Plant 10 Spirits LLC v Effen Holdings Pty Ltd

[2009] ATMO 102

TRADE MARKS ACT 1995

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

Re:Opposition by Planet 10 Spirits LLC to registration of trade mark application 1004895 (6, 7, 8, 11, 16, 18, 21, 25, 32, 33, 35, 39) - EFFEN - filed in the name of Effen Holdings Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Not present. Applicant: Chris Round of Middletons,  Melbourne.
Decision:	2009 ATMO 102 s.52 opposition – s.58: trade marks are substantially identical and used on the same goods but opponent has not established use prior to 3 June 2004 – s. 59: opponent’s evidence is insufficient to shift onus onto the applicant – s.60: opponent’s evidence not capable of establishing sufficient reputation such that use of the applicant’s trade mark will deceive or confuse – s.42: is not established. Costs awarded against the opponent.

Background

1. Ryan Leslie filed application number 1004895 on 3 June 2004 in classes 6, 7, 8, 11, 16, 18, 21, 25, 32, 33, 35 and 39 of the International Classification of Goods and Services (‘Nice’ classification). Details of the application are set out below.

   Trade mark:   effen

   Trade mark registration:      1004895

   Priority Date:  3 June 2004

   Goods Specification:             Class: 6 Non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; buckles; key rings; number plates; tool boxes; tool chests; goods of common metal not included in other classes
   
   Class: 7 Machine and machine tools; chain saws; drills, grinding machines; hammers; lawnmowers; planing tools; rack and pinion jacks; saws; woodworking and machines used in the sheet metal industries; blowing machines; welding machines

   
   Class: 8 Hand tools and implements; cutlery; side arms; augers; razors; axes; tool bags; tool belts; hammers; can openers; bottle openers; centre punches; chisels; crow bars; cutting tools; diggers; drills; edge tools; files; knives; garden tools; machetes; mallets; mattocks; oyster openers; picks; planes; pliers; rasps; ratchets; riveters; saws; scrapers; screwdrivers; shovels; sledgehammers; spades; spanners; splitters; squares; tin openers; wrenches; vices; trowels

   
   Class: 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; barbeques; cooking apparatus; distillation apparatus; lamps; burners; beverage cooling apparatus; ice boxes; ice chests; lanterns; lighters; torches; showers; stoves; billys

   
   Class: 16 Printed matter including magazines and periodicals; stationery; calendars; stickers; paintbrushes; bar coasters; postcards; posters; pens; pencils, markers

   
   Class: 18 Attache cases; briefcases; backpacks; bags; trunks; parasols; wallets; belts; shoulder belts; pouches; card cases; note cases; key cases; suitcases; collars for humans and animals; whips; all of these goods made from leather and/or imitations of leather, animal skins and/or hides; umbrellas; walking sticks; harnesses; saddlery; seat belt pads and harness

   
   Class: 21 Household utensils; kitchen utensils; combs; brushes; sponges; porcelain and earthenware; bottle openers; corkscrews; mugs; beer mugs; glasses; jugs; stubby holders; coasters; heat insulated containers for beverages; portable coolers; drinking flasks; drinking glasses, ice buckets, insulating flasks, non-electric cooking utensils, cooler bags

   
   Class: 25 Clothing, footwear, headgear

   
   Class: 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; hops

   
   Class: 33 Alcoholic beverages; bitters; rum; whiskey; wine

   
   Class: 35 Advertising, marketing, promotional and sales services; business management; business administration; office functions; each of these services also provided via a global communications network

   
   Class: 39 Fishing tours; adventure tours

2. Planet 10 Spirits LLC (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the EFFEN trade mark on 28 April 2005. Thereafter the parties served and filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 2 September 2009. The applicant was represented by Chris Round of Middeltons. The opponent did not appear at the Hearing.

