Re: Opposition by Kinsel Pty Ltd to registration of trade mark application number 1824977(33) Cape Margaret & Device in the name of Bacchus Wine Merchants Pty Ltd

[2019] ATMO 97

TRADE MARKS ACT 1995

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

Re:Opposition by Kinsel Pty Ltd to registration of trade mark application number 1824977(33) – Cape Margaret & Device – in the name of Bacchus Wine Merchants Pty Ltd

Delegate:	Debrett Lyons
Representation:	Opponent: no appearance at hearing; written submissions from Spruson & Ferguson, Patent and Trade Mark Attorneys Applicant: Julian Cooke of Counsel, assisted by Angela McDonald of Counsel, instructed by Claire Derby of The IP House Lawyers Pty Ltd
Decision:	2019 ATMO 97 Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 60 and 62A of the Trade Marks Act 1995 considered – none established and opposition unsuccessful – trade mark may proceed to registration

Background

1. This matter concerns an opposition brought by Kinsel Pty Ltd (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark appearing below which is the subject of application 1824977 made by Bacchus Wine Merchants Pty Ltd (‘the Applicant’).

   (‘the Trade Mark’)

2. Application 1824977 was made on 9 February 2017 (‘the filing date’, or as the context requires, ‘the priority date’, those dates being the same in this case) and was examined by this Office as mandated by section 31 of the Act. Following examination, the application was advertised in the Australian Official Journal of Trade Marks as accepted for possible registration for the following Class 33 goods: “Beverages; alcoholic beverages (except beers); wine; beverages containing wine” (‘the Goods’).

3. Thereafter, the Opponent filed a Notice of Intention to Oppose the registration and later filed a Statement of Grounds and Particulars (‘the SGP’). The SGP was amended and it is the amended SGP that is considered here. It nominated grounds of opposition under sections 42(b), 43, 44, 58 and 60 of the Act. The Applicant then filed a Notice of Intention to Defend.

   4.     The parties each filed evidence after which they were invited to be heard in Canberra on 4 June 2019.  I was delegated by the Registrar to take the hearing and on 30 April 2019 sent directions to the parties to ensure the orderly conduct of the hearing.  In compliance with those directions the Opponent, represented by Spruson & Ferguson, Patent and Trade Mark Attorneys, provided written submissions and advised that it would not attend the hearing but would rely solely on those submissions.  The Applicant provided a written outline of its submissions and advised that it would attend the hearing by video-conference.  It did so and was represented by Julian Cooke of Counsel, assisted by Angela McDonald of Counsel, instructed by Claire Derby of The IP House Lawyers Pty Ltd.

   Grounds of Opposition, Onus and Standard of Proof

   5.     The onus of proof to establish at least one of the grounds listed in the SGP rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which grounds are to be determined is 9 February 2017, being the filing (and priority) date of the application.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

   Evidence

   6.     The parties filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’). The Opponent’s Evidence in Support of its opposition comprises a Statutory Declaration of Andrew David Watson made 13 March 2018.

   7.     The Applicant’s Evidence in Answer comprises the declarations of Joanne Newton made 18 June 2018 and Peter Forestal made 19 June 2018.

   8.     The Opponent’s Evidence in Reply comprises the declarations of Heather Watson made 8 October 2018 and Peter Bourne made 9 October 2018.

   Consideration

   Section 60

4. I have found it convenient to first consider the section 60 ground of opposition. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:For priority date see section 12.

5. Accordingly, the Opponent needs to establish to the satisfaction of the Registrar that:

   ·     the trade mark(s) upon which it relies had a reputation in Australia at the priority date; and

   ·     because of that reputation the use of the Trade Mark would deceive or cause confusion.

6. In McCormick & Co Inc v McCormick[4] (‘McCormick’) Kenny J asked:

   [4] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   12.     In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[5] Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)[6] was to be:

   [5] [2000] FCA 1587; (2000) 50 IPR 1.

   [6] The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

   ... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   (Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). ^[7]

   13.     Regarding the measurement of reputation, in McCormick Her Honour went on to state:[8]

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   14.     In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi (‘Pottle’) the Registrar’s delegate observed:[9]

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

   [7] [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

   [8] Op cit at [86].

   [9] [2012] ATMO 124 at [40].

