Re: Opposition by Bacardi & Company Limited to registration of trade mark application number 1865411 (class 32) Royal Bombay Premium Lager in the name of Dickinson Distribution Group Pty Ltd

[2020] ATMO 117

TRADE MARKS ACT 1995

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

Re:Opposition by Bacardi & Company Limited to registration of trade mark application number 1865411 (class 32) - Royal Bombay Premium Lager - in the name of Dickinson Distribution Group Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: Written submissions Applicant: No appearance or written submissions
Decision:	2020 ATMO 117 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44 and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. The main issue to be decided in these proceedings is essentially whether ‘Royal Bombay Premium Lager’ may be registered as a trade mark in respect of beer and non-alcoholic beverages when prior marks exist for ‘Bombay Sapphire’ and ‘The Original Bombay Dry Gin’ in respect of the same or similar goods. I have decided that it can.

2. On 11 August 2017 (‘Relevant Date’) Dickinson Distribution Group Pty Ltd (‘Applicant’) filed an application seeking trade mark registration of Royal Bombay Premium Lager (‘Trade Mark’) in respect of the following goods:

   Class 32:Alcoholic beers; Non-alcoholic beers; Non-alcoholic beverages (except non-alcoholic beer); Beer; Bitter beer; Black beer; Dark Beer; Low alcohol beer; Lager; Alcohol-free beer; De-alcoholised beer; Home brew kit concentrate of hopped wort for making beer (‘Applicant’s Goods’)

3. The Trade Mark was accepted for possible registration and advertised for opposition purposes on 4 January 2018. Bacardi & Company Limited (‘Opponent’) answered the call, filing a notice of intention to oppose on 2 March 2018 and a statement of grounds and particulars on 29 March 2018. The Applicant, notified by this office of the opposition, filed notice of its intention to defend the application on 3 May 2018.

4. The Opponent filed evidence in support and the Applicant evidence in answer. Rather than take up the option of evidence in reply, on 11 September 2019 the Opponent requested a hearing. This was scheduled for 2 April 2020 and allocated to me for hearing and determination. The parties were given an opportunity to file written submissions or appear in person. The Applicant did neither and the Opponent filed written submissions on 19 March 2020.

Grounds and onus

1. The statement of grounds and particulars raises grounds of opposition under ss 42(b), 44 and 60.[1] The onus is on the Opponent[2] to show on the balance of probabilities that it has established one of those grounds of opposition. The rights of the parties are to be determined as they were at the Relevant Date.[3]

   [1] Except where otherwise specified, references to a section in these reasons are references to the Trade Marks Act 1995 (Cth).

   [2] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

1. Details of the evidence in support and answer are set out below:

   Evidence in support

   Declaration of Thomas Golda, Proxy Holder of the Opponent, made 9 August 2018 with exhibits 1 to 4

   Evidence in answer

   Declaration of Paul Dickinson, Director of the Applicant, made 20 November 2018 with annexures A to E

2. Mr Golda gives a brief history of the corporate ownership of the Bombay Sapphire brand of gin. He declares that this brand has been owned by the Opponent since 1997. Earlier history of Bombay Sapphire is also outlined, with Mr Golda asserting that it launched in 1987 and was introduced into the Australian market in 1990 or possibly slightly earlier. Sales and advertising expenditure are included. Both are substantial figures given the nature of the goods. Backing this up is market data which appears to show that this brand enjoys a healthy share of all gin sales in Australia.

3. Mr Golda gives the following account of the coining of Bombay Sapphire:

   The Bombay Sapphire brand originates from gin’s popularity in India during the British Raj and the sapphire in question is the Star of Bombay on display at the Smithsonian Institution.

4. Of central relevance are the prior registered trade marks and examples of their use by the Opponent. They are detailed in my discussion of the grounds that follows.

5. Mr Dickinson’s declaration is not particularly concerned with leading evidence of facts. Its focus is on pre-empting arguments that the Opponent might make based on the statement of grounds and particulars and evidence in support. Since this document effectively serves both as evidence and submissions for the Applicant, I address its arguments therein in my discussion below. The factual material that is introduced is largely incidental to the formulation of the Applicant’s counter-narrative. As such, I briefly summarise them under the ground of opposition Mr Dickinson was discussing.

