Re: Opposition by The Scotch Whisky Association to registration of trade mark application number 1808708 (class 33) - Clyde River (word mark) in the name of Mr Cristian Andrei
[2019] ATMO 172
•3 December 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Scotch Whisky Association to registration of trade mark application number 1808708 (class 33) – CLYDE RIVER (word mark) - in the name of Mr Cristian Andrei
| Delegate: | Kate Doherty |
| Representation: | Opponent: King & Wood Mallesons Applicant: Self-represented |
| Decision: | 2019 ATMO 172 Trade Marks Act 1995 (Cth) – opposition under section 52 – Grounds of opposition under ss 41, 42 (Competition and Consumer Act 2010, ss 18 and 29), and 43 pursued; none established; trade mark will proceed to registration. |
Background
This opposition is a proceeding on the written record in relation to the following trade mark under the Trade Marks Act 1995 (‘the Act’):
Trade Mark No: 1808708
Trade Mark: CLYDE RIVER (‘Trade Mark’)
Filing date: 11 November 2016
Applicant: Mr Cristian Andrei
Specification of Goods: (at time of filing):
Class 33- Alcohol for drinking; Alcoholic beverages containing fruit; Distilled alcoholic beverages; Liquors (alcoholic beverages)
The Trade Mark was advertised accepted on 6 April 2017. A Notice of Opposition was filed on 6 June 2017 by The Scotch Whisky Association (‘The Opponent’). On 4 August 2017, the Applicant filed a Notice of Intention to Defend the Opposition. The Statement of Grounds and Particulars (‘SGP’) nominates grounds of opposition under ss 41, 42, and 43.
Evidence
The evidence received from the Opponent.
| Declarant | Date | Annexures | Decision Reference |
| C Ryan, King & Wood Mallesons | 6 November 2017 | CR-1 to CR-9 | First Ryan Declaration |
| L Low, SWA | 5 December 2017 | LL-1 to LL-13 | Low Declaration |
| C Ryan, King & Wood Mallesons | 6 December 2017 | CR-10 to CR21 | 4. Second Ryan Declaration |
The three declarations annex evidence which includes: search engine results for prescribed terms, screenshots of websites and copies of various print and online media articles.
The Opponent owns a registered certification mark.
(‘Certification Mark’): Scotch Whisky
Certification Mark Number: 1532781
The Opponent’s evidence also variously refers to the place names: Clydeside, Clydebank, The Clydeside Distillery, Clyde River Distillery, Firth of Clyde, North Bank of the River Clyde, Motherwell, Hamilton (in both Tasmania and Scotland), Strathclyde Park, Bothwell (in both Tasmania and Scotland), Blantyre, Kilpatrick Hills, Loch Katrine, Pacific Quay, Auchentoshan Distillery, River Clyde, Scotland, Glasgow, Lark Distillery, Nant Distillery, Bawley Vale Estate Winery, Cuppitts Winery, Brewery and Kitchen, Fern Gully Winery, Clyde Park Vineyard and Bistro, Batemans Bay, South Coast Region, Cowra, Moruya, Narooma, Tuross, Ulladulla, Wagonga, Eurobodalla, as well as Clyde Rivers in New South Wales (also known as the ‘Bhundoo’), Tasmania (previously known as the ‘Fat Doe’), The Northern Territory, Scotland, New Zealand, Canada (five), South Africa, and the United States of America (two).
No Evidence in Answer has been filed, and no Evidence in Reply was filed. The Opponent filed written submissions. No written submissions were received from the Applicant.
Onus and Standard of Proof
The relevant standard of proof is the civil standard, or ‘on the balance of probabilities’.[1]
[1] Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].
The Opponent bears the onus of proof in an Opposition Hearing.[2] The application will succeed if one or more of the nominated grounds are established. The rights of the parties are determined at the date of filing the application, the relevant date is 11 November 2016.
Grounds of Opposition
[2] Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].