7. In brief, the evidence shows that in 1973 the Opponent established the ‘Woodlands’ vineyard in Wilyabrup, Western Australia which since 1992 has produced and sold a Bordeaux styled wine by the name of “Margaret” made using Cabernet Sauvignon grapes

8. The Opponent is the owner of the Australian trade mark registrations detailed below:

Number	Priority date	Trade mark	Goods
1092287	22/12/2005	MARGARET	Class 33: Wines
1070782	19/8/2005	SWEET MARGARET[10]	Class 33: Alcoholic beverages (except beers)

[10] The Opponent was recorded as the registered owner of Trade Mark Registration No. 1070782 SWEET MARGARET on 1 March 2019, following an application to record the assignment of that mark on 14 February 2019. The Applicant records its objection to the late inclusion of this registration but notes that the Opponent does not rely on the registration in support of any of its grounds of opposition.

1. In addition, the Opponent asserts unregistered, common law trade mark rights in the logo shown below:

   (‘the Logo’)

2. In the SGP the Opponent asserts in relation to section 60 that:

   The Opponent is the owner of the trade mark “MARGARET” and has extensively used and acquired a reputation in that trade mark in Australia in connection with wines. The Opponent first used the “MARGARET” trade mark in Australia in connection with wines in 1992.

   As a result of the Opponent’s substantial use and reputation in its “MARGARET” trade mark, use of the Opposed Mark in respect of the goods the subject of the opposed application is likely to deceive or cause confusion.

3. In its written submissions, the Opponent states that for the purposes of section 60 it relies on use of the Logo and the trade mark of registration 1092287, MARGARET (‘the Registered Mark’).  It states that since 1992 hundreds of thousands of dollars have been generated from sales of wine under the Logo and the Registered Mark which, for many years, has been for sale to the Australian public from liquor retail chains including Dan Murphys, Vintage Cellars and BWS.

4. The Opponent’s submission is that it is proper to consider the way in which the Registered Mark has been used, in particular, it use in close association with the Logo (a design of a woody tree), which “enhances the likelihood that persons will be confused into believing that the opposed [Trade Mark] is a sub-brand or brand variant, within the MARGARET master branding.

5. In its own words, the Applicant:

   “… does not deny that the Opponent has enjoyed not insignificant sales of its Woodland’s ‘Margaret’ wines. However, the Applicant denies that the Opponent has established any reputation in the Registered Mark alone. The Registered Mark is used by the Opponent as a sub-brand of its WOODLANDS label. All of the evidence of use adduced by the Opponent includes use of the word MARGARET in conjunction with the WOODLANDS mark and the [Logo]. In that composite sign, the word “Margaret” is the least noticeable element and for the aforesaid reasons it is (by itself) incapable of distinguishing the Opponent’s wine from other traders’ wine. The Opponent’s use is best depicted on the product label for its Woodlands ‘Margaret’ wine:

   Further, when third parties, such as wine shows or wine retailers, refer to the Opponent’s wine, they invariably refer to it as “Woodlands’ ‘Margaret’”. The Opponent’s MARGARET Mark is never used by itself. Accordingly, there is no evidence before the Office on which it could conclude that the Registered Mark alone has any reputation in Australia.

   …

   The Opponent also relies on the unregistered [Logo]. This does not assist the Opponent. For the reasons expressed … above, the [Logo] is an element in the composite mark depicted above does not have any reputation as a trade mark in its own right.

   The only additional matter that the Opponent relies on in support of its s 60 ground is an alleged similarity between the Opposed Mark and the [Logo] when used in conjunction with the [Registered] Mark. However, this is the wrong comparison. The only potentially relevant comparison is between the Opposed Mark and the composite sign as depicted on the Opponent’s label.”

6. I am largely in agreement with the Applicant’s assessment of the evidence. To the extent that the Applicant concedes the evidence of “not insignificant sales of its Woodland’s ‘Margaret’ wines” I am in agreement that the name WOODLANDS enjoys a reputation in respect of wines in Australia that would trigger section 60(a) if anything turned on that finding. Here nothing does. I am in further agreement that there is no convincing trade mark use of the name “Margaret” independent of WOODLANDS and I do not find it has a separate reputation. I make the same finding in relation to the Logo.

7. Those findings are determinative of the section 60 ground which I find has not been established.

   Section 42

8. Subparagraph 42(b) of the Act relevantly provides:

   42Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   […]

   (b)its use would be contrary to law.

9. In its SGP the Opponent asserts that “[g]iven the Opponent’s substantial reputation in its “MARGARET” trade mark, use by the Applicant of the Opposed Mark would constitute passing off and/or misleading or deceptive conduct in breach of the Australian Consumer Law.”

