Re: Opposition by Samuel Smith & Son Pty Ltd to registration of trade mark application number 1870524 (class 33) Epic Negociants (Figurative) in the name of Cherish Corporation Pty Ltd

[2020] ATMO 154

TRADE MARKS ACT 1995

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

Re:Opposition by Samuel Smith & Son Pty Ltd to registration of trade mark application number 1870524 (class 33) - EPIC NEGOCIANTS (FIGURATIVE) - in the name of Cherish Corporation Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: Louise Emmett of Madderns Patent and Trade Mark Attorneys Applicant: Written submissions
Decision:	2020 ATMO 154 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58 and 60 pressed, no ground of opposition established – trade mark to proceed to registration

Background

1. This matter is an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Cherish Corporation Pty Ltd (‘the Applicant’). Relevant details of the application are set out below.

Trade mark:	(‘the Trade Mark’)
Trade mark application:	1870524
Filing Date:	4 September 2017 (‘Priority Date’)
Specification:	Class 33: Wine (‘Applicant’s Goods’)

1. The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 25 January 2018. Samuel Smith & Son Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose on 23 March 2018 followed by a Statement of Grounds and Particulars (‘SGP’) on 23 April 2018. Thereafter the Opponent and Applicant filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard, by way of video conference, the matter in Canberra on 7 May 2020 as a delegate of the Registrar of Trade Marks. Louise Emmett of Madderns Patent and Trade Mark Attorneys, appeared by video conference for the Opponent. The Applicant relied on written submissions only.

   Grounds of Opposition

3. The SGP nominated grounds of opposition under ss 42(b), 44, 58 and 60 the Act. The onus is upon the Opponent to establish one of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663, and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

4. The time at which the grounds of opposition must be established is the Priority Date, being the date of the application for registration of the Trade Mark [2].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 95.

   Evidence

   6.     The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Robert Smart (‘EIS’)	Commercial Manger Risk & Compliance of Yalumba Group of companies (including the Opponent)	4.04.2019	RS1 to RS12
Evidence in Answer
Andrew Browne (‘EIA’)	Operations Manager – Wine, of Applicant	29.05.2019	Two Adverse Reports from Examiner
Evidence in Reply
Robert Smart (‘EIR’)	As above	9.09.2019	RS13 to RS28

The Opponent

1. The EIS establishes that the Opponent is part of a group of companies (together referred to as ‘Yalumba’) that have been established in connection with the Yalumba winery located in Angaston, South Australia. The winery was established in 1849 by Samuel Smith and has operated as a family owned business since that time.

2. Yalumba also operates a wine distribution business called NEGOTIANTS.[3] NEGOTIANTS has been operating in Australia through its Australian arm NEGOTIANTS AUSTRALIA, which distributes premium Australian wines and prestigious imported brands of wine from around the world since 1984.[4]

   [3] EIS, at [5].

   [4] EIS, at [6] and [7].

3. The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Services’. 

Number	Trade Mark	Priority Date	Services
804095	NEGOCIANTS WORKING WITH WINE (‘Negotiants Word Mark’)	19.08.1999	Class 41: Educational and advisory services in connection with viniculture and oenology; services relating to the arranging and conducting of wine exhibitions and wine competitions
904446	(‘Negotiants First Mark’)	26.02.2002	Class 35: Sale and retail distribution of alcoholic beverages including wines, spirits and liqueurs; retailing/wholesaling of wines; market research and consulting services; providing computerised online ordering services in relation to alcoholic beverages; and advertising of alcoholic products of others via local and global computer networks
1623852	(‘ Negotiants Second Mark’)	07.02.2018	Class 35: The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Intermediary business services relating to the commercialisation of goods; Retailing of goods (by any means); Wholesaling of goods (by any means); Advertising; Advisory services relating to advertising

The Applicant’s Evidence

1. The EIS states that the Applicant is the owner of the assets and liabilities of Epic Negociants Pty Ltd. The declarant, Andrew Browne, states that he has been involved in the sale and distribution of market leading wine in Australia and internationally for over 25 years. There is no evidence about how long the Applicant has been involved in such business.

2. The EIS contains an adverse examination report issued in respect of the Opponent’s application (1905068) to register the word NEGOCIANTS in Class 35. The examiner makes the following comments about the term ‘negociants’:

   A NEGOCIANT is a type of merchant who produces, bottles or purchases grapes or similar for the purpose of making or retailing wine. Your trade mark therefore indicates that your goods and services are for, from, or targeted at negociants. As a whole your trade mark is therefore not able to distinguish your goods and services from those similar goods and services of other traders.

   Other traders should be able to use NEGOCIANTS, or something very similar, in connection with goods or services similar to yours.