Section 41 – Trade mark not distinguishing of applicant’s goods or services
Section 41 of the Act provides:
41 Trade mark not distinguishing of applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
The Applicant has not participated in the proceedings other than to file a Notice of Intention to Defend, as a result no evidence of use is available and none of the legislative provisions related to use will be applicable. [3] To determine an inherent capability to distinguish I am required to look at the mark itself and then examine the proposed application to goods.[4]
[3] s 41(1).
[4] Cantarella Bros v Modena Trading [2014] HCA 48.
The s 41 test for the inherent adaptation of a trade mark to distinguish the designated goods from those of other traders was set out by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd:[5]
The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.
[5] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72 [555].
In Clark Equipment Co v Registrar of Trade Marks, Kitto J also said:[6]
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.
[6] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 513–14; [1964] HCA 55; [1965] ALR 344 at 345–6, per Kitto J.
A geographic name is not automatically unregistrable, the Act states at s 41(3):
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)…geographical origin…
Use of a geographical name will not always be use to indicate geographical origin, many marks may seek to connote the idea of a place without implying a connection between the place and the goods.[7] A ‘geographic indication’ (GI) is a further species, these are maintained on a Register and as was correctly identified during the Examination Process: GIs are not relevant to this Trade Mark.
[7] See Monte Rosa cigarettes cited in California Fig Syrup Co.’s Application (1909) 26.R.P.C. 846.
In relation to the goods I cannot be certain what the nature of the relevant goods are in any more detail than the broad categories of class 33. The Opponent was not required to, and did not attempt to, make any specific representations about the Applicant’s goods.
The Opponent’s submissions used ‘River Clyde’ and ‘Clyde River’ interchangeably. I do not find these terms identical or capable of direct substitution in an Australian context. In Australia it is not automatic that a place name such Clydebank would be associated with a Clyde River, an example is the suburb Meadowbank in Sydney which is on the Georges River. Clyde River could also be a given name, though I accept that this scenario may be less persuasive than for the finding by Sundberg J in relation for ‘Glenn Oaks’ being a name. [8] Clyde is a suburb in Sydney and Melbourne, though the word ‘River’ tends to consolidate the inference of a location.
[8] Scotch Whisky Assn v De Witt (2007) FCA 1649 at [391 – 392]; Trade Mark 1260377 for ‘Glen Clyde’ is currently Registered in Australia for goods in class 33.
The opponent’s evidence details the use of the place name ‘Clyde River’ at no less than fourteen locations around the world.[9] None of these locales enjoy the iconic reputation, geographic size or population density of places such as ‘Michigan’ or ‘Colorado’.[10] Colorado was described by Finkelstein J as “well-known mountains and is a rugged holiday area” and found to have a close association with the nominated goods, particularly backpacks, due to that environment.[11] I find those authorities are plainly distinguished, while it is possible the use of a geographic place name could lead to confusion there is no evidence before me to show that this is likely on these facts.
[9] Second Ryan Declaration, CR-21.
[10] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; Colorado Group Limited v Strandbags Group Pty Limited (2007) FCAFC 184.
[11] Ibid [28].
For s 41, the test is whether if the goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.[12] I am not persuaded on the evidence that a rural estuary on the NSW far south coast is likely to become a center of production or distribution for the class of goods in the application. [13] The material filed in relation to the Tasmanian location contains minimal references to a Clyde River, and states that there has been no whisky production since 1839 in Tasmania. The evidence shows uses of other place names in relation to both Clyde Rivers, including ‘Bhundoo’ and ‘Fat Doe River’ and frequently describes the places solely by reference to other towns or natural features.[14]
[12] Mantra IP Pty Ltd [2017]ATMO 10 (BALÉ trade mark in Classes 39 and 43).
[13] See Thomson v B Seppelt and Sons Limited [1925] HCA 40, which has exclusion terms attached to the protected status for ‘Great Western’.
[14] First Ryan Declaration, CR-8; Second Ryan Declaration, CR-20.