   Grounds of Opposition

4. The Notice nominated the grounds of opposition under s 42, 43, 58, 59 and 60 of the Trade Marks Act 1995 (‘the Act’). However, the opponent’s evidence only goes towards those grounds under sections 42(b), 58, 59 and 60. Therefore, I say now that the ground of opposition under s 43 has not been made out. The opposed application was filed before significant amendment to s 60, which came into force on 23 October 2007, and thus the pre-amendment version of the section applies[1].

   [1] Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 40; Health World Limited v Shin-Sun

   Australia Pty Ltd [2008] FCA 100

5. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[2] His findings upon that issue, arrived at after a consideration of the relevant authorities, have recently been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[3].

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599;

   [3] [2009] FCA 891, para 22-27

   Evidence

6. The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Odette Margarett Gourley	Partner at Minter Ellison	27 October 2006	OMG-1
Evidence in Answer
Shane Downing	Branch Manager at the Bendigo Bank in Traralgon	5 December 2007	A
Ross Clavarino	Co-Director of Kirway Group of Companies	5 December 2007	A
Bruno Macri	Corporate lawyer at GM Holden Ltd	5 December 2007	-
Anthony Brooke Watson	Partner at Middletons	6 December 2007	A
Ryan Glenn Leslie	Director of Effen Holdings Pty Ltd	6 December 2007	A to Z and AA to WW

Evidence in Support

1. The evidence in support (“the Gourley declaration”) states that the opponent, which is USA based, was founded by Barton Brands Ltd and jstar Brands LLC sometime in 2004. The opponent sells spirits in the USA and other countries, although, it is unclear in which countries other than the USA the opponent has sold its EFFEN vodka. It does appear that the opponent’s EFFEN vodka is now available in Australia. The figures provided by the opponent relating to the quantity of EFFEN vodka sold during 2004, 2005 and 2006 appear to refer to world-wide sales.

2. The opponent asserts they are the current applicant/owner of the United States Trade Mark Application/Registrations for EFFEN RASBERRY (filed 18 August 2006), EFFEN (filed 18 November 2002), EFFEN device (filed 18 November 2002) and EFFEN BLACK CHERRY (filed 10 February 2003). On 21 January 2005, the opponent filed a trade mark application no. 1038686 in Australia for the word EFFEN. The goods specified in its trade mark application are ‘vodka’, in class 33.

3. The opponent’s evidence demonstrates that it uses its EFFEN trade mark on the vodka that it imports from Northern Holland. This EFFEN vodka is sold through a range of distributors and outlets such as liquor stores, select supermarkets and chemist stores throughout the USA. Ms Gourley, the opponent’s Australian lawyer, states that the opponent’s EFFEN vodka is also sold through a number of bars, restaurants and nightclubs in the USA.

4. The opponent advises that it has advertised its EFFEN vodka through the sponsorship of events such as the Rolling Stones tour, Rolling Stones VIP Lounge, Indianapolis 500 autorace and Virgin Megastores. The opponent also states that its EFFEN vodka was included in the ‘Everyone Wins at the Oscars®’ nominee gift bags in 2005 and 2006. However, there is very limited information as to advertising material in the opponent’s evidence that supports these claims. Nor are there any figures relating to advertising expenditure.

5. The Gourley[4] declaration also provides some information concerning the applicant and the applicant’s seemingly limited business activities. The opponent has maintained that the lack of significant business activity on the applicant’s part means that the applicant has no intention of using the EFFEN trade mark on all the goods and services contained in its specification.

   Evidence in Answer

   [4] Exhibit 1 of the Gourley declaration has been subdivided into a number of different numbered ‘tabs’ which I will refer to as ‘Tab 1, 2, 3, etc.’ for ease of readability of this decision.

6. Mr Leslie, in his declaration, asserts that the idea or concept of the EFFEN trade mark occurred to him in 1995. On 18 December 1999 he filed trade mark application no. 817962 for the word EFFEN for ‘hand tools and implements’ in class 8. This trade mark was accepted for registration and remains registered to date.