3. I accept the examiner’s definition and comments regarding the word in relation to the Opponent’s application 1905068. I find the term is descriptive of some of the Opponent’s Services.

4. None of the EIR contradicted the examiner’s definition or comments. The EIR contains further exhibits providing examples of articles referring to, in particular, the Opponent’s Working with Wine program, along with commentary that amounts to submissions.

   Discussion

5. Although Ms Emmett made submissions starting with the s 60 ground, I will discuss the s 44 ground first, because it has a direct bearing on the s 58 ground, which I will discuss second. The s 44 discussion is also relevant to the s 60 ground, which I will discuss third.

   Section 44

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

   Section 44 - Identical etc. trade marks

   (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)  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.

   Note 1:       For deceptively similar see section 10.

   Note 2:       For similar goods see subsection 14(1).

   Note 3:       For priority date see section 12.

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

   (2)  …

   (3)  If the Registrar in either case is satisfied:

   (a)  that there has been honest concurrent use of the 2 trade marks; or

   (b)  that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:          For limitations see section 6.

   (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)  beginning before the priority date for the registration of the other trade mark in respect of:

   (i)  the similar goods or closely related services; or

   (ii)  the similar services or closely related goods; and

   (b)  ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:       An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:       For predecessor in title see section 6.

   Note 3:       For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

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

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

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

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

8. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Negociants Word mark and Negociants First Mark.  The Opponent’s Trade Marks do have priority dates that are earlier than the priority date of the Trade Mark.  I find the first requirement satisfied. 

   Substantially identical and/or deceptively similar

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

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

   [5] (1963) 109 CLR 407, [12].

10. The concepts of ‘dominant cognitive cues’ and ‘essential features’ of trade marks were considered in the decisions of the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[6] and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’).[7] The court stated in Pham Global:

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

    The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’ (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[8]

    [6] [2017] FCAFC 56.

    [7] [2017] FCAFC 83.

    [8] [2017] FCAFC 56, [51]-[52].

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

1. The court found the elements ‘insight’ and the devices in each trade mark to be the essential elements.  In finding the two trade marks substantially identical the court paid less attention the words ‘Clinical Imaging’ and ‘radiology’ due to the descriptive nature of those words in connection with the relevant services.[9]

   [9] [2017] FCAFC 83, [56].

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

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[10]

   …

   [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.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.[11]

   [10] (1961) 109 CLR 407, at 414-415.

   [11] Ibid, at 416.

3. The Trade Mark and the Opponent’s Trade Marks are set out below:

NEGOCIANTS WORKING WITH WINE

1. In the present case, a side by side comparison of the marks demonstrates three quite different marks - the essential element in each mark is different.  The parody of the Australian coat of arms is quite different from the relatively nondescript phrase in the Negociants Word mark and from the fancy script ‘NA’ of the Negociants First Mark.  Ms Emmett did not pursue the substantial identity limb and I find that the Trade Mark is not substantially identical with any of the Opponent’s Trade Marks. I will now consider whether the Trae Mark is deceptively similar to any of the Opponent’s Trade Marks.

2. The Negociants Word Mark includes extra words and four syllables that are absent from the Trade Mark. The Trade Mark also contains depictions of a Kangaroo, a wine barrel, an emu together with the word EPIC. In addition the Negociants Word Mark is registered in class 41 in relation to ‘Educational and advisory services in connection with viniculture and oenology; services relating to the arranging and conducting of wine exhibitions and wine competitions’ which do not overlap with the goods claimed in the Trade Mark.

3. Accordingly, I consider the Trade Mark to be distinguishable from the Negociant Word Mark on a phonetic, visual and conceptual basis.

4. The Negociants First Mark includes the words NEGOCIANTS AUSTRALIA NA in a serif font, with wide spacing between the letters. In addition, the words are depicted with the letters “N” and “A” in script combined into a figurative logo format. The Trade Mark contains a Kangaroo, a wine barrel, an emu together with the words EPIC NEGOCIANTS in a sans serif font and narrow spacing between the letters.

5. The Negociants First Mark is registered in class 35 for “Sale and retail distribution of alcoholic beverages including wines, spirits and liqueurs; retailing/wholesaling of wines; market research and consulting services; providing computerised online ordering services in relation to alcoholic beverages; and advertising of alcoholic products of others via local and global computer networks” which differ from the goods claimed for the Trade Mark. Accordingly, the Trade Mark is distinguishable from the Negociants First Mark on a phonetic, visual and conceptual basis.

6. Taking into account the test of the principal authority, I consider that phonetic, visual and conceptual differences are such that there would be no real tangible danger that prospective wine purchasers would be caused to wonder that wine bearing the Trade Mark would have some sort of connection with the Opponent. 