It is not necessary that a geographical location has a reputation, only that it has a potential connection. The Registrar said in "Dan River”: [15]
‘there is a category of words which are so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration, and that among such words are the names of large and important industrial towns or districts, and also of smaller towns or districts if they are a seat of manufacture of the goods for which registration is sought.’
[15] "Dan River" Trade Mark (1962) RPC 157, at p 160.
The material filed in relation to the distilleries on the River Clyde in Scotland postdates the Trade Mark application filing date and is not a relevant consideration for this ground.[16] A ‘Scotland Food and Drink’ article dated 22 March 2017 states that there have been no whisky stills ‘on the banks of the River Clyde for more than a century’.[17] I do not find that mere geographic proximity at the levels described in the evidence is equivalent to a connection with goods from that place.[18]
[16] First Ryan Declaration, CR-2, 3, 4; Low Declaration, LL-12 to 13.
[17] First Ryan Declaration, CR-2.
[18] Low Declaration, LL-11.
The evidence shows NSW Clyde River has a limited reputation for production of berries and oysters.[19] A total of three breweries, wineries and a distillery are identified with a minimum of 11 kilometers distance to the berry farm at Clyde River. [20] I am not persuaded that the evidence has reached the threshold for proving a potential connection with the goods. I would need to be satisfied that the goods could have a connection there in the future, and that the trader would choose this name rather than one of the many other names that have been listed including the traditional name or any of the places names associated with the other wineries, breweries or distillery.
[19] Second Ryan Declaration, CR-13,14,16,17,18.
[20] First Ryan Declaration CR-16.
I find that the Trade Mark does have an inherent adaptation to distinguish and this ground is not established.
Section 42 – Trade mark is scandalous or contrary to law
Section 42 of the Act relevantly provides:
42 Trade 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.
Where misleading and deceptive conduct is established, use would be contrary to law.[21] Pursuant to Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd the Opponent must demonstrate that use of the Trade Mark would not could be contrary to law.[22]
[21] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24.
[22] Ibid. [28].
Though it is not clear from the application what the specific goods are, certain assumptions can be made in relation to the class of goods, including:
a)In Australia alcohol is purchased by consumers over the age of eighteen years, a licensed sales assistant, or bartender, is ordinarily involved in each sale.[23]
b)Consumers of whisky are discerning, and do not generally make impulse purchases.[24]
c)Labelling requirements apply to all alcohol bottles, including GIs for wines, a Certification Mark with associated regulations for Scotch Whisky, as well as standards for the labeling of all alcohol products which mandate that geographic origin is accurately recorded.
There is no evidence that the Applicant is not, or will not, comply with the requirements above.[25] Where the obligations are complied with the real or not remote chance or possibility of a reasonably significant number of people being misled or deceived is negligible.[26]
[23] Scotch Whisky Assn v De Witt(2007) FCA 1649.
[24] Contrast with customers who are children - Coca‑Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; Scotch Whisky Assn v De Witt (2007) FCA 1649 at [38].
[25] Scotch Whisky Regulations 2009 (UK).
[26] Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82 [87].
Any bottle produced by the Applicant could not be named Scotch Whisky,[27] could not reference Scotland on the labelling, and must state where the goods are manufactured and/or imported from.[28] The bottle must comply with all existing rules in relation to geographic indications for wines, none of which are currently applicable to any of the nominated Clyde Rivers.
[27] National Food Authority v the Scotch Whisky Association [1995] FCA 1205.
[28] Imported Food Control Act 1992 (Cth) ss 8-8A; Food Act 1984 (Vic) s 16; Food Act 2003 (NSW) s23; Australia and New Zealand Food Standards Code (Standard 2.7.5(4) for geographical indications).
Section 18 of the Australian Consumer and Competition Act 2010 (‘ACL’), concerns whether there have been false representations and/or relevant consumers would be misled or deceived about the true origin of the Applicant’s goods and services or that they had some connection with the Opponent. In Puxu it was stated that ‘conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach [consumer law]’.[29] It follows that I do not find the Opponent has discharged the onus for establishing that use of the Trade Mark would be likely to mislead or deceive within the meaning of the ACL.
