Re: Opposition by Jack Daniel's Properties, Inc to registration of trade mark application number 1773403 (class 33) - Jack n Jimmy in the name of D.J. Twins Pty Ltd
[2020] ATMO 32
•28 February 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jack Daniel’s Properties, Inc to registration of trade mark application number 1773403 (class 33) – Jack n Jimmy - in the name of D.J. Twins Pty Ltd
Delegate: | Katrina Brown |
Representation: | Opponent: Khajaque Kortian of Spruson & Ferguson Applicant: Not represented |
Decision: | 2020 ATMO 32 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under ss 42(b), 44, 60 and 62A – s 60 established – registration refused. |
Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Jack Daniel’s Properties, Inc (‘the Opponent’) to registration of the following trade mark:
Trade Mark No: | 1773403 |
Trade Mark: | Jack n Jimmy (‘the Trade Mark’) |
Applicant: | D.J. Twins Pty Ltd (‘the Applicant’) |
Filing Date: | 27 May 2016 |
Specification: | Class 33: Alcoholic beverages (except beer); Pre-mixed alcoholic beverages, other than beer-based; Carbonated beverages (alcoholic, except beers) (‘the Applicant’s Goods’) |
The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 13 October 2016.
The Opponent filed a Notice of Intention to Oppose on 12 December 2016 followed by a Statement of Grounds and Particulars (‘SGP’) on 11 January 2017.
The Applicant filed a Notice of Intention to Defend on 20 February 2017.
The Opponent filed the following declarations as evidence in support of the opposition:
Declaration of David Gooder (Managing Director of the Opponent) made on 24 May 2017 with Exhibits 1 to 31 (‘Gooder Declaration’); and
Declaration of Khajaque Kortian (Principal of Spruson & Ferguson) made on 29 May 2017 with Exhibits KK-1 to KK-4 (‘Kortian Declaration’).
The Applicant did not file evidence in answer.
The matter came before me, a delegate of the Registrar of Trade Marks, for hearing in Canberra on 30 April 2019. The Opponent was represented by Khajaque Kortian of Spruson & Ferguson. The Applicant was not represented, nor did it file submissions prior to the hearing.
The Opponent did not file its written submissions (‘Opponent’s Submissions’) until the morning of the hearing. After the hearing I forwarded the Opponent’s Submissions to the Applicant asking for any response in writing within 7 days. The Applicant responded that it was ‘not proceeding with the case’. The Applicant was informed that the trade mark application would need to be formally withdrawn otherwise the matter would proceed to a decision. Despite being given a considerable length of time, the Applicant has not withdrawn the trade mark application.
I will now decide the opposition.
Ground of opposition, onus and relevant date
In the SGP, the Opponent nominated grounds under ss 42(b), 44, 60 and s 62A.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] In the event that the Opponent establishes one of the grounds in relation to all of the Applicant’s Goods, there is no requirement for me to consider the other grounds of opposition.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133].
The date at which the rights of the parties are to be determined is 27 May 2016 (‘the Relevant Date’) being both the filing and priority date of the Trade Mark.
Section 60
Section 60 of the Act provides:
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.
To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent relies on the following trade marks as the basis for this ground of opposition:
| JACK DANIEL’S | THE JACK AWARDS |
| GENTLEMAN JACK | CITRUS JACK |
| JACK LIVES HERE | JACK PACK |
| JACK & LEMONADE | JACK & COLA |
Reputation
For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[3] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[4] number of people or potential consumers. The evaluation of what amounts to significant or substantial ‘depends on the nature of the goods that are the subject of the application in question and the class of consumers of those goods’[5]. In this matter, the applicable class of consumers is prospective purchasers of alcoholic beverages namely consumers over the age of 18.
[3] McCormick & Company Inc v McCormick [2000] FCA 1335 [81].
[4] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170.
[5] Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39 [80].
Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[6] In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[7]
[6] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].
[7] [2019] FCA 923 [83].
Turning to the reputation demonstrated in the evidence, it is deposed in the Gooder Declaration that the Opponent has sold whiskey under the Jack Daniel’s brand in Australia since at least October 1969. As such the Opponent claims approximately 47 years of use in Australia before the Relevant Date.
In Australia Jack Daniel’s whiskey has been sold in liquor stores, grocery stores, airlines, duty-free stores, bars, restaurants and other premises licensed to sell alcohol. The Opponent declares that since 2012[8] it has sold in excess of 650,000,000 USD of Jack Daniel’s black label whiskey in Australia. By any standard this figure is extremely substantial.
[8] The Gooder Declaration was made in May 2017 and as such I take the declarant’s use of ‘since 2012’ to mean from 2012 to 2017.
