Republic of Peru (Peruvian State)
[2023] ATMO 53
•26 April 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade mark application number 2006463 (33) – PISCO - in the name of Republic of Peru (Peruvian State)
Delegate: Nicholas Smith
Representation: Applicant: Andrew Fox SC instructed by Griffith Hack
Decision: 2023 ATMO 53
Trade Marks Act 1995 (Cth) – hearing of an examination under section 33 – whether grounds for rejection of application for certification trade mark under sections 177 and 43 apply – ground for rejection under section 43 withdrawn and section 177 established - certification trade mark not capable of distinguishing – application rejected
Background
1. On 1 May 2019 the Republic of Peru (Peruvian State) (‘Applicant’) filed an application to register the certification trade mark detailed below:
Application Number:
2006463
Goods:
Class 33: Alcoholic beverages (except beer) (‘Applicant’s Goods’)
Trade Mark:
PISCO
(‘Trade Mark’)
2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
3. The application was examined as required by s 31 and on 25 November 2019 the examiner issued an adverse report. The report indicated that, amongst other things, there were grounds for rejecting the application under s 177. Under s 177, the application must be rejected if the Trade Mark ‘is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified’. The basis for the examiner’s view was stated in the report thusly:
The trade mark is, or has as its main feature, PISCO. This indicates that the goods for which you seek coverage is a traditional brandy produced and consumed in the country of Peru and Chile. It is produced by distilling fermented grapes juice into a high proof spirit. In deciding whether or not the Trade Mark is capable of distinguishing the Registrar is required to take into account the extent to which the Trade Mark is inherently adapted to distinguish or the extent to which it has become adapted to distinguish as a result of use or other circumstances.[1]
[1] Trade Marks Act 1995 (Cth) s 177(2).
Accordingly, the examiner indicated that the Applicant might be able to overcome the ground for rejection if it supplied ‘substantial evidence of use and/or other circumstances’. In addition to the s 177 issue the examiner requested that the Applicant provide a copy of the proposed certification rules for the Trade Mark which have subsequently been provided (‘Certification Rules’).
4. The Applicant responded to the adverse report on 12 December 2021. The Applicant’s response contained submissions from the Applicant’s representative as well as a Declaration of Leanne Michelle Oitmaa, Principal at the Applicant’s representative Griffith Hack, declared on 2 December 2020. This declaration simply annexed two further declarations being the Declaration of Miguel Palomino, Peruvian Ambassador to Australia, made on 16 November 2017 with Exhibits MP-1 to MP-22 (‘Palomino 1') and a second declaration made by Mr Palomino on 28 April 2018 with Annexes MP-23 and MP-24 (‘Palomino 2’).
5. The submissions and evidence did not persuade the examiner and on 23 February 2021, the examiner issued a second adverse report in which they maintained the ground for rejection of the application. Furthermore, following the provision of the Certification Rules, the examiner raised a further ground of rejection under s 43 arising from the Certification Rules, which provide that the Trade Mark could only be used on certified Peruvian Pisco. The examiner found that, in the Australian market, when used on alcohol, the Trade Mark connotes that the alcohol is a style of brandy originating from Chile or Peru and as such the use of the Trade Mark would be ‘deceptive and confusing in the marketplace if it were to exclude properly produced and labelled goods.’
6. The Applicant responded to the second report on 21 June 2022 with further submissions, that attached, as unsworn attachments, the results of various Google Search results for the Trade Mark and other articles. The material annexed to the further submissions taken from Google at various points refers to the Pisco product being produced in both Peru and Chile and as a type of ‘South American brandy’. The Applicant’s submissions did not persuade the examiner and the examiner issued a third adverse report on 29 July 2022.
7. On 20 October 2022 the Applicant requested an oral hearing. The hearing was held in person before a delegate of the Registrar of Trade Marks on 13 February 2023 with the Applicant being represented by Andrew Fox of Counsel instructed by Leanne Oitmaa of Griffith Hack Lawyers. That person was subsequently unavailable to decide the opposition, so it was allocated to me. The Applicant filed its submissions (‘Applicant’s Submissions’) on 10 February 2023. The Applicant’s Submissions were accompanied by a second declaration of Leanne Oitmaa, dated 10 February 2023 (‘Oitmaa declaration’).