7. In or about January 2003 he joined a group called the Little River Investment Group (“LRIG”) which was an unregistered group of friends and acquaintances interested in investigating and developing investment opportunities. A Memorandum of Understanding was developed and signed by the group members on 10 January 2003. The members of LRIG discussed the prospects of their various proposals before they agreed to disband on 26 April 2003 to pursue their individual projects. These documents (including the MOU) are contained in exhibits C and D of the Statutory Declaration of Ryan Leslie (“the Leslie Declaration”).

8. Following the disbanding of LRIG, he continued to develop his business ideas surrounding his EFFEN trade mark. In September 2003 the applicant contacted Phillip Milbourne, the Small Business Development Officer (Gippsland Region) at Regional Development Victoria, to arrange an appointment with the Small Business Counseling Service (exhibit E of the Leslie declaration). He was referred to John Admans, a business counselor, who provided him with occasional business advice from 2003 through to 2005.

9. On 9 October 2003 the applicant contacted Bruno Macri [formally of Middletons solicitors] to discuss the types of products and services for which he wanted to register his EFFEN trade mark. On 3 February 2004 the applicant commissioned Sharon Harrup Design to design a graphic for the EFFEN trade mark before he advised Middletons in May 2004 to draft the class specifications for the EFFEN trade mark. On 3 June 2004 the applicant filed trade mark application no. 1004895 for the word EFFEN covering a range of goods and services across 12 classes.

10. On 25 August 2005, Effen Enterprises Pty Ltd was registered as a company with Ryan Leslie as the sole Director. Mr Leslie subsequently assigned the opposed trade mark application to Effen Enterprises Pty Ltd who in turn assigned it to Effen Holdings Pty Ltd in 2008. For ease of reference throughout my decision I will be referring to these entities individually and collectively as ‘the applicant’ unless it is necessary to be specific.

11. Since filing the opposed application, the applicant has continued to develop its business interests in its EFFEN trade mark (exhibits N, R, S, U, V, X, Y and Z of the Leslie declaration). From October 2005 to January 2006 the applicant procured polo shirts from Mikomi Promotions (‘Mikomi’). These shirts which had the EFFEN trade mark applied to them were sold on eBay from February 2006 until May 2006. On 12 July 2007 the applicant also approached Shane Downing, the Manager of the Traralgon branch of the Bendigo Bank, regarding a plan to launch alcoholic beverages under the EFFEN trade mark in late 2007 and to discuss the financing options available for putting his plan into action.

12. The applicant states that it intends to use its trade mark on all the goods and services contained in its specification.

    Discussion

    Ownership – section 58

13. Section 58 of the Act provides:

    Applicant not owner of trade mark

    58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:  For applicant see section 6.

14. Ownership of a trade mark may arise in two different ways – at statute by the filing of an application to register that trade mark[5] on particular goods or services[6], or at common-law by the use of that trade mark on the particular goods or services.  The owner of the trade mark is the person who first uses it, or first files the application, whichever is the earlier.

    [5] ‘the same kind of thing’ Re Hicks’ Trade Mark (1897) 22 VLR 636 at 639-40

    [6] Identical or substantially identical trade marks: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

15. The applicant’s trade mark has a priority date of 3 June 2004 and has been made in respect of goods and services in classes 6, 7, 8, 11, 16, 18, 21, 25, 32, 33, 35 and 39. The opponent’s trade mark is for the word “effen”. The opponent’s EFFEN trade mark is identical to the applicant’s “effen” trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1963) 109 CLR 407 at 414. The fact that the opponent’s trade mark is depicted in capital letters and the applicant’s trade mark is not capitalised does not alter the overall identity of the trade marks. They are substantially identical trade marks and this has not been disputed by the parties.

16. The opponent has also demonstrated that its EFFEN trade mark is used on vodka which is encompassed by the applicant’s claim of alcoholic beverages in class 33. Consequently, in order to establish the last requirement of s. 58 ground, it is up to the opponent to demonstrate that it had used its substantially identical EFFEN trade mark in Australia before the earlier of either the 3 June 2004 being the priority date of the opposed trade mark application or any actual use of the trade mark by the applicant in Australia. For the purposes of demonstrating ownership the first use need only be a small amount[7].

