Richard Hamilton v Me and Da Hamilton

[1996] ATMO 51

TRADE MARKS ACT 1955


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

Opposition by M E and D A HAMILTON trading as EWELL’S VINEYARDS to application No 550816 in the Name of RICHARD HAMILTON

As provided in the transitional provisions of Part 22 of the Trade Marks Act 1995 the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

The application

On 19 February 1991 an application for the registration of a trade mark was lodged on behalf of Mr Richard Hamilton (the applicant) of Main South Road, Willunga, South Australia by Mr H K Schulze, patent attorney. The application, for the registration of the words HAMILTON ESTATE, in respect of “all goods in Class 33”, was allocated the number 550816. It carried an endorsement to the effect that it was being made pursuant to s45 of the Trade Marks Act 1955 and the accompanying statement by Mr Hamilton as to the use or proposed use of the trade mark was that he (Mr Hamilton) proposed to assign the trade mark to a body corporate about to be constituted with a view to the use by that body corporate of the trade mark in relation to the goods in respect of which registration of the trade mark was sought.  This is in accordance with the provisions of para 45(1)(a) which states:

Application may be accepted where trade mark is to be used by assignee or registered user

45. (1) An application for the registration of a trade mark may be accepted, and the trade mark may be registered, notwithstanding that the applicant does not use or propose to use the trade mark-

(a) if the Registrar is satisfied that a body corporate is about to be constituted and that the applicant intends to assign the trade mark to the body corporate with a view to the use by the body corporate of the trade mark in relation to the goods or services in respect of which registration is sought; or

...

(2) Where a trade mark is registered under the last preceding sub-section in the                name of an applicant who relies on an intention to assign to a body   corporate, then, unless within such period as is prescribed or within            such further period, not exceeding 6 months, as the Registrar allows,                   the body corporate has been registered as the proprietor of the trade   mark in respect of the goods or services in respect of which the trade                   mark is registered, the registration shall cease to have effect at the   expiration of that period and the Registrar shall amend the Register   accordingly.

After examination the application was advertised as accepted on 4 August 1994.  The acceptance was in Part B of the Register and was subject to the entry of the following endorsements:

It is a condition of registration that the mark will only be used in relation to wines produced in South Australia.

Accepted on provision of evidence of use.

Grounds of opposition

On 4 November 1994 a notice of opposition to the registration of the trade mark was lodged by M E & D A HAMILTON trading as EWELL VINEYARDS (the opponents).  The grounds of opposition were that the mark was not distinctive or capable of becoming distinctive of the applicant’s goods in terms of s25 of the Act; that the applicant was not the proprietor of the mark in terms of s40 of the Act; that the mark would offend against the provisions of s28 of the Act inasmuch as:

• use of the mark would be likely to deceive or cause confusion [para (a)];

• use of the mark would be contrary to law [para (b)];

• the mark would not be entitled to protection in a court of justice [para (d)].

The notice also invoked the Registrar’s discretion to refuse registration of the mark on any of the above grounds or any other ground.

The evidence

The opponents’ evidence in support of their opposition consists of :

• declaration by Richard Stuart Catt, patent attorney, of R K Maddern & Associates, together with Exhibits RSC1 and RSC2;

• declaration by Mark Eric Hamilton, one of the present opponents, together with Exhibits MEH1-MEH3 (the opponent’s first declaration).

The applicant’s evidence in answer to those declarations consists of a declaration of the applicant himself, Richard Burton Hamilton.

The opponents’ evidence in reply consists of:

• declaration by Mark Eric Hamilton (the opponent’s second declaration) together with Annexure MEH1; and

• six trade declarations from Paul Clemens Backen, Peter A James, Brenton Richard Dansie, William James Linke, Edward Robert Tames Benger and David Leslie Jennings.

Service of the above evidence was completed on 28 February 1996 and on 26 March 1996 the opponents requested a hearing of the opposition.  The hearing was set down in Canberra on 19 September 1996.  Mr Alun Thomas of Collison & Co, patent attorneys, appeared for the applicant and Mr Mark Hamilton, solicitor and one of the opponents in the matter, represented the opponents.  Both parties chose to make submissions by telephone although Mr Hamilton also lodged written submissions a copy of which was transmitted to Mr Thomas by facsimile prior to my taking oral submissions.

The submissions

Mr Hamilton addressed first the question of the registrability of the mark in terms of s25 of the Act.