10. The onus is on the Opponent to establish on the balance of probabilities that use of the Trade Mark would, rather than could, be contrary to law.[11] The Opponent has failed to establish the ground of opposition under section 60 of the Act and it is well recognised that the test for “misleading or deceptive conduct” under section 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for “deception or confusion” underhttp:// s 60.[12] Accordingly, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to section 18 of the ACL.

    [11] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [12] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

11. For the same reason, lack of reputation, there is nothing to support the assertion of passing off.

12. I find that the Opponent has not established the ground of opposition under section 42 of the Act.

    Section 62A

13. Section 62A of the Act states that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. In its SGP the Opponent asserts that “[f]or years the Opponent has made extensive use of its “MARAGRET” (sic) trade mark throughout Australia. Accordingly, the Applicant would have been aware at the time of filing the Opposed Mark of the Opponent’s prior rights in the Opponent’s mark (sic)”.

14. In connection with its section 60 written submissions, the Opponent states that “an inference arises that the Opposed Mark was adopted by the Applicant for the purpose of drawing an association with the Opponent’s reputation.”

15. Further, its section 62A submissions state:

    “For about 25 years before the priority date of the Opposed Mark, the Opponent had made extensive use of its [Registered Mark and its Logo] throughout Australia. Accordingly, the Applicant would have been aware at the time of filing of the Opponent’s prior rights in the [Registered Mark and the Logo]. The similarities between the [Registered Mark] (on its own or in close association with the Logo) and the Opposed Mark reinforces the idea that the Applicant adopted the Opposed Mark with the intention of causing consumers to associate that with the Opponent’s well-known [Registered Mark and  Logo]. Reasonable persons would not regard the filing of the opposed trade mark application to constitute acceptable commercial behaviour having regard to the matters known to the Applicant at the time of filing.”

16. In my assessment of the evidence as a whole there is nothing showing conduct on the part of the Applicant falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.[13]  Indeed, the only basis for this Opponent’s claim of bad faith is an alleged similarity between the Trade Mark and the Registered Mark, on its own or in association with the Logo.  I am in agreement with Mr Cooke’s submission that there is no evidence to suggest that the Registered Mark had any bearing on the Applicant’s choice of mark or its decision to register the Trade Mark[14], a conclusion underscored by my findings which follow immediately below in connection with the section 44 ground of opposition.

    [13] See, for example, DC Comics v Cheqout Pty Ltd (2013) FCR 194 at [62], per Bennett J.

    [14] Indeed, Newton [18]-[20] declares that the Applicant was unaware of the Registered Mark when it adopted the Trade Mark, a statement I had no cause to question.

17. I find that the section 62A ground of opposition has not been established.

    Section 44

18. Section 44 of the Act provides, inter alia:

    44Identical 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 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.

19. In its SGP the Opponent asserts that the Trade Mark is substantially identical or deceptively similar to the Registered Mark and covers goods that are similar or closely related to the goods covered by the Registered Mark.

20. Clearly the Goods of the Trade Mark are similar within meaning of section 14 of the Act to the goods of the Registered Mark, which also has an earlier priority date to the Trade Mark, both matters which the Applicant concedes. The remaining questions are whether the compared marks are substantially identical or deceptively similar and in that regard the Opponent stated in its written submissions that it does not press an argument that the marks are substantially identical.

21. As far as deceptive similarity is concerned, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J stated:

    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 television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him. … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.”

    […]

    The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances. [15]

    [15] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [13].

1. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd[16] referred to earlier authorities and summarised the principles to be applied in the assessment of deceptive similarity:

   [16] [2012] FCA 1022; 97 IPR 183.

   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[17] at [49]; Australian Woollen Mills[18] 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[19] 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[20] 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].[21]

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

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

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

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

   [21] [2012] FCA 1022, [37] – [46].

2. The Opponent’s submissions are that:

   “The word MARGARET retains its identity as a distinctive and memorable feature in the Opposed Mark, because:

   (a)  The word MARGARET is the common striking element between the respective trade marks and the only element in the Opponent’s mark.

   (b)  The word MARGARET remains prominent, both visually and aurally.

   (c)  The word MARGARET has substantially the same effect and impression in both the Opposed Mark and the prior mark.

   (d)  The additional features of the Opposed Mark (the additional word CAPE and the design element) does not materially alter the memorable effect and impression of the word MARGARET.

   (e)  While the word CAPE is not insignificant, it is a secondary feature that has only limited capacity to distinguish the trade origin. This is because this word is a common English word with a widely understood meaning. It is not unusual or arbitrary.

   (f)  The addition of the word CAPE does not dilute the prominence of the word MARGARET.