8. In making my decision I have had regard to the Applicant’s written and oral submissions, including a full recording of the hearing, the statement by His Excellency Vitaliano Valencia, Ambassador of Peru in Australia, and the written record including the earlier submissions, Palomino 1, Palomino 2 and the Oitmaa declaration.
The Applicant
The Applicant is the nation of Peru.
Palomino 1 and 2 were both filed as part of an opposition to a registration of a trade mark that contained the word Pisco (Application No. 1807072). Below I summarise the relevant material in these declarations as relevant to the ss 177 and 43 grounds of rejection. I note and have had regard to the statement made by Mr Valencia at the hearing but do not need to summarise it in any significant detail as it covers similar ground to the material in Palomino 1 and 2, namely the history of the use of PISCO in Peru, its unique status to the Peruvian people and the recognition of the Trade Mark by various third parties:
· The Trade Mark is a spirit of Peruvian origin, produced by distilling fermented grape juice from a limited number of varieties of grapes that are grown in specific regions of Peru. It is an appellation of origin in Peru, officially protected since 12 December 1990. Any use of the term Pisco that is not produced according to the rules and definitions of the appellation of origin both detrimentally affects the rights of the Peruvian people and misleads Australian consumers.
· The Pisco product originated in the Republic of Peru and in particular the area surrounding the Pisco Valley and Pisco river, near the port town of Pisco. It has been produced in Peru and in particular the Pisco region for more than 450 years using 8 grape varieties known as the Pisco grapes[2]. The Pisco product has unique properties arising from the raw material used, processing methods arising from traditional knowledge and location of production.
· The Pisco product is one of special importance to Peru both economically and culturally. This is reflected by its status as an Appellation of Origin in Peru, and its use is regulated by the Peruvian Government. Its Appellation of origin status has been recognised since 2005 under the Lisbon Agreement for the Protection of Appellation of Origins and their International Registration and in various third parties countries through protection with their respective IP offices or as a result of various free trade agreements.
· Between 2007 and 2017 28 million litres of the Pisco product were exported by Peru to 74 countries in the world. Between 2005 and 2017, Australia imported 3.5 million litres of the Pisco product from Peru, with a number of distributors having promoted the Pisco product from as early as 2005. The Peruvian Government has promoted the Pisco product as produced in Peru through a number of events and there has been third party promotion through various media outlets.
· In 2018 the Australian and Peruvian governments signed a free-trade agreement in which the status of Pisco is recognised.
[2] Also known as the ‘pisqueras grape varieties’ as described in the statement of the statement by His Excellency Vitaliano Valencia and the Applicant’s Submissions.
The Oitmaa declaration consists of extracts from the Register of Trade Marks for marks in class 33 that include the word ‘Pisco’ and the word ‘Tequila’. The results illustrate that there are a very limited number of registered trade marks that contain the word ‘Pisco’ and a substantially higher number of trade marks that contain the word ‘Tequila’. The declaration also includes details of Certification Trade Mark no. 1377413 for TEQUILA, noting that two adverse examination reports were issued in 2010 and 2011 and the certification mark was subsequently accepted for registration.
Summary of the relevant law in respect of certification trade marks
There is limited case law relating to the consideration of certification marks however the recent case of Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India[3] (‘Basmati’) in which this office rejected the proposed certification mark BASMATI (which like the present case was a geographical indication sought to be registered by a national body in respect of particular goods) summarised the broad principles relating to certification trade marks as follows:
[3] [2022] ATMO 228 (Hearing Officer Knowles).
Under s 176(1), the Registrar must accept an application for a certification trade mark if the application is made in accordance with the Act, there are no grounds for rejecting it, and provided that a certificate has been issued by the Australian Competition and Consumer Commission (‘Commission’) under s 175(2).[4]
[4] Ibid, [36].
…
Under s 170, the provisions of the Act relating to trade marks (other than sections 8, 26, 33, 34, 41, 121, and 129, paragraph 27(1)(b), and Parts 9 and 17) also apply to certification trade marks. As s 41 does not apply to certification trade marks, the assessment of distinctiveness of certification trade marks is made under s 177, which states:
177 - Additional ground for rejecting an application or opposing registration—certification trade mark not distinguishing certified goods or services
(1) In addition to any other ground on which:
(a)an application for the registration of a certification trade mark may be rejected; or
(b)the registration of a certification trade mark may be opposed;
the application must be rejected or the registration may be opposed if the trade mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified.