Section 25

Section 25 is in the following terms:

Registrable trade marks-Part B

25. (1) A trade mark is registrable in Part B of the Register if it is distinctive, or is not      distinctive but is capable of becoming distinctive, of goods or services in       respect of which registration of the trade mark is sought and with which the    applicant for registration is or may be connected in the course of trade.

(2) A trade mark may be registered in Part B of the Register in respect of any         goods or services notwithstanding the registration of the trade mark or of a   part or parts of the trade mark in Part A of the Register, in the name of the        same person, in respect of the same goods or services or other goods or   services.

Mr Hamilton submitted that for a trade mark to be “capable of becoming distinctive” in terms of this section it must be capable of eventually meeting the requirements for registration in Part A of the Register.  However, there are certain marks, he said, such as the geographical MICHIGAN and the laudatory term PERFECTION which, even if shown to distinguish the relevant goods, could not be regarded as distinctive for the purposes of registration in Part A as they do not possess even a small degree of inherent distinctiveness: Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511; Joseph Crosfield  Sons Ltd’s Application (1909) 26 RPC 837. It followed that such marks are inherently incapable of becoming distinctive and cannot be registered in Part B.

According to s26(2) of the Act, in determining whether a trade mark is distinctive regard must be had to the extent to which (a) the trade mark is inherently adapted so to distinguish and (b) by reason of the use of the trade mark or any other circumstances the trade mark does so distinguish.  The meaning of this requirement was explained by Gibbs J., as he then was, in Burger King Corporation v The Registrar of Trade Marks(the Whopper case) 128 CLR 417, at 424:

That sub-section requires two matters to be considered, inherent adaptability to distinguish and distinctiveness in fact acquired by use or otherwise.  When the question is whether the trade mark is capable of becoming distinctive, no difficulty arises about the nature of the inquiry so far as concerns the second of these matters; the inquiry becomes whether the trade mark is capable in fact of distinguishing the goods, by reason of future use or other circumstances.  However, as to the first matter the inquiry remains the same as that which is to be made when the issue is whether the trade mark is distinctive, that is, whether the trade mark is inherently adapted to distinguish the goods.  Inherent adaptability is something which depends on the nature of the trade mark itself - ........ and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.

In the present case, Mr Hamilton submitted, the evidence showed that the use of the mark HAMILTON ESTATE with respect to wines was deceptive or confusing and that the mark could never become distinctive of the product, whether limited to South Australian wines or used with respect to Australian wines in general.

Mr Hamilton then referred me to a declaration of Gillian Doyle, employed by Richard Hamilton Wines Pty Ltd as Administrator, which had been lodged in support of the application for registration in response to an examiner’s objection that the main feature of the trade mark, the word HAMILTON, was a common surname and also a geographical name.  This objection was taken pursuant to s24(1)(d) of the Act.  Mr Hamilton claimed that there were serious deficiencies in the declaration both as regards its accuracy and the extent of the use of the mark there disclosed.  In clause 4 of that declaration Ms Doyle had stated that the trade mark was first used by Richard Hamilton Wines Pty Ltd in 1985.  This statement Mr Hamilton asserted was false since that company had not been incorporated until 12 April 1991, and he referred me to Exhibit MEH1 to his first declaration in support of the opposition which is a copy of a Company Extract from the records of the Australian Securities Commission (ASC) which he said bore this out.  He then drew my attention to an assignment of the mark from Richard Hamilton to Richard Hamilton Wines Pty Ltd, dated 11 May 1991, which had not been lodged during the course of examination of the applicant’s trade mark application but had eventually been lodged as part of the applicant’s evidence in answer to the opposition - Exhibit RBH2 of the declaration by Richard Burton Hamilton.  Doyle’s declaration was therefore inaccurate, he said, in suggesting that the trade mark had always been used by the company Richard Hamilton Wines Pty Ltd whereas prior to April or May of 1991 use of the mark must have been by Richard Hamilton.  He added that according to Exhibit GD1 of Doyle’s declaration, which consists of copies of various wine labels, it appeared that the mark was probably not used by the company until about late 1991 or 1992.  Also, according to the Doyle declaration, a total of about $760,000 worth of wine had been sold under the trade mark over a 9-year period from 1985 to 1993.  He submitted that in comparison with the total sales of the industry as a whole that amount was insignificant and would not have been enough to achieve marketplace penetration or lead to a general knowledge of the trade mark amongst the general wine-buying public.