It is also declared in the Gooder Declaration that whiskey bearing the Jack Daniel’s brand has been the subject of substantial marketing and promotional campaigns including print advertising, point-of-purchase materials, billboards, event sponsorship, and licensing for use on non-beverage products such as caps, clothing, sauces and coffee. The Opponent has also provided a list of 148 motion pictures and television shows which contained its Jack Daniel’s whiskey. This product placement was in well-known motion pictures such as A Few Good Men, Almost Famous, Jerry Maguire, Casino, Raiders of the Lost Ark and popular television shows such as The Sopranos and Third Rock from the Sun. The value of this type of indirect advertising has been acknowledged by the courts as establishing reputation ‘as well as, if not better than, direct advertising’.[9]
[9] Hansen Beverages Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 [64].
In respect of the esteem component, the evidence demonstrates that the Opponent’s branding strategy highlights the heritage and provenance of the Jack Daniel’s brand with considerable focus on the founding distiller, Mr. Jasper Newton ‘Jack’ Daniel and Lynchburg, Tennessee. The image and values projected by the Jack Daniel’s brand are inextricably bound up with the distinctive character of Jack and the values and virtues associated with small town America: traditional artisanal production by honest, hardworking and unassuming everyday people.
The esteem in which the Jack Daniel’s brand is held is also reflected in its high ranking in various surveys and lists including:
5th in the Top 100 Premium Spirits Brands Worldwide in 2007 (Exhibit 14 to Gooder Declaration).
17th in the Top 100 Spirits Brands Worldwide in 2007 (Exhibit 14 to Gooder Declaration).
1st in the World’s Top 10 Bourbon Brands (Impact Magazine) in 2008 (Exhibit 16 to the Gooder Declaration).
76th in the Superbrands List in 2009/2010 (Exhibit 11 to Gooder Declaration).
86th in the Top 100 Global Brands (Interbrand Magazine) in 2013 (Exhibit 10 to Gooder Declaration).
4th in The Power 100 (Intangible Business) in 2014 (Exhibit 13 to Gooder Declaration).
4th in the World’s Top 100 Premium Spirit Brands in 2014 and 2015 (Exhibits 29 and 30 to the Gooder Declaration).
As is often the case, the Opponent’s evidence, and its submissions in respect of s 60, do not differentiate between its many trade marks. This approach can be problematic because each of the trade marks is treated as a separate mark for the purposes of s 60.[10] However, in this instance I am satisfied that the evidence is sufficient to demonstrate a strong reputation in the following trade marks (‘the Opponent’s Trade Marks’) in respect of whiskey:
JACK DANIEL’S
[10] Qantas Airways Limited v Edwards [2016] FCA 729 [160].
In reaching this conclusion I have taken particular note of the considerable length of time that goods bearing the Opponent’s Trade Marks have been sold in Australia before the Relevant Date, the large number of goods sold, the diverse range of outlets throughout Australia in which those goods are sold, the substantial advertising and promotional activity in both print and digital media including in well-known motion pictures and television series, the esteem and significant brand awareness evidenced by the high ranking in various lists and surveys, a taste of which is set out at [23] of this decision.
I now need to determine whether, in light of the strong reputation in the Opponent’s Trade Marks, use of the Trade Mark for the Applicant’s Goods would be likely to deceive or cause confusion.
Likely to deceive or cause confusion
The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[11]
[11] [1979] RPC 410, 423.
In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’.[12] Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[13] Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source.[14]
[12] [2013] FCAFC 153 [70].
[13] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105].
[14] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110, 113.
Section 60 of the Act does not require that the goods upon which the Opponent’s Trade Marks are used be of a specified standard of similarity with the Applicant’s Goods, nor is there a requirement that the trade marks are substantially identical or deceptively similar. However:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[15]
[15] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5 [39].
In the current matter, the Applicant’s Goods are the same or of a similar description to whiskey, the goods for which the Opponent’s Trade Marks have a reputation. I consider that the Applicant’s Goods will have the same trade channels and the same kind of customers as the goods sold under the Opponent’s Trade Marks.
Whilst the similarity between the trade marks may not rise to deceptive similarity, they both contain two names, the initial name in each being ‘Jack’. As discussed above, the marketing of the Opponent’s Trade Marks relies heavily upon the legend and lore associated with Mr. Jack Daniel, the first and founding distiller of Jack Daniel’s whiskey. The evidence demonstrates that the Opponent’s Trade Marks are consistently, if not always, used in conjunction with some reference to ‘Jack’. The distinctive character of Jack is an important aspect of the reputation of the Opponent’s Trade Marks.
Considering all of the above and the extent of the reputation in the Opponent’s Trade Marks, I am satisfied that there is a real and tangible danger that consumers would, at the very least, be caused to wonder as to the existence of some sort connection between goods bearing the Opponent’s Trade Marks and goods bearing the Trade Mark.
The s 60 ground has been established.
Decision
Section 55 of the Act relevantly provides:
(1) Unless subsection (3) applies to the proceedings, 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.
The Opponent has established the ground of opposition under s 60 of the Act. Accordingly, I refuse to register trade mark number 1773403.
Costs
The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.
Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
28 February 2020
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