7. I find that the Opponent has failed to establish the ground of opposition pursuant to s 44 of the Act.

   Section 58

8. Section 58 of the Act is reproduced below:[12]

   [12] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

   Section 58. Applicant not owner of trade mark

   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.

9. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[13]

   [13] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[14] and

   [14] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[15]

   [15] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

   33.     The SGP claims ownership of the word NEGOCIANTS as a trade mark in relation to its wine distribution business since 1984.

   34. For the same reasons I discussed under the s 44 ground, the word NEGOCIANTS is not substantially identical with the Trade Mark. The Opponent has failed to establish the first factor and consequently I find that the Opponent has failed to establish the ground of opposition under s 58.

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

10. 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.

    Note:For priority date see section 12.

1. It is not necessary to show under s 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

2. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[16](‘McCormick’) by Kenny J at [81] – [82]:

   [16] (2000) 51 IPR 102.

   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”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

3. Further, at [86], Kenny J said:

   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.

4. The SGP claims that the Opponent’s business has established a significant reputation in the word NEGOCIANTS as a trade mark as follows:

   As a result of Yalumba’s longstanding use and promotion of the NEGOCIANTS trade mark, yalumba has established a significant reputation in the NEGOCIANTS trade mark internationally and in Australia. As a result of this reputation, use of the Opposed Trade Mark by the Applicant would be likely to deceive or cause confusion.

5. The Opponent’s evidence establishes that its business in Australia has a high volume of sales and substantial advertising expenditures during the period 2013/14 to 2017/18. The actual amounts are confidential; however, I can say that the figures are substantial sums of money.

6. This evidence appears to satisfy the McCormick test at [38] above. However, I do note that the actual trade marks demonstrated in that evidence are the Necociants Word Mark, the Negociants First Mark, and the words NEGOCIANTS AUSTRALIA. The evidence does not seem to demonstrate that the plain text representation of the word NEGOCIANTS has been used for a significant period of time.

7. Much of the reputation of the Negociants Word mark is connected to the Opponent’s ‘Working with Wine’ program in class 41, while the remainder is for the class 35 distribution of fine wine by Negociants Australia. The Opponent does not supply any NEGOCIANT branded wine (nor, it seems, its own Yalumba wines) as part of the business that has accrued the reputation.  Conceivably, Negociants Australia sales volume could be attributable to its product range and the branded products that the business represents rather than through reputation of the mark NEGOCIANTS solus.

8. If one accepts that the Opponent’s Trade Marks have the requisite reputation, the Opponent still needs to satisfy the second limb of s 60, that of a likelihood of deception or confusion.

9. The Trade Mark is a badge of origin for the Applicant’s wine in class 33. There is no evidence to suggest that the wine has been, or will be, offered for sale in the same marketplace as the Opponent. There is no evidence of any confusion.

10. The elements of the Trade Mark, in particular its device element, effectively distinguish the Trade Mark as a whole from any of the Opponent’s trade marks. The Trade Mark is not readily likely to be mistakenly attributing a business connection between the parties. Even consumers of domestic wine products who are aware of the Opponent’s services are likely to consider that wine sold under the Trade Mark and outside the Opponent’s sphere of services are unlikely to make a connection between the Applicant’s goods and the Opponent’s services

11. I am not satisfied that use of the Trade Mark would be likely to deceive or cause confusion. Consequently, I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act

    Section 42

    47. Section 42 of the Act is reproduced below:

    42 Trade mark scandalous or its use contrary to law

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

    (a) the trade mark contains or consists of scandalous matter; or

    (b) its use would be contrary to law.

    48. The Opponent nominated contraventions of ss 18 and 29 of the Australian Consumer Law (‘ACL’) and passing off. Section 18 is contravened when a party engages in conduct in trade or commerce that is misleading or deceptive, or is likely to mislead or deceive customers. Section 29 applies where use of the Trade Mark would amount to a false representation within the terms of s 29.

    49.     There must be a ‘real but not remote chance or possibility’ of that a customer will be misled or deceived regardless of whether that chance is less or more than 50 percent.[17]

    [17] Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 55 ALR 25 at 34, per Bowen CJ, Lockhart and Fitzgerald JJ.

    50. As I have found that the use of the Trade Mark is not, at a minimum, likely to “deceive or confuse” under s 60, it follows that the use is not, on the stricter test posited by the ACL[18], likely to mislead or deceive within the meaning of s 18, nor do I believe use would amount to a false representation in terms of s 29, nor passing off.

    [18] Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited 1982] HCA 44.

    51. I therefore find that the Opponent has not established the ground of opposition under s 42(b) of the Act.

    Decision

    52.     The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1870524 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

12. The parties both sought an award of costs in their favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations.

    Jock McDonagh
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    18 September 2020