6. Among the Applicant’s submissions on s 44, Mr Dickinson offers definitions of ‘royal’, ‘sapphire’ and ‘Bombay’ (the last being a former name of the Indian city of Mumbai), documents that suggest a connection between alcoholic beverages and the city of Bombay/Mumbai, and examples of other traders who use the word ‘Bombay’ in relation to gin and beer. In submissions relating to s 60, Mr Dickinson reads into evidence printouts from the internet relating to the history and use of the Opponent’s Bombay Sapphire branding. Finally, in relation to s 42(b) Mr Dickinson includes an image of the Trade Mark in use.

Discussion

Section 44

1. The aspects of this ground of opposition that may be applied to the present facts are:

   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)  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 …

   (ii)  …; 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…

2. The Opponent says that five of its registered trade marks form the basis for this ground of opposition. Each is set out in the table below:

Number	Priority Date	Specification	Representation
769605	6 August 1998	Class 33: Alcoholic beverages including wines, spirits and liqueurs
944944	25 February 2003	Class 33: Alcoholic beverages, including gin	BOMBAY SAPPHIRE
1179320	16 March 2007	Class 33: Alcoholic beverages (except beers)	BOMBAY SAPPHIRE
1184314	16 March 2007	Class 32: Non-alcoholic beverages, soft drinks, fruit beverage, syrups and other preparations for making beverages[4]	BOMBAY SAPPHIRE
1699290	1 April 2015	Class 33: Gin of the origin United Kingdom and beverages based on gin of the origin United Kingdom

[4] This mark is also registered in respect of quite dissimilar goods in classes 28, 30 and 34, and conceded as such by the Opponent. Those classes have been omitted from this extract for brevity.

1. All of these marks plainly meet two of the elements of s 44, in that they are registered Australian trade marks and all of their priority dates are earlier than the Relevant Date.

2. Turning to whether the goods are similar, in certain instances they are quite obviously the same, and for the remainder I find they are similar in the relevant sense. Starting with the latter, the broad claims to ‘Alcoholic beverages’ among the earlier of the Opponent’s registered marks would on their own terms encompass the Applicant’s various claims to alcohol-containing beers. I am prepared to accept for present purposes that the Opponent’s quite specific claims relating to gin in registration 1699290 are sufficiently ‘of the same description’ to the Applicant’s beer,[5] and the Applicant’s narrow claim to home brew kits is encompassed by the broad claim in registration 1184314 to ‘preparations for making beverages’. As for goods that are obviously the same, the Trade Mark and registration 1184314 each include claims to ‘Non-alcoholic beverages’ in near identical terms.

   [5] The Opponent’s submissions referred me to obiter dictum from E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, 408 [72] (Moore, Edmonds & Gilmour JJ) in support of this proposition. As such mine is a tentative finding reached only to drive forward the discussion, noting that examination practice remains that a specific claim for beer is not goods of the same description to a specific claim for spirits.

3. Given the prominence of the distinctive element SAPPHIRE in the first four of the Opponent’s marks and its absence from the Trade Mark there is no prospect of a finding of substantial identity.[6] Similarly, the ornate portrait of Queen Victoria and the words DRY GIN in registration 1699290 preclude a finding that it is substantially identical to the Trade Mark. Thus, this ground of opposition turns on whether any of the Opponent’s marks are deceptively similar to the Trade Mark.

   [6] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

4. Deceptive similarity is defined as a resemblance between two marks which is so near that their coexistence in the marketplace is likely to deceive or cause confusion.[7] In practice it is rarely necessary in opposition proceedings relating to s 44 to consider whether there is likelihood of deception, a term that involves ‘the creation of an incorrect belief or mental impression’,[8] as it is enough for an opponent to establish likelihood of confusion. For confusion to occur all that is required is mere wonderment in the minds of consumers as to, for example in this case, whether it might not be the case that the Applicant’s Goods offered in relation to the Trade Mark come from the Opponent.[9] The danger of confusion must be real and tangible, not a mere possibility.[10]

   [7] Trade Marks Act 1995 (Cth) s 10.