Mr Hamilton also stated that according to the Liquor Licensees Guide (SA) (sic) for the State of South Australia for the years 1985 to 1987 wines bearing the trade mark HAMILTON ESTATE were not offered for sale to the wholesale trade during those years.  Although he had not been able to obtain copies of that publication for the years 1989 and 1990 he had ascertained that products under the trade mark were offered for sale to the wholesale trade through the Guide by 1990.  A copy of the Licensees’ Liquor Guide for December 1993/January/February 1994 is exhibited to his declaration in support at MEH3 and shows a 1991 Cabernet Sauvignon listed under HAMILTON ESTATE.  Mr Hamilton also stated that he himself could not recall seeing any product bearing the name HAMILTON ESTATE in the marketplace until at least the late 1980’s.  From his own observation he said that by about 1993 the range of wines available under the HAMILTON ESTATE label appeared to have virtually disappeared; he had been unable to purchase any product bearing the trade mark.  He said that in May 1996 he had visited two hotels, both with drive-in bottle shops, and a leading wine shop in North Adelaide and could find no products on sale bearing the trade mark.  On asking whether those outlets had any HAMILTON ESTATE products they professed ignorance of the label and was himself asked whether he meant RICHARD HAMILTON or HUGH HAMILTON or ROBERT HAMILTON.  From this he concluded that the HAMILTON ESTATE label by itself, without further indication of the source of the goods, was not distinctive of any one particular trader.  From this Mr Hamilton went on to argue that the word HAMILTON is a common surname, not only generally but also within the wine industry, having been used over a considerable period of time by a number of vintners by the name of Hamilton.  In particular, he said, the name had been used in connection with a number of wine products of Hugh Hamilton, Robert Hamilton & Son, Richard Hamilton, Richard Hamilton Wines Pty Ltd, Hamilton’s Ewell Vineyards Pty Ltd and Syd Hamilton’s Leconfield.  By his understanding Richard Hamilton had commenced to sell wine under the name RICHARD HAMILTON in about 1972 and that his brother Hugh Hamilton had sold wines under the label HUGH HAMILTON WINES since the early 1990’s.  Mr Hamilton himself and his father had sold wines in partnership under the label ROBERT HAMILTON & SON since 1982, while Syd Hamilton had for many years sold wine using his name in association with the name LECONFIELD.  Hamilton Wines Pty Ltd was then incorporated in 1991.  The wines of the various proprietors of the Ewell Vineyards (later incorporated as Hamilton’s Ewell Vineyards Pty Ltd) he said had been marketed under the surname HAMILTON for more than five generations from 1837 until the company was sold to Mildara Wines Limited in 1979.  He referred me to Exhibit MEH2 of his declaration in support which is a copy of a chapter on the Hamilton’s Ewell Vineyards from a book, The History of Marion on the Sturt, by Alison Boling which gives a short history of the Hamilton family’s involvement in the wine industry as Hamilton Ewell Vineyards.  Mr Hamilton said that Mildara Wines Limited continued to sell wines under the label HAMILTON’S EWELL VINEYARDS and HAMILTONS from 1979, when it purchased the business until the late 1980’s.  Moreover, he said, he and his wife were the owners of the business name HAMILTON’S EWELL VINEYARDS and used that name extensively in connection with their business.  He referred me furthermore to Exhibit MEH3 which includes extracts from the Australia and New Zealand Wine Industry Directory for the years 1993 and 1994 which give some details as well as a brief history of Robert Hamilton & Son, Richard Hamilton Winery and Hugh Hamilton Fine Wines, and also a copy of page 475 of the 1994 Adelaide White Pages which shows entries for Hugh Hamilton Fine Wines, Richard Hamilton Wines and Hamilton’s Ewell Vineyards.

Therefore, Mr Hamilton submitted, the name Hamilton by itself on a wine label was insufficient to identify or distinguish a particular wine product as being from one particular wine maker and that the word ESTATE was commonplace on wine labels and added nothing to the distinctiveness of the mark as a whole.  He referred to the declaration of Richard Stuart Catt which is a copy of a search printout from the trade mark database and which showed, he said, that there were some 151 trade marks which incorporated the word ESTATE.  He said that the words HAMILTON ESTATE appeared to have been always used with other words and features and that, although HAMILTON ESTATE itself was not in itself distinctive or capable of becoming distinctive, he conceded that those words in combination with the name RICHARD HAMILTON might have some degree of inherent capacity to become distinctive.

