opponent has not established the ground for opposition pursuant to s 60. Misleading conduct or deception is a higher threshold than the confusion or deception under s 60. It follows that I do not find the Opponent has discharged the onus for establishing that use of the Trade Mark would be likely to mislead or deceive within the meaning of the ACL.
The Opponent has failed to establish a ground of opposition under s 60 of the Act. It is well-establish that this predicates the outcome for the Opponent under the s 42(b) ground because the test for misleading or deceptive conduct under s 18 of the ACL is a more stringent test than that for deception or confusion under s 60 and passing off.[28] Furthermore, if a trade mark does not meet the requirements of s 18 of the ACL it will not constitute the tort ‘passing off’.[29] Therefore,I find that the s 42(b) ground of opposition is not established.
[28] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
[29] Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, [107] (Beaumont J); Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).
Decision
The Opponent has not established a ground of opposition. Pursuant to section 55(1), Trade Mark number 1779061 will proceed to registration for a period of ten years to date from the filing date of 24 June 2016.
The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.
Costs
Costs ordinarily follow the event for an Opposition Hearing. No reason is apparent which would alter that proposition.
Therefore, I direct costs against the Applicant pursuant to s 221 of the Act in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Kate Doherty
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
22 October 2020
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