    [7] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, 600 (Jacobs J).

17. The Gourley declaration is surprisingly quiet on when the opponent first used its EFFEN trade mark on vodka in Australia. The opponent has stated that it was founded in 2004 but has provided no specific date in its evidence. It is unclear if the opponent even existed on 3 June 2004. The opponent has not provided any figures specific to Australian sales nor any purchase receipts which demonstrate a sale of the opponent’s EFFEN vodka in Australia.

18. Similarly, the opponent’s advertising materials located under tabs 2 and 3 of exhibit OMG-1 of the Gourley declaration are mostly undated  (or of such poor quality that no date can be distinguished), ambiguously dated 2004 or post-date the 3 June 2004. The majority of these advertisements do not appear to be directed towards the Australian market.

19. The solicitor for the applicant, Chris Round, pointed out that there is nothing in the opponent’s evidence which conclusively establishes that the opponent used its EFFEN trade mark in Australia prior to the 3 June 2004. I agree with Mr Round. The opponent’s evidence demonstrates a propensity towards approximations and ambiguity in regards to specific dates, sales figures and expenditure in Australia which has made it impossible for me to be satisfied there had been a single sale or offer for sale of its EFFEN vodka within Australia before 3 June 2004.

20. The establishing of common law rights is a serious matter, since it goes to the very heart of the proceedings. Without more detailed or conclusive evidence from the opponent I cannot be satisfied that the opponent conducted any trade in Australia under its EFFEN trade mark before the 3 June 2004. Therefore, the ground of opposition under s. 58 has not been established.

    Intention of use - Section 59

21. S 59 of the Act reads as follows:

    59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a) to use, or authorise the use of, the trade mark in Australia; or
    (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    Note:  For applicant see section 6.

22. In Americana International Limited v Suyen Corporation[8] the Registrar's delegate summarised a number of principles from case law under s 59. Those principles which are relevant in the circumstances of this case are:

    ·The act of filing of a trade mark application is prima facie evidence of an intention to use the mark.[9]

    ·Section 59 refers to a continuing or current intention to use the trade mark.[10]

    ·The onus is on the opponent to establish a prima facie case of lack of intention to use.  If such a case is established, the onus reverts to the applicant or holder to refute the opponent's claims.[11]

    ·An inference of a lack of intention to use can be drawn.[12]

    [8] (2008) 75 IPR 596.

    [9] Aston v Harlee [1960] HCA 47; (1960) 103 CLR 391

    [10] Sapient Australia Pty Ltd and Sapient Corporation v SAP AG [2002] 55 IPR 68.

    [11] Health World v Shin-Sun

    [12]Sapient Australia Pty Ltd and Sapient Corporation v SAP AG

23. Under s. 59 the onus is on the opponent to make its case under s. 59, as for any other ground of opposition. Like proof in any other matter under civil or administrative law the intentions or lack thereof of an applicant must be assessed on the balance of probabilities and the onus of proof can shift[13]. Under s. 59, however, the opponent does not need to prove its case, it is required only to bring in material sufficient to shift the onus from itself onto the shoulders of the applicant[14]. The mere nomination of the s. 59 ground cannot shift the onus[15].

    [13] Pfizer Products Inc v Karam (2006) 70 IPR 599 at [26] per Gyles J; Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd (2004) 61 IPR 130 at [12]-[13]

    [14] Estex Clothing Manufactures Pty Ltd v. Ellis and Goldstein Ltd [1966] HCA 81; (1967) 116 CLR 254; Pfizer Products Inc v Karam supra ; Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd supra

    [15] Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430

24. In the current matter, the applicant was put on notice prior to the hearing date that the s. 59 ground was to be relied upon by the opponent. The main thrust of the opponent’s arguments surrounding this ground of opposition focus on:

    ·    the number of goods and services the applicant has claimed across the 12 classes in its application;

    ·    the applicant’s limited business activity; and

    ·    the applicant’s lack of substantial response to the opponent’s correspondence regarding the preparation of an un-necessary statement of agreed facts for these trade mark opposition proceedings.