(2) In deciding whether or not the certification trade mark is capable of so distinguishing goods or services certified by the applicant or an approved certifier, the Registrar must take into account:
(a)the extent to which the certification trade mark is inherently adapted so to distinguish those goods or services; or
(b)the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish those goods or services.[5]
[5] Ibid, [38].
…
The test under s 177 is not directly analogous to the test for determining the distinctiveness of a standard trade mark under s 41. The former deals with the capacity of a certification trade mark to distinguish goods certified from goods not so certified. The latter deals with the capacity of a standard trade mark to distinguish the goods of one trader from another. The differences in the statutory tests reflect the particular distinguishing function that a certification trade mark plays with regard to quality or characteristics of the relevant goods, as opposed to a distinguishing function in relation to trade origin.
Under s 177(2), there are three factors that are relevant to determination of capacity to distinguish of a certification trade mark, namely (i) the extent to which the certification trade mark is inherently adapted to distinguish, (ii) the extent to which, because of use, the certification trade mark has become adapted to distinguish, and (iii) the extent to which because of any other circumstances, the certification trade mark has become adapted to distinguish. These matters must be considered in the context of the certifying function performed by a certification trade mark, including in cases where a certification trade mark is a GI. Section 177 also differs from s 41 in that it does not set out different assessments for trade marks with some inherent adaptation to distinguish and no inherent adaptation to distinguish. I note that the Working Party[6] that developed recommendations for what is now the Act considered the function of a certification trade mark and recommended that the standard for distinctiveness for certification trade marks be ‘capable of distinguishing’, a level more similar to the less stringent test for registration of trade marks under Part B of the former Trade Marks Act 1955. This is now reflected in s 177.
[6] Working Party to Review the Trade Marks Legislation Report “Recommended Changes to the Australian Trade Marks Legislation”, presented to the Minister for Science and Technology, July 1992, p 57 (see also p 51 of Appendix 4 for background).
A standard trade mark that entirely lacks inherent adaptation to distinguish would generally be unregistrable unless the applicant can establish that because of its use, the trade mark had developed a secondary meaning which the public perceives as an indicator of trade source. Once a sufficient level of recognition amongst relevant consumers has been established, the primary meaning of the trade mark as a descriptive or otherwise non-distinctive term becomes either superseded or supplemented by its secondary meaning as an indicator of trade origin. In contrast, as a certification trade mark is not an indicator of trade source, different considerations apply. The enquiry regarding capacity to distinguish does not relate to trade origin but rather whether the trade mark distinguishes goods certified as having some quality or characteristic absent from goods not so certified. As such, if a certification trade mark entirely lacks inherent adaptation to distinguish, it follows that an applicant must demonstrate that the certification trade mark as a result of its use or because of other circumstances has come to represent qualities and/or characteristics of the goods certified by the applicant or a person approved by the applicant.
The authors of Shanahan’s Australian Law of Trade Marks & Passing Off state that:[7]
If, as is required by s 177, a certification mark is to distinguish “goods or services certified… from goods or services not so certified”, it must be apparent to those encountering the mark in use that the product in question has been certified in some way.[8] Indeed the previous United Kingdom legislation expressly required that the Registrar have regard to “the desirability of securing a certification trade mark shall comprise some indication that it is such a trade mark”,[9] and in practice the British Registrar insisted that the words “certification trade mark” appeared in or in close proximity to the trade mark.[10] In Australia, neither the 1995 Act nor the Registrar’s practice demands such a statement, but its inclusion must necessarily assist in establishing distinctiveness,[11] and a trade mark could not function as a certification mark unless the public were educated in that way or by an appropriate advertising campaign (or more usually both) that the trade mark was in fact a certification mark.
Respectfully, I disagree with this assessment and do not find the authorities cited in support of it to be particularly authoritative in interpreting the current legislation. The Australian Working Party[12] that in 1992 made recommendations for the Act recommended there be a presumption of registrability when examining a trade mark application, reflected in section 176 in respect of certification trade marks. Section 177 requires only that the certification trade mark be capable of distinguishing due to its extent of inherent adaptation, or the extent to which because of its use or other circumstances it has become adapted to distinguish the relevant goods or services. A certification trade mark need not contain in itself an express or implied indication that goods in relation to which it is used have been certified, nor should it always be necessary that the public be educated that a sign is acting as a certification trade mark. A certification trade mark could in some circumstances distinguish in fact even if the public is not directly informed of its certification function. This may often be the case with certification trade marks corresponding to GIs. By way of illustrative example, many consumers may not consciously perceive that the term SCOTCH WHISKY is a certification trade mark. However, many consumers who purchase spirits would at the very least understand that SCOTCH WHISKY indicates that such whisky originates from Scotland and/or has various qualities, notwithstanding that the certification trade mark function of the term is not stated in the mark itself or necessarily reinforced among the public by other methods.