   [8] Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, 423 (Richardson J).

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 608 (Dixon CJ, McTeirnan, Webb, Fullagar and Taylor JJ).

   [10] Ibid, 595 (Kitto J).

5. The approach requires that an attempt ‘be made to estimate the effect or impression produced on the mind of potential customers by the [earlier trade mark] … 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.’[11] This analysis of effect or impression is necessary since the test relates to recollection—the marks are not to be looked at side by side.[12] As such, it is helpful to look into the idea of the marks,[13] their look and sound, as well as all surrounding circumstances including the nature of the goods to which they are applied and the customers who are likely to purchase those goods.[14]

   [11] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [12] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 415 (Windeyer J).

   [13] Jafferjee v Scarlett (1937) 57 CLR 115, 121 (Latham CJ).

   [14] Re Application by Pianotist Co Ltd (1906) 1A IPR 379, 380 (Parker J).

6. No specific submissions have been put by the Opponent regarding visual and aural similarity. Instead its submissions focus on two aspects of the comparison: the idea of the marks and the state of the register. I leave the latter to the end of this section and turn to the former now as it is helpful to discuss alongside the Applicant’s submissions which, in contrast, firmly focus on visual, aural and conceptual dissimilarities.

7. The Applicant lines up each of the words and other elements of the respective marks and notes their visual and aural differences, all of which are manifest. To put it another way, I find that the marks in comparison are quite distinct both in sound and look. But this is only the starting point in the analysis. The only element in common between any of the marks is ‘Bombay’, and the positioning of this common element is different in each case. The Opponent rightly points out that certain elements are less distinctive than others, and as such are less likely to be recalled as a reference to the source of the goods and more likely to the nature of the goods themselves. On the Opponent’s submission these include in the Trade Mark ‘Premium’ and ‘Lager’, and in registration 1699290 everything except the device, the word ‘Bombay’ and perhaps the ornate manner and order in which the word elements appear. The Opponent would also discount in the Trade Mark the word ‘Royal’ because it is an element in many other marks registered in respect of goods in classes 32 and 33. No authority for this suggested approach is given, and I doubt any exists. The question is not whether ‘Royal’ is also used in a variety of contexts and compound phrases across the register, but whether it can distinguish the goods. No submission on that specific point was made, and I consider that it can.

8. The principle of discounting descriptive or laudatory elements does not mean the present comparison is made as though the elements were not there at all, for that would be to impermissibly dissect the marks,[15] or to make many trade marks out of one composite mark.[16] The approach is to give due weight and so appropriately discount that type of material as the context would require.[17] For each of the three BOMBAY SAPPHIRE plain word marks and the BOMBAY SAPPHIRE device mark nothing in particular needs to be discounted. Registration 1699290, replete with descriptive matter, is subject to discounting in line with the Opponent’s submissions discussed above. However, I find that the Trade Mark consists of the essential features ‘Royal Bombay’ in that order and another pair of highly descriptive words ‘Premium Lager’. As such even with this various discounting applied, I consider the Trade Mark to be aurally or visually distinct from each of the Opponent’s marks.

   [15] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [16] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, 24 [100] (Moore, Sackville and Emmett JJ).

   [17] Pink Energy Beverages Pty Ltd v Mr. Pink Collections LLC (2016) 119 IPR 476, 481-2 [26]-[28] (Hearing Officer H Wilson).