25. The opponent’s submissions rely on the applicant’s apparently limited business activity and the broad specification of goods and services claimed by the applicant across 12 classes. The Gourley declaration outlines the investigations she conducted via the internet which involved a “Google®” search on the term EFFEN and visits to the applicant’s website: .

26. Ms Gourley asserts that the only references to the applicant which could be found on the internet were in relation to the sale of T-shirts on eBay®. Tab 9 of exhibit OMG-1 in the Gourley declaration contains a print out of the applicant’s webpage from April 2006. Ms Gourley advises that when the applicant’s webpage was reviewed in October 2006 it remained unchanged (Tab 10 of exhibit OMG-1). Ms Gourley goes on to state that additional searches completed at this time also failed to locate any more EFFEN branded items being offered for sale by the applicant and that the applicant’s EFFEN t-shirts were no longer for sale on eBay®. The opponent argues the results of these investigations demonstrate that the applicant did not use, nor did it have any intention of use the EFFEN trade mark for all of the goods and services in its specification.

1. The opponent’s investigations may indeed have shown that the applicant has not yet commenced use of its trade mark in Australia in relation to the all the goods and services specified in its application. However, the opponent has fallen short of making a persuasive case for the applicant’s lack of either an intention to use at the time of filing, or of a genuine intention to use the trade mark in the future.

2. I am satisfied there may be any number of reasons why the applicant would not have used its trade mark on all the goods and services claimed in its specification and why its business has progressed very slowly with limited growth. None of these situations are conclusive or even slight evidence of a lack of intention to use on the applicant’s part. I am not prepared to accept that Ms Gourley’s inconclusive research substantiates the opponent’s claim that the applicant has no intention of using its EFFEN trade mark on all its claimed goods and services in Australia. I do not accept that this evidence has been sufficient to shift the onus onto the applicant.

3. The fact that, at this time, the applicant has not taken steps to sell all the goods and services listed in its application is not unprecedented. It is not uncommon for business plans involving a trade mark to be put on hold, once an opposition matter is afoot. In Paintmaster Products v Lewis Berger & Sons (1925) 25 AOJP 1915, the Registrar observed that an applicant might properly elect to delay use pending the outcome of the application for registration. The adoption of this approach is usually to ensure that trade mark rights are assured before time and money is expended in the promotion of that mark.

4. In Intel Corporation v Magnatex International Pty Ltd (1998) 41 IPR 406, Hearing Officer Homann said:

   “It is not appropriate in opposition proceedings for the registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant’s specification and the lodgement of the application and the applicant’s statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use. The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods.”

5. It is clear from the applicant’s evidence that a lot of careful consideration was put into determining which goods and services the applicant would seek to register its trade mark for. This process and the discussions the applicant had with its legal representative are well documented in the Leslie declaration and exhibit A accompanying the statutory declaration of Bruno Macri. The applicant’s evidence also demonstrated that EFFEN branded t-shirts were available for sale on eBay® for a limited time.

6. I have not drawn any adverse inferences from the fact that the applicant has met with limited success and growth in the sale of goods and services under its EFFEN trade mark. The fact remains that the applicant has continued to pursue and develop his business under the EFFEN trade mark.

7. The opponent has included in its evidence the correspondence which took place between the parties regarding the preparation of an unnecessary statement of agreed facts for these proceedings. Ms Gourley has stated that the applicant’s unwillingness to participate in this process by providing clarification and confirmation of the facts put to it by the opponent is behavior from which I may draw adverse inferences. However, I decline to make any such adverse inferences from the applicant’s confessed ‘limited legal budget’ and decision not to pay its legal representatives to correspond with the opponent on this matter of agreed facts (tab 15 of exhibit OMG-1 of the Gourley declaration).