   Additionally, it is to be remembered that the community is accustomed to the use of sub-branding and sub-divisions or variants within brands. There is a high likelihood that some people seeing the Opposed Mark will wonder, or be left in doubt, about whether that mark represents a sub-brand of the same trade source that is signified by the Opponent’s MARGARET trade mark.

   This is the same kind of danger that was found to exist in Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227 at 230. In that case, the Court held that “someone who knew of a “Polo” product, upon seeing a similar product selling under the name “Polo Club”, would be quite likely to think it was a particular version of the product which could be described as the Club version”. The mark POLO CLUB was found deceptively similar to the prior registered POLO mark on this basis.

   The Opponent also refers to Re Application by Coles Myer Ltd (1993) 26 IPR 577 at 579, were Hearing Officer Thomson found BRATS deceptively similar to BONZA BRATS on the footing that there was a real risk the former would be considered a variant of the latter.

   Having in mind the doctrine of imperfect recollection, the chances of confusion between the marks are high. In other words, there is a “real and tangible danger” that the average Australian consumer seeing or hearing the competing marks may be confused or deceived into the impression or recollection that the trade marks are the same or at least related.”

3. It is, in my estimation, telling that Opponent chose not to press the ground listed in the SGP based on section 43 of the Act. To have done so would have addressed head-on the connotation of the word “Margaret” within the context of the goods at issue.

4. The Opponent is a winemaker located in the Margaret River wine growing region of Western Australia.  Whatever reason actually motivated the Opponent to adopt the name “Margaret” in 1992 for a new wine is, for the purposes of this analysis, subordinate to the determination of what ordinary wine drinkers would think upon seeing the name “Margaret” on a wine bottle.  In that regard the evidence shows that the Register of Trade Marks includes numerous marks containing the words “Margaret River”, supporting what I would consider to be the intuitively correct finding that, within the context of the goods at issue, the single connotation of the word “Margaret” is that of the Margaret River wine growing area of Western Australia.

5. Within the context of the goods and contrary to the Opponent’s submission, I find that the word “Margaret” is of very low distinguishing value and is perhaps the least striking element of the Trade Mark.   I do not accept the submission that the word “has substantially the same effect and impression in both [marks]”.  The single connotation of the word “Margaret” when used in relation to wine is that of Margaret River and for “Cape Margaret” to connote Cape Margaret River would be a nonsense.

6. This, so far, is to concentrate only on the likely signification of the word “Margaret” within the Trade Mark.  Contrary to the Opponent’s submission, the word “Margaret” is not the prominent visual element of the Trade Mark.   As the Applicant states:

   “… the Opposed Mark is a device mark which contains a tree device. The words CAPE and MARGARET are in a stylised font. The word CAPE is the visually prominent word in the Opposed Mark. It sits atop the tree device and is around twice as large in font size as the word MARGARET. The words CAPE and MARGARET are connected to the tree device through spiral elements. This is completely distinct from the Registered Mark which is a plain word mark that is not stylised.

7. Applying the principles set out earlier, I do not apprehend that an ordinary person exercising an ordinary amount of attention could confuse the parties’ marks.   The Applicant cited the case of Societe Des Produits Nestle S.A. v Newmans Chocolates Ltd [2004] ATMO 50, where at [35]-[40] Hearing Officer Thompson found that the marks MILKYBAR and MILKBEAR were not deceptively similar, stating: “The point being that consumers do not view descriptive matter as distinguishing between goods and look for other factors which do distinguish when making their purchases.”

8. The Opponent cites the case of Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227 and the Court’s finding at 230 that “someone who knew of a ‘Polo’ product, upon seeing a similar product selling under the name ‘Polo Club’, would be quite likely to think it was a particular version of the product which could be described as the Club version”. I do not see how use of the word “Polo” might equate, in context, with use of the word “Margaret” and so I am not at all persuaded, as the Opponent submits, that “[t]here is a high likelihood that some people seeing the [Trade] Mark will wonder, or be left in doubt, about whether that mark represents a sub-brand of the same trade source that is signified by the [Registered Mark].

9. I find that the marks are not deceptively similar and so it follows that the Opponent has not established its ground under s 44 of the Act.

   Decision

10. Section 55 of the Act relevantly provides:

    55Decision

    (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.

    Note:For limitations see section 6.

11. The Opponent has not established a ground of opposition.

12. The trade mark may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.

    Costs

13. The Applicant sought its costs in the event it was successful in this matter and I accordingly award costs against the Opponent at the official scale set out in Schedule 8 to the Regulations.

    Debrett Lyons
    Hearing Officer
    Hearings and Oppositions
    24 June 2019