9. With respect to the idea of the marks the Opponent says that the appearance of the portrait of Queen Victoria on its registrations 769605 and 1699290 are associated with the concept of ‘royalty’ and ‘royal’. This would bring registration 1699290 especially close conceptually to the idea of the Trade Mark. But the Opponent has not offered up anything to establish either way whether enough Australian consumers of these beverages would recognise a monarch that had ceased her reign some 116 years prior to the Relevant Date. This is remiss since a far simpler reading of the portrait is possible—it shows someone dressed and posed in an old fashion, suggesting a beverage that has been around for a time. That suggestion in the image is supported by the words ‘THE ORIGINAL’, not to mention the word ‘BOMBAY’ itself being an older name for the Indian city of Mumbai. Thus, the idea of this mark if it can be put in so few words is ‘Bombay’, a dry gin from London with some history. I would offer the same analysis of the portrait in registration 769605, though it is strictly unnecessary as the element SAPPHIRE radically shifts the meaning of the whole mark toward that of a gemstone originating from or otherwise connected to Bombay/Mumbai.

10. The idea of ‘Royal Bombay’ in the Trade Mark is imprecise yet indivisible. It is common practice to name buildings or places ‘Royal’, particularly when they have been visited or patronised by a monarch, and as such this mark conjures up the idea of one such royal place either in or consisting of the whole city of Bombay/Mumbai. As a whole then, the Trade Mark lends itself to a straightforward reading along the lines of royalty associated with an antiquated placename, then quality and type of beer. As such I find that the Trade Mark is conceptually distinct from each of the Opponent’s marks.

11. Turning to the state of the register, the Opponent submits that it is the only proprietor of marks containing or consisting of the word ‘Bombay’ registered with respect to goods in classes 32 and 33. This, it submits, gives rise to a likely impression in the minds of consumers of a ‘family of trade marks’.[18] There are two marks so described that were not listed in the table above. The earlier is registration 946996, a shape/colour trade mark of a transparent blue glass bottle in combination with the words BOMBAY SAPPHIRE. The other, registration 1933830, is from after the Relevant Date. It would be improper to bring the later mark into the present calculus and the shape/colour mark does not, for present purposes, set itself apart from the three plain word marks set out in the table above. Thus the Opponent’s family of marks at its highest consists of three members: BOMBAY SAPPHIRE plain words, BOMBAY SAPPHIRE with portrait device and THE ORIGINAL BOMBAY DRY GIN DISTILLED LONDON DRY GIN with portrait device.

    [18] Re Application by Beck Koller & Co (England) Ltd (1947) 64 RPC 76, 83 (Assistant Comptroller Chisolm).

12. The Opponent seeks to draw analogy with a recent finding of this office in which the delegate held that prior registrations to VITA ATMOMAT, VITA Easyshade, VITA Vacumat, VITA Adiva, VITA Suprinity, VITA VIONIC, VITABLOCS TriLuxe forte and VITA SMART.FIRE, all relating to goods in class 10 and all having the common element VITA were a family of trade marks and as such prevented registration of BELLA VITA in respect of similar goods.[19] The dissimilarity of that situation with the present case is readily apparent. The Opponent has not (at least as evidenced by its registered marks) sought to build an expectation in the minds of consumers that they should look to a variety of different marks including the word ‘Bombay’ for its goods in classes 32 and 33. The existence in the market of just THE ORIGINAL BOMBAY DRY GIN DISTILLED LONDON DRY GIN with device and BOMBAY SAPPHIRE with and without device is not suggestive of a family of marks. Unlike in the VITA case, an offering for sale of goods in classes 32 or 33 with some complex phrase that includes the word ‘Bombay’ is not in my estimation likely to result in wonderment as to whether this is yet another of the Opponent’s ‘Bombay’ offerings.

    [19] Vita Zahnfabrik H Rauter GmbH & Co KG v Kogon.com Holdings Pty Ltd [2019] ATMO 72 (Hearing Officer Thompson).

13. Having found that none of the compared marks are deceptively similar or substantially identical this ground of opposition is not established.

