Pernod Ricard Winemakers Pty Ltd v Cracka IP Pty Ltd

[2018] ATMO 110

TRADE MARKS ACT 1995

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

Re:Opposition by Pernod Ricard Winemakers Pty Ltd to registration of trade mark application 1752494 (33) – RICHMOND PARK - in the name of Cracka IP Pty Ltd

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 110

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – ground established – registration refused

Background

1.  This is an opposition brought by Pernod Ricard Winemakers Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Cracka IP Pty Ltd (‘Applicant’): 

Application Number:	1752494
Filing Date:	18 February 2016
Goods:	Class 33: Wine (‘Applicant’s Goods’)
Trade Mark:	RICHMOND PARK	(‘Trade Mark’)

2.  Following the advertisement on 14 July 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’) on 9 September 2016. The SGP raised grounds of opposition under ss 42(b) and 44 of the Act. The Applicant filed a Notice of Intention to Defend on 21 October 2016.

Evidence

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 1 March 2017.  This evidence consists of a declaration made on 28 February 2017 by Isabelle Gille, Head of Group Intellectual Property of Pernod Ricard S.A., with Annexures IG-1 to IG-9 (‘Gille Declaration’).  The Declarant does not explain the relationship between Pernod Ricard S.A. and the Opponent but states that she is empowered by the Opponent to make her declaration on behalf of the Opponent based on her own knowledge and belief and the Opponent’s business records.  The Applicant did not file any Evidence in Answer.  

4.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 3 August 2017 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.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  On 2 October 2017, the Opponent filed written submissions (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

The Opponent

6.  The Opponent is an entity that is involved in the distribution and sale of wine in Australia.

7.  The Opponent is the registered owner of the Australian trade marks set out in the table below (‘Opponent’s Trade Marks’).  The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods and Services’.

Number	Trade Mark	Priority Date	Goods and Services
849938	(the ‘Device Mark’)	13 Sep 2000	Class 33: Wines, spirits and liqueurs
1206194	RICHMOND GROVE  (the ‘Grove Mark’)	24 Oct 2007	Class 33: Wines, spirits and liqueurs

8.  The Gille Declaration contains the following claims/statements:

·     The Opponent first used the Grove Mark in 1977 and has registered marks (some of which are no longer in force) containing the words ‘Richmond Grove’ since 1978.  

·     The wine produced bearing the Opponent’s Trade Marks has developed a reputation for quality and is scored highly by reputable wine guides.  This wine has been reviewed in mainstream publications with high circulation and has won many awards.  

·     The Opponent has sold small quantities of wine bearing the Opponent’s Trade Marks to the Applicant.  The Applicant has advertised the sale of the Opponent’s Richmond Grove wine on its website.  On its website the Applicant advertises for vintages of the Opponent’s Richmond Grove wine it did not purchase from the Applicant.

The Applicant

9.  The Applicant has provided no evidence and therefore I am unable to provide any information about the Applicant, other than what is on the Register or what is provided in the EIS.  From the EIS it appears that the Applicant operates a website involved in the sale of wine produced by third parties.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42 and 44 of the Act. To successfully oppose the application the Opponent bears the onus of establishing at least one of those grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 44. Consequently, it is unnecessary that I consider the remaining ground. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

2. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 18 February 2016 (‘relevant date’), being the filing date of the application in Australia (except in circumstances not present here, in which a different priority date is provided for in the Act).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32], see also Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 44

1. The relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 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.

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.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

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.

1. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods/services, and/or goods/services which are closely related to the Applicant’s Goods (‘the third requirement’).

2. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and 44(4) of the Act. As the Applicant has not provided any evidence or submissions in this case there is no possibility of it satisfying the requirements of ss 44(3) and 44(4).

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks, however for the purposes of this ground I need only consider the Grove Mark. The Device Mark contains additional elements resulting in it being less similar to the Trade Mark than the Grove Mark. If I find that the Grove Mark does not satisfy the requirements of s 44, I would necessarily reach the same conclusion when considering the Device Mark.

4. The Grove Mark has a priority date that is earlier than the priority date of the Trade Mark.  Both the Trade Mark and the Grove Mark are registered for wine.  I consider that the first and third requirements are satisfied. 

Substantially identical or deceptively similar

1. I will now consider whether the Trade Mark is substantially identical to the Grove Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   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.[4]

   [4] (1963) 109 CLR 407, [12].

2. The concepts of ‘dominant cognitive cues’ and ‘essential elements’ of trade marks were considered in the recent decisions of the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’)[5] and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’).[6] The court stated in Pham Global:

   There is no doubt in our view that the Full Court in Accor in using the phrase ‘dominant cognitive cues’ was making analogical reference to the ‘essential features’ of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical. …

   The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’ (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[7]

   [5] [2017] FCAFC 56.