Mr Hamilton also referred to the geographical significance of the word HAMILTON in that it is the name of many cities, towns, villages etc in many English-speaking countries.  This, he said, further reinforced the non-distinctiveness of the trade mark since it was common to use geographical names as well as surnames in combination with the word ESTATE on wine labels.

In referring to the declaration of Richard Burton Hamilton Mr Hamilton submitted that the copies of invoices for the years 1988 to 1990 exhibited to that declaration as RBH3 did not evidence a large volume of sales .  Furthermore, he said, the fact that no invoices for earlier or later years were provided was consistent with his submission that the HAMILTON ESTATE label had not been used until at least the late 1980’s and had not been used in recent years. From this he drew the inference that the applicant was changing its label because of the risk of deception or confusion in the use of the mark HAMILTON ESTATE without further material identifying the source of the goods.

Mr Hamilton then referred to the opponents’ evidence in reply.  Exhibit MEH1 to his second declaration consists of a copy of an article produced by the firm of accountants Arthur Andersen entitled THE WINE INDUSTRY 1994 Statistical Highlights and the Year Ahead.  The article showed, he said, the great size of the Australian domestic wine market and served to highlight the insignificant nature of the claimed use of the trade mark HAMILTON ESTATE.  There are a further six declarations from persons connected in one way or another with the retail sale of wines.  Five of those declarants stated that they had no knowledge of the use of the name HAMILTON ESTATE as a trade mark for wines as at the date of the declaration.  They also state their belief that the label HAMILTON ESTATE could not be distinctive of any particular trader since Hamilton is a very common surname and because there had been several different and unrelated wine producers in South Australia selling wine under that name.  Two of the declarants state that it is a common practice to combine a surname with the descriptive word ESTATE and to use such a combination as a trade mark for wines.  All of the declarants state that they would be uncertain as to the origin of wines bearing the label HAMILTON ESTATE unless they were provided with further identifying material on the label.  On the basis of this evidence Mr Hamilton submitted that the trade mark HAMILTON ESTATE was likely to lead to deception or confusion, that it was incapable of becoming distinctive and should not be registered even in Part B of the Register.

Mr Thomas, for the applicant, pointed out that the application had been lodged under the provisions of para 45(1)(a) of the Act relying on an intention to assign the trade mark to a company about to be formed.  The mark had in fact been assigned 0n 11 May 1991 and the necessary documents lodged at the Trade Marks Office on 23 May 1991.

With respect to the ground of opposition under s28 of the Act Mr Thomas submitted that, following the decision of the High Court in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited (1991) 171 CLR 161, that section is required to be interpreted conjunctively in the sense that the operation of para 28(a) is governed by para 28(d). He said that the opponents had failed to adduce any evidence of “blameworthy conduct” on the part of the applicant and for that reason the ground of opposition must fail.

The ground under s40 of the Act must likewise fail, said Mr Thomas, because the opponents had failed to adduce any evidence that they or any other person had used the mark prior to the applicant and could therefore assert a right of proprietorship as against the applicant.

In reference to the opponents’ evidence in support Mr Thomas claimed that the Catt declaration assisted the applicant rather than the opponent since it showed that a great number of trade marks consisting of a surname  or a geographical name plus the word ESTATE are registered trade marks, marks such as WYNDHAM ESTATE, COONAWARRA ESTATE, RYECROFT ESTATE, HUTT RIVER ESTATE etc.  This showed, he said, that there was no argument that such a combination was inherently unregistrable.  With reference to the Doyle declaration he said that the Exhibits to that declaration showed a clear use of the mark as a trade mark..  Furthermore, he said, the opponents’ submission that the applicant’s sales were insignificant in comparison with the overall sales of wine in Australia was meaningless.  The fact remained that the trade mark, which consisted not of the surname HAMILTON but the words HAMILTON ESTATE had been used in relation to wine.  No other person by the name of Hamilton had opposed the application and, with respect to Robert Hamilton and Hugh Hamilton, there was no evidence of the extent of sales or reputation of either of those persons or of any other person by the name of Hamilton.  The applicant’s declaration had set out clearly the history of the use of the trade mark HAMILTON ESTATE and the invoices exhibited to the declaration clearly showed use of the mark throughout Australia.  With regard to the evidence in reply he reiterated that the comparison there made between the extent of the applicant’s sales and total sales of wine throughout Australia was not a valid comparison and that the evidence of six selected declarants was irrelevant and should be ignored.