8. The applicant’s representatives were correct in pointing out in this correspondence that the applicant was under no obligation to participate in the preparation of a statement of agreed facts for the Trade Marks Office hearing. Instead, I note the applicant’s representatives advised the opponent that the applicant would file and serve its evidence in answer once the opponent had filed and served its evidence in support. This is the usual and expected process in trade mark opposition proceedings.

9. It is difficult to see what the opponent hoped to establish through the inclusion of these documents in its evidence. If anything, the correspondence between the parties demonstrates that the applicant had the intention of defending its trade mark application in these opposition proceedings to the best of its ability and limited budget. The applicant’s decision not to accede to the opponent’s request is not sufficient for me to infer that the applicant lacks the intention to use its trade mark in the future on the goods and services it has claimed.

10. The applicant’s evidence has established that it has been using, and does intend to use its EFFEN trade mark on a number of different goods. Without more conclusive evidence from the opponent, there is no reason to question if the applicant had an intention to use its EFFEN trade mark on the goods and services claimed in its specification. The opponent’s evidence is not sufficient to shift the onus onto the applicant. Therefore, the ground of opposition under s.59 has not been established.

    Reputation - section 60

11. At the relevant time s 60 read:

    The registration of a trade mark in respect of particular goods or services may

    be opposed on the ground that:

    (a)       it is substantially identical with, or deceptively similar to, a

    trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

12. In order to establish this ground it is for the opponent to point to a trade mark, whether registered or in common law use, for which the opposed trade mark is:

    • either substantially identical or deceptively similar and

    ·which, before the priority date, had acquired a reputation in Australia such that

    ·use of the opposed trade mark would lead to deception or confusion.

13. The application was filed on 3 June 2004, prior to the amendment of s 60 which took effect from 23 October 2006. The requirements of the section prior to the amendment are that the trade marks under consideration be substantially identical or deceptively similar. Therefore, it needs to be considered whether the trade marks in question are either “substantially identical” or “deceptively similar” to each other, as required by s. 60. The relevant principles are often quoted, familiar and well-established and it is neither necessary nor appropriate to restate them all here[16]. This is a matter that has already been resolved in the discussion in respect of s 58 and my finding that the trade marks are substantially identical.

    [16] Those principles are enunciated in the following authorities: In the matter of an Application by the Pianotist Company Limited for the Registration of a Trade Mark (1906) 23 RPC 774 at 777 (per Justice Parker); Australian Woollen Mills Limited v F.S. Walton & Co.Limited (1937) 58 CLR 641 at 658 (per Justices Dixon and McTiernan); Application by Smith Hayden & Co.Limited (1946) 63 RPC 97 at 101 (per Justice Evershed); Cooper Engineering Co. Pty. Limited v Sigmumd Pumps Limited (1952) 86 CLR 536 at 538; Southern Cross Refrigerating Co. v Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 594-5 and 607; Berlei Hestia Industries Limited v The Bali Company Inc. (1973) 129 CLR 353; and Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson).

14. The remaining matter to be determined is whether the opponent is able to establish that it had a reputation in Australia at the time these applications were filed, and that the reputation was of such stature that fair use of the applicant’s trade mark would cause deception and confusion.

15. To this end, much of the evidence filed by the opponent is of limited assistance in determining the extent of the reputation of the opponent’s EFFEN trade mark in Australia at the relevant date. The Gourley declaration asserts that a considerable and growing number of cases of EFFEN branded vodka have been sold since 2004. These figures appear to relate to world-wide sales and there is nothing specific in the evidence which indicates if any of these cases of vodka have in fact been sold to consumers in the Australian marketplace.

16. In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J commented that:

    “[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.”