Section 60

1. This ground of opposition relies first on there having been at the Relevant Date another trade mark with a reputation in Australia. The Opponent’s statement of grounds and particulars nominates ‘the mark BOMBAY SAPPHIRE and related marks in relation to alcoholic beverages, including gin…’ The ‘related marks’ to which the Opponent refers are apparent in registrations 1699290 (THE ORIGINAL BOMBAY DRY GIN DISTILLED LONDON DRY GIN with device) and 1933830 (STAR OF BOMBAY with device). Neither of these related marks meet this reputation threshold that would warrant further consideration under this ground of opposition, for reasons I briefly outline below. BOMBAY SAPPHIRE, however, plainly did have the requisite reputation at the Relevant Date due to the Opponent’s evidence of sales and market share.[20]

   [20] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 129 [86] (Kenny J).

2. The Opponent has not provided separate data relating to sales or marketing of goods sold under its ‘The Original Bombay Dry Gin’ mark (registration 1699290), and unlike BOMBAY SAPPHIRE and STAR OF BOMBAY it does not show up anywhere on the market share tables provided by the Opponent. The only conclusion open to me is that this particular offering did not enjoy the level of reputation required by s 60(a). While STAR OF BOMBAY (registration 1933830) does make an appearance in those market share tables, the Opponent has not led evidence of when this product was introduced into the Australian market. I note that the priority date of registration 1933830 is after the Relevant Date, and since this is the only evidence going to this issue, I must conclude that it cannot have held the requisite reputation either.

1. As for BOMBAY SAPPHIRE, on balance it appears this offering enjoyed a strong reputation at the Relevant Date. The nature of that reputation, as the Applicant points out, is very much in relation to gin and, to a lesser extent, mixed drinks made with gin. The next question this ground of opposition asks is whether, as a result of that reputation in BOMBAY SAPPHIRE, use of the Trade Mark is likely to result in deception or confusion. Having already found that these marks are not deceptively similar, the difference in the goods I have just noted leads me further still from believing there is any tangible likelihood of confusion.

2. The Opponent’s submissions seek to draw analogies with three earlier decisions of this office. The first is Skyy Spirits LLC v Blue Sky Brewery Holdings Pty Ltd.[21] In that matter the comparison was between a mark that had been used as BLUE SKYY to a mark that contained the phrase BLUE SKY along with a number of descriptive words. Neither had some other distinguishing word such as ROYAL or SAPPHIRE, as is the case here. In the second, Pacific Brands Workwear Group Pty Ltd v JTC Import/Export Pty Ltd,[22] the words HARD and TOOLS were discounted from HARD YAKKA and YAKKA TOOLS respectively because they were descriptive of the goods. Here, neither ROYAL nor SAPPHIRE are particularly descriptive of beverages. Finally The HD Lee Company Inc v Wenxuan Li[23] in which use of LeeBss in relation to various eyeglasses in class 9 was found to be likely to cause confusion in light of a reputation in LEE in respect of clothing and fashion accessories. The reasoning in that decision considered that consumers would be likely to focus on the ‘Lee’ element since it was the ‘first of the two elements…and because it is not clear…how to pronounce “Bss”’. Unlike that matter, ROYAL and SAPPHIRE are readily pronounceable and BOMBAY is the first element in only one of the marks in comparison.

   [21] [2016] ATMO 21 (Hearing Officer Richards).

   [22] [2014] ATMO 43 (Hearing Officer Irgang).

   [23] [2019] ATMO 73 (Hearing Officer Smith).

3. This ground of opposition is not established.

Section 42(b)

1. This ground of opposition requires the Opponent to establish that use of the Trade Mark would be contrary to law. The law that the Opponent invokes is s 18 of the Australian Consumer Law,[24] relying on the reputation I have already discussed in relation to the s 60 ground of opposition. Where a ground of opposition under s 60 is unsuccessful, a claim under s 18 of the Australian Consumer Law in relation to the very same reputation as was raised under s 60 will also fail.[25] This ground of opposition cannot be established.

   [24] Competition and Consumer Act 2010 (Cth) sch 2.

   [25] See Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).

Decision and costs

1. The Opponent has failed to establish any of the nominated grounds of opposition. As such, trade mark application number 1865411 may proceed to registration one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal before that time, registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

2. The Opponent has asked that costs be awarded. It is usual for costs to follow the event. There being no reason to deviate from that here, I award costs against the Opponent.

Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
1 July 2020