Under s 177, it is first necessary to determine the level of inherent adaptation to distinguish of the Word Mark. Regrettably, there are no binding authorities that deal with the interpretation and application of the test under s 177. As such, it is informative to turn to the well-established authorities that considered s 41 and its predecessors to provide guidance on the question of ‘inherent adaptation to distinguish’. This issue is one on which the respective tests under s 177 and s 41 conceptually differ the least (if at all). The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:
His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[13]
In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[14] [15]
[7] M Davison, I Horak, Shanahan’s Australian Law of Trade Marks and Passing Off, online 7th edition, 2022 Thomson Reuters, [55.15]
[8] Wilson’s and Mathieson’s Ltd’s Application (1929) 46 RPC 80 at 89 (Ch D).
[9] Trade Marks Act 1938 (UK), First Sch, para 1(3); see also Trade Marks Act 1963 (South Africa), s 52(6).
[10] Dawson N, Certification Trade Marks Law and Practice (1988), p 17.
[11] See the Report of the Departmental Committee, Goschen Report (Cmd 4568, 1934), presented to Parliament in 1934, paras 229(iv) and 230(6).
[12] Working Party to Review the Trade Marks Legislation Report “Recommended Changes to the Australian Trade Marks Legislation”, presented to the Minister for Science and Technology, July 1992, p 42.
[13] (1964) 111 CLR 511, 514 (Kitto J).
[14] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).
[15] [2022] ATMO 228, [40]-[46] (Hearing Officer Knowles).
I note that both the Applicant’s evidence and submissions refer to the Trade Mark’s status as a protected appellation of origin in Peru and its international recognition (in certain jurisdictions) as a geographical indication (‘GI’). The Applicant’s Submissions refer to Australia’s obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) for the protection of GIs as well as obligations to recognise the status of the Trade Mark as a Peruvian GI under the Australia-Peru Free Trade Agreement. I note the comments made by the hearing officer in paragraphs 2-5 and 39 of Basmati, namely that the role of the hearing officer is not to consider whether the Trade Mark should be protected as a GI, nor to discuss Australia’s broader policy or obligations in this area but rather to determine (with respect to the ground of rejection under s 177) whether the Trade Mark is capable of distinguishing goods certified from goods not so certified. Specifically, Australia’s obligations under the TRIPS Agreement do not require that I accept the application by the Applicant to register the Trade Mark; that is not the appropriate consideration before me. Nor, with respect to the evidence provided in this matter, is the considerable significance and history of the Trade Mark in Peru a relevant consideration, save whether it impacts on the tests under s 177.
I also note the Applicant’s Submissions at [33] which state that there does not need to be an ‘express indication’ in order for a mark to function as a certification mark. As noted in Basmati such an express indication is not necessary, rather the appropriate approach is to consider the Trade Mark in line with the requirement under s 177(1) that it must be capable of distinguishing goods or services certified by the Applicant or approved certifier from goods and services not so certified. However the absence of such an express indication may be relevant in considering evidence of use under s 177(2), as discussed further in paragraph 20 below.
Discussion
Section 177
15. The application to register the Trade Mark has a fundamental issue, as identified in each of the examination reports, namely that in Australia the Trade Mark connotes a type of traditional spirit generally produced in Peru or Chile. While the Trade Mark, in Peru and in other locations where the Peruvian appellation of origin is protected, may refer to a spirit of Peruvian origin produced by distilling fermented grape juice from the pisqueras grape varieties in Peru (and certified by the Applicant), the examination process conducted by this office (and indeed the material annexed to the Applicant’s response to the second examination report) has clearly identified that the Trade Mark is used in Australia, among the consumers for the Applicant’s Goods, to refer to a broader set of spirits than just the Pisco product produced in Peru. It is not sufficient, as the Applicant submits in paragraph 39 of the Applicant’s Submissions, that ‘Peruvian ‘Pisco’ has developed a significant reputation world-wide and is well-known as the original and the best’. The fact that there is extensive use of the Trade Mark in Australia to describe spirits produced outside Peru indicates that the ordinary meaning is broader than it is put by the Applicant. Nor is it sufficient, as submitted orally by the Applicant, to suggest that the ordinary signification of the Trade Mark is the city of Pisco or related geographical region. The relevant test under s 177 is the ordinary signification of a mark in relation to the Applicant’s Goods; which can only mean that the ordinary signification is a type of spirit, not a particular town or region.