[29] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44.
If the Applicant was to label their goods as ‘Scotch Whisky’ or ‘originating in Scotland’, I accept that it would be a contravention of the law of trademarks in relation to Certification Marks, as well as possible breaches of regulatory laws. Allegations of impropriety, such as misleading and deceptive conduct or false representations require cogent evidence.[30] There is nothing before me to show the Applicant has any intention to contravene a law and this ground is not established. [31]
[30] Briginshaw v Briginshaw [1938] HCA 34.
[31] Australian Consumer and Competition Act (2010) ss 18 and 29.
Section 43 – Trade mark likely to deceive or cause confusion
Section 43 of the Act provides:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Connotation requires something inherent in the mark which implies a connection and leads to confusion.[32] Use, reputation and similarity are not relevant here. A mere allusion or suggestion is not sufficient.[33] The relevant characteristic of the goods must be that they imply a sponsorship or association which they do not have.[34] Whether there is a likelihood of deception or confusion is to be answered:[35]
…not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered.
It must be determined whether there is a “real tangible danger” of deception or confusion arising.[36] As stated by Kenny J in McCorquodale:[37]
In order for s 43 to apply, the court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations…
‘Stalinskaya’ for Romanian vodka was permitted to be registered by the Federal Court on the basis that it is not uncommon that a trader would choose a trademark which would ‘connote an idea of Russianness’.[38] Although I am not certain of the Applicant’s specific goods, it does not correlate that for example a whisky trader would equally wish to connote an idea of Scottishness. Whisky is also produced in Ireland, Japan, America where it is also known as bourbon, and a number of other locations around the world. The use of the certification mark for Scotch Whisky and the associated certification mark regulations clearly annul any connotation with Scotland whilst enabling the preservation of geographic origin.
[32] Registrar of Trade Marks v Woolworths [1999] 93 FCR 365.
[33] Suntory Limited v Aktion Zahnfreundlich [1998] ATMO 44.
[34] Pfizer Products Inc v Karam [2006] FCA 1663 [53].
[35] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 [362].
[36] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82 [595].
[37] McCorquodale v Masterson [2004] FCA 1247 [26].
[38] Spirits International NV v SC Prodal '94 SRL[2008] ATMO 22.
Whisky is associated with Scotland, but the protection afforded by the certification mark does not monopolise all Scottish sounding words.[39] The policy reasons for not forcing the tribunal of fact to be required to arbitrate in the absence of registration, or certification, which words are ‘Scottish sounding’ or ‘Scottish sounding enough’ are strong. Geographical Indications are specifically available to avoid this scenario arising in these types of disputes.
[39] Australian Certification Trade Mark Registration No. 1532781 for ‘Scotch Whisky’.
I reject the submission that ‘the Applicant’s Mark is clearly evocative of Scotland’. Australians are highly accustomed to seeing words that could be thought of as Scottish, for example ‘Perth’. I have insufficient evidence before me that an ordinary Australian would be able to recognise or differentiate Scottish names or places from other foreign or Gaelic languages. The large number of other Clyde Rivers around the world further dilute any association with Scotland. Accordingly, I find any connotation is not strong enough to cause “enough persons in the relevant public to be deceived or confused”.[40]
[40] Carlton & United Breweries v Royal Crown Co Inc (2001) 53 IPR 599 [606]; The Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300 [305].
This ground has not been established.
Decision
The Opponent has not established a ground of opposition. Pursuant to section 55(1), the Trade Mark mark will proceed to registration for a period of ten years to date from the filing date of 11 November 2016.
Trade Mark number 1808708 will proceed to registration one month from the date of this decision.
The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.
Costs
Costs ordinarily follow the event for an Opposition Hearing. However, as the Applicant does not appear to have incurred costs and has not provided assistance by participating in the proceedings, no order for costs will be made.
Kate Doherty
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
3 December 2019
10
0