   [6] [2017] FCAFC 83.

   [7] [2017] FCAFC 56, [51]-[52].

3. The trade marks which were compared in Pham Global are shown below:

The court found the elements ‘insight’ and the devices in each trade mark to be the essential elements. In finding the two trade marks substantially identical the court discounted the words ‘Clinical Imaging’ and ‘radiology’ due to the descriptive nature of those words in connection with the relevant services.[8]

[8] [2017] FCAFC 83, [56].

1. The Trade Mark and the Grove Mark are set out below:

RICHMOND PARK

RICHMOND GROVE

1. On a side by side comparison there is a clear difference between the respective trade marks, being the replacement of the word ‘park’ (in the Trade Mark) with the word ‘grove’ (in the Grove Mark).  While the words ‘park’ and ‘grove’ potentially refer to a geographical area from which wine could be produced, they are not entirely descriptive words to be discounted for the comparison; unlike ‘Clinical Imaging’ and ‘radiology’.  This difference between the respective trade marks is sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and the Grove Mark are deceptively similar.

2. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   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 [trade mark].[9]

   [9] Ibid [13].

3. In Registrar of Trade Marks vWoolworths Ltd French J consider the expression ‘likely to cause confusion’ as found is s 10:

   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.

   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.[10]

   [10] (1999) 45 IPR 411, 428; [1999] FCAFC 1020 [50]. French J was restating the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

4. In considering ‘likely to deceive or cause confusion’ in the same case, French J stated:

   The use of the word ‘likely’ in this context does not import a requirement that it be more probably than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a ‘real tangible danger or its occurring’: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-95 (Kitto J).[11]

   [11] Ibid 426 [43].

5. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[12] at [49]; Australian Woollen Mills[13] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[14] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[15] at 594 – 595.

   Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[16]

   [12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [13] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [14] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [15] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [16] [2012] FCA 1022, [38]-[46].

1. A relevant factor in the present case is that both the Trade Mark and the Grove Mark are registered or sought to be registered for wine.  Section 2.4 of Part 32B of the Trade Marks Office Manual of Practice & Procedure notes that while the normal tests for comparing conflicting trade marks apply to trade marks claiming wine, certain comparisons will occur more frequently due to the way wine is marketed and promoted. Words that describe geographical features occur more frequently in wine trade marks and as such, where the main identifying feature is an unusual or invented word, the fact that the respective marks may refer to different geographical features does little to resolve the confusion (such as between the hypothetical marks BOOMERANG HILL and BOOMERANG CREEK).  The converse is when the initial word is commonly used in relation to wine, such as ‘Stone’; in such a case  the market place is unlikely to assume exclusive proprietorship of ‘stone’ because of the number of wine labels from many different traders featuring that word.

2. The respective marks are conceptually similar, being the word ‘Richmond’ and a geographical feature that evokes a natural landscape with the presence of trees.  Visually and aurally, they share the same first element, but are distinguished by their dissimilar second words.

3. In the present case, while the word ‘Richmond’ is not as unusual in respect of wine as ‘boomerang’, I consider that, allowing for imperfect recollection, there is a real likelihood that some people will wonder or be left in doubt about whether Richmond Park wine comes from the same source as Richmond Grove wine.  Given that the terms ‘grove’ and ‘park’ are geographical features referring to natural landscapes with trees, there is a likelihood that a person of imperfect recollection is likely to focus on the ‘Richmond’ element of the respective marks. 

4. When considering the surrounding circumstances in which wine is sold, I note that wine is often sold in a retail environment or by list in licensed premises.  Noting that the question of deceptive similarity is not to be decided by a side-by-side comparison, when presented with a wine list which displays ‘Richmond Park’ wine, or when visiting a store that displays wine with ‘Richmond Park’ on the label, I consider that there is a real tangible danger that the individual would focus on the word ‘Richmond’ and be less conscious of the distinction between ‘grove’ and ‘park’.  They would be ‘caused to wonder’ whether Richmond Park wine is or comes from the same source as Richmond Grove wine.  A further consideration, discussed in Hans Schwarzkopf & Henkel GmbH & Co KG v Tars International Limited[17] is that wine is generally sold in bottles, being cylindrical containers, so that when they are arranged on the shelf parts of the respective marks (notably in this instance, the second word of each mark) might be obscured and might not be properly visible or displayed.  

   [17] [2008] ATMO 72, [20].

1. I find that the Opponent has established its ground of opposition under s 44 of the Act.

Decision

1. I have found that the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Costs

1. The Opponent has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event.  I accordingly award costs against the Applicant as per Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Nicholas Smith

Hearing Officer

Oppositions and Hearings

11 July 2018