16. While the Applicant has put on considerable evidence as to the deep and significant connection between the Trade Mark and Peru (its history, society, economy and people) this office cannot ignore the factual reality that there is a spirit product advertised and sold in Australia as Pisco, produced from various regions in Chile and not certified by the Applicant. As part of the examination process this office must have the ability to examine the market as a whole and not rely solely on evidence of use by an applicant. Nor is it an acceptable outcome, as the Applicant submitted, to accept this mark on the basis that various third parties, including those from Chile, will have the opportunity to object to the Trade Mark under the opposition process. The legitimate desires of other traders are of direct relevance to the question of whether the Trade Mark is capable of distinguishing and this office has a statutory obligation to conduct an examination process and reach a factual conclusion as to the nature of the market and whether the Trade Mark is capable of distinguishing.
17. Based on the ordinary signification of the Trade Mark, being a type of traditional spirit generally produced in Peru or Chile, I find that other traders, particularly those from Chile, would have a legitimate desire to use the Trade Mark in relation to the Applicant’s Goods and therefore the Trade Mark is not inherently adapted to distinguish.
18. I must now consider whether the Trade Mark is capable of distinguishing because of its use, or any other circumstances. I note that in respect of certification marks I must consider only those uses of the certification mark to distinguish goods certified from goods not so certified, rather than any use in a purely descriptive context.
19. The evidence indicates an average of 292,000 litres of the Pisco product has been exported to Australia from Peru per annum between 2005 and 2017 and I presume on the balance of probabilities, that all such products bore the Trade Mark and were certified by the Applicant. However, the Applicant’s evidence presents two significant difficulties when evaluating it in line with the requirements of s 177(2)(b).
20. The first difficulty is identifying whether the presence of the word PISCO on each of the products imported involved the use of the Trade Mark in its distinguishing function, or in a descriptive context (and noting that there is often no clear dichotomy between these two manners of use).[16] While I accept, as noted in paragraph 14 above, that a certification trade mark need not contain an express indication to function as a certification mark, in the absence of such an express indication it is difficult to assess the impact that the presence of the word PISCO on the Pisco product had on Australian consumers; did they recognise the term as indicating that the product had been certified by the appropriate authorities in Peru, or did they view it solely as a descriptive term.
[16] Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [146] (Katzmann J).
21. A second difficulty is the absence of any indication of the size of the relevant market to enable me to assess the impact of the level of sales in Australia on whether the Trade Mark operates to distinguish goods certified by the Applicant from goods not so certified. I have no evidence of the amount of sales of products described using the ordinary signification of the Trade Mark in Australia such that I can, for example, determine the share of the market in Australia held by Pisco products in which the Trade Mark operates as a certification mark. The evidence of the promotion of the Trade Mark as a certification mark is limited as is the evidence of its recognition as a certification mark among Australian consumers. Given the limitations of the evidence of use as outlined above I am not satisfied that, amongst the Australian market for the Applicant’s Goods, that by reason of its use the Trade Mark operates to distinguish goods certified by the Applicant from goods not so certified from other traders.
22. I must also consider whether there are ‘other circumstances’ that have resulted in the Trade Mark becoming adapted to distinguish goods certified by the Applicant from goods not so certified. I note the term ‘other circumstances’ is not defined in the Act but that s 177(2)(b) limits other circumstances to those impacting on the Trade Mark being adapted to distinguish; it does not operate as a broad discretion to allow registration of a trade mark notwithstanding that it fails to distinguish certified goods.
23. The Applicant’s Submissions on this point focus on the status of the Trade Mark as a GI in various jurisdictions around the world and the state of the Register and in particular the comparison with the state of the Register notwithstanding the registration of the trade mark TEQULIA as a certification mark. I have addressed the status of the Trade Mark as a GI earlier in the decision. I find that the Trade Mark’s status as a GI is insufficient to satisfy me that the Trade Mark has become adapted to distinguish goods certified by the Applicant from goods not so certified. Nor does its status as a GI compel this office to allow registration as a certification mark a mark that is not adapted to distinguish. Furthermore, the fact that the Trade Marks Register is relatively devoid of registrations containing the word ‘Pisco’ does not illustrate that the Trade Mark has become adapted to distinguish; it may equally illustrate the status of the word ‘Pisco’ as a descriptive term for a particular type of spirit.