17. While the opponent has put forward evidence which demonstrates that they have established a growing reputation for EFFEN vodka in the USA, I have no conclusive evidence before me which indicates that the opponent had any reputation in its EFFEN vodka in Australia or anywhere else prior to 3 June 2004. The opponent has provided evidence of advertisements, presumably from magazines, which feature its EFFEN trade mark on vodka bottles. There is no indication of where in Australia these advertisements were distributed, or indeed if the advertisements actually reached the Australian marketplace.

18. While there is some limited evidence which suggests that the opponent’s EFFEN vodka is now available for purchase in Australia there is no satisfactory proof of when this first occurred. In particular, I note one article contained under tab 8 of exhibit OMG-1 is from the Australian Winestate Magazine and was printed off the website in October 2006. This article states that the Hardy Wine Company launched the USA’s fastest growing luxury vodka in Australia but it is unclear exactly when this article was published or when the EFFEN vodka was launched in Australia.

19. I note that the opponent avers it has also advertised its EFFEN vodka through the sponsorship of events such as the Rolling Stones tour, Rolling Stones VIP Lounge, Indianapolis 500 autorace and Virgin Megastores. The opponent also states that its EFFEN vodka was included in the ‘Everyone Wins at the Oscars®’ nominee gift bags in 2005 and 2006. Tab 2 of exhibit OMG-1 of the Gourley declaration contains some pictures of its EFFEN vodka with the words “Rolling Stone VIP Experience” and the well-known Rolling Stones lip and tongue artwork printed on the packaging. However, these pictures do not indicate which of the Rolling Stones tours was sponsored by the opponent or if the tour included Australia. Further, the opponent’s EFFEN vodka inclusion in the ‘Everyone Wins at the Oscars®’ nominee gift bags and sponsorship of the Indianapolis 500 autorace all post date 3 June 2004.

20. As a result, this evidence does little to assist in the determination of whether the mark has become associated in the minds of a substantial number of the Australian public with the relevant goods such that they are likely to become confused when faced with the applicant’s EFFEN branded goods or services. In an opposition proceeding it is for the opponent to establish its case – assertions of Australian reputation would need supporting evidence that it had penetrated the consciousness of prospective Australian purchasers in some real manner before I would be willing to accept the proposition.

21. The opponent has not established the required level of reputation – its evidence is simply not sufficient for the purpose. Whilst there is sufficient information to demonstrate a minimal amount of use in Australia after 3 June 2006, that does not amount to the kind of reputation envisaged by s 60, to be extant at the relevant date. Therefore, this ground of opposition is not established.

    Contrary to Law - Section 42(b)

22. The ground based on s 42(b) is indicated in the Notice as “The use of the [opposed trade mark] would be contrary to the law”, echoing the words of s 42(b) which simply state “An application for the registration of a trade mark must be rejected if its use would be contrary to law.”

23. Ms Gourley, through the opponent’s evidence, has argued that use of the opposed trade mark would be contrary to law because it would offend against ss 52 and 53 of the Trade Practices Act 1974 (“the TPA”). These sections deal respectively with misleading or deceptive conduct and with the making of false or misleading representations.

24. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct under s 52 of the TPA than is the case with trade marks likely to deceive or cause confusion under ss 44 or 60 of the TradeMarks Act 1995.  In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd[17] Gibbs CJ noted with respect to s.52 of the TPA (at 688):

    In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern CrossRefrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

    [17](1982) 1A IPR 684.

25. As I have found that the use of the opposed trade mark is not, at a minimum, likely to “confuse”, it follows that use is not, on the stricter test posited by the TPA, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of s. 53 of the TPA. I thus find that the opponent has not established its ground under s. 42.

26. The opponent has not established its opposition under s 42(b).

    Decision

27. Section 55 of the Act provides:

    Decision

    55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or
    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:  For limitations see section 6.

28. The opponent has not established any of the grounds of opposition.

29. The trade mark application may proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal   before that time, I direct that registration of the trade mark shall not occur until the appeal has been discontinued or registration is ordered by the courts.

    Costs

30. Both parties made a claim for costs. As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    8 December 2009