24. At the oral hearing (and in the Applicant’s Submissions) the Applicant indicated that if the office maintained the ground of rejection under s 177, the Applicant was amenable to a number of potential limitations or conditions to the registration of the Trade Mark if these were sufficient to overcome the s 177 ground. In particular it offered a restriction of the Applicant’s Goods to a more limited set of goods (e.g. alcoholic beverages made from pisqueras grape varieties) or a condition to limit registration on the basis that any good to which the Trade Mark is applied must state that it is a product of Peru or otherwise comply with Australian labelling laws.
25. I do not think that either limitation or condition affects the outcome under s 177; the ground for rejection of the Trade Mark arises because the mark in Australia indicates a type of brandy produced in Peru or Chile; simply limiting the application to alcoholic beverages produced from pisqueras grape varieties (used to produce the Pisco product in Peru) means that this Trade Mark (as already provided in the Certification Rules) could only be applied to the Pisco product produced in Peru, which does not reflect the ordinary signification of the Trade Mark in Australia. Secondly a requirement that an alcoholic beverage comply with Australian labelling laws or otherwise state its provenance does not impact on the grounds for rejection; it is assumed that all products to which a trade mark is applied comply with Australian laws, which require a statement of provenance; this would have been assumed by the examiner. I note and adopt the statement made by the hearing officer in Basmati which a similar limitation or condition was sought:
I have considered the Condition, in addition to other possible conditions or limitations that might advance the Applicant’s case. Ultimately, while conditions regarding the use of the Word Mark may serve some purpose to limiting the monopoly sought by the Applicant, they do not serve to render the Word Mark capable of distinguishing the rice certified by the Applicant from other rice that may legitimately be called Basmati by traders outside of India. In order for the Word Mark to truly distinguish the goods of the Applicant, it should not be necessary for consumers to refer to other information on product packaging. [17]
[17] Basmati, [58].
Finally I note that, at the oral hearing, the Applicant’s representative raised the prospect of a further limitation, not expressed as a formal offer proffered by the Applicant, that the Trade Mark could contain some form of recognition that registration would not prejudice any application that Chile may make in this matter. I do not consider that this further limitation would overcome the ground of objection under s 177; even if it were feasible for the Chilean and Peruvian governments to hold identical certification marks, such a limitation does not render the Trade Mark capable of distinguishing goods certified by the Applicant from goods not so certified.
27. For the reasons given above, I am satisfied that there are grounds for rejecting the Trade Mark under s 177.
Section 43
28. Section 43 is reproduced below:
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.
29. To establish this ground, I must find that there is a connotation within the Trade Mark and, because of this connotation, the use of the Trade Mark would be likely to deceive or cause confusion.
30. Section 43 is concerned with a connotation arising from the trade mark itself, not from a likelihood of deception or confusion arising as a result of similarities between a trade mark and another trade mark.[18] The term ‘connotation’ refers to a meaning other than the denotation of the trade mark as an indicator that the Applicant’s Goods have been certified by the Applicant.[19]
[18] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).
[19] See Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [30] (Greenwood J) and [111] (Katzmann J).
31. The basis for the examiner’s objection under s 43 was that as the Certification Rules indicate that the Applicant’s Goods certified under the Trade Mark can only be produced in certain areas of Peru and hence use of the mark would be deceptive or confusing given that the Pisco product can be produced in other regions, such as Chile.
32. I accept the Applicant’s Submissions and withdraw the s 43 ground of rejection. The ordinary signification of the Trade Mark is a type of spirit commonly produced in Peru and Chile. The goods to which the Trade Mark will be applied clearly fall within this category. The fact that the term Pisco might also legitimately be used to describe spirits originating from areas outside of Peru does not render its use as a certification mark in relation to spirits produced in Peru as likely to deceive or cause confusion.
33. I withdraw the ground for rejection raised under s 43.
Decision
34. I am satisfied that there exists a ground for rejecting the application under s 177(1). Accordingly, I reject the application to register the Trade Mark.
Nicholas Smith
Hearing Officer
Oppositions and Hearings
April 26, 2023
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