With respect to Mr Hamilton’s submissions Mr Thomas argued that the Michigan and Perfection cases were concerned with single word marks and not, as here, with a combination such as HAMILTON ESTATE.  He said that the history of the Ewell Vineyards was interesting historically but had no bearing on the present case.  In regard to Mr Hamilton’s submission that he (Mr Hamilton) and his wife had used the business name HAMILTON’S EWELL VINEYARDS extensively in connection with their business Mr Thomas referred to para 6.2.8 of the first Hamilton declaration where Mr Hamilton had stated that “We will market wine extensively utilising that name” (viz HAMILTON’S EWELL VINEYARDS).  As to the geographical significance of the word “Hamilton” Mr Thomas submitted that there was no evidence to show that any place with that name was connected in any way with winemaking or that any such place was capable of becoming a centre of that activity.  In any case, he said, the registration was to be restricted to wines produced in South Australia.  In summary therefore Mr Thomas submitted that the mark was capable of becoming distinctive and should be permitted registration in accordance with the provisions of s25.

Decision

Although the question of proprietorship was not pursued vigorously by Mr Hamilton at the hearing it was stated as a ground of opposition and it is necessary for me to deal with it.

Proprietorship

As I understood Mr Hamilton’s position in relation to proprietorship it was that the name Hamilton has been used by other wine makers and retailers and that therefore Mr Hamilton could not claim proprietorship of the trade mark HAMILTON ESTATE.  Despite some earlier doubts it is now established that for the issue of proprietorship to arise at all the challenged mark must be the same mark or a mark substantially identical with the mark on which a claim to proprietorship is based.

In Carnival Cruise Lines v Sitmar Cruises Limited (1994) AIPC 91-049 Gummow J then of the Federal Court, in considering the disputed claims to proprietorship of the marks FUNSHIP or FUN SHIP, posed the following questions:

Will substantial identity suffice? Or may questions of deceptive similarity be       considered? Or is visual identity essential?

Then, having considered a submission based on The Shell Company of Australia Limited v Rohm and Haas Company (1949) 78 CLR 601, His Honour continued:

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical" as it appears in s62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.

...

In the present case there would, in my view, be no material distinction to be drawn between "Fun Ship" and "Funship" or between the addition of the definite article or the use of the plural. However, "Fun Ship" is for this purpose a substantially different trade mark to "Sitmar's Funship" and "Fairstar The Funship".

In Karu Pty Ltd v Robert Leon Jose (1994) 30 IPR Drummond J, while noting that the comments of Gummow J were obiter, applied them directly to the matter before him.

The trade mark HAMILTON ESTATE is not the same as the word HAMILTON used as a trade mark, if indeed it has been used as a trade mark rather than merely the name of one or more suppliers or as a business name, as to which there is not sufficient evidence.  Nor is it substantially identical with the word HAMILTON alone.  Although the addition of the word ESTATE might not be enough to overcome an objection of deceptive similarity under s33 of the Act, that is not the question I am called on to decide.  I therefore find that there is no evidence of prior rights in the trade mark HAMILTON ESTATE or a mark substantially identical with it so as to raise an objection to registration in terms of s40 of the Act and the opposition therefore fails on that ground.

Section 28

There is some evidence that the word HAMILTON has been used as part of a trade mark or as part of a business name in relation to wines by persons other than the applicant.  However, evidence as to the extent of the use of such marks or names and therefore as to the extent of the reputation acquired by persons other than the applicant is insufficient for me to find that an objection to registration of the trade mark exists in terms of s28 of the Act.

The test to be applied under s28 may be stated as follows, paraphrasing the words of Evershed J. in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97, in which he compared the tests under ss.11 and 12 of the Trade Marks Act 1938 (UK), which correspond to ss.28 and 33 of the Trade Marks Act 1955 (Cth):

The questions for my decision ... have been formulated, and I think accurately formulated, as follows:

(a) (Under s.28) "Having regard to the reputation acquired by the name HAMILTON, is the Registrar satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?";

On the evidence provided by the six trade declarants alone I am not able to be satisfied that the extent of use of HAMILTON as a trade mark in relation to wines has been such that the use of the trade mark HAMILTON ESTATE in relation to wines would lead to the reasonable likelihood of deception and confusion being caused amongst a substantial number of persons.  The opposition therefore fails on that ground.

Section 25

Mr Hamilton argued that the trade mark HAMILTON ESTATE was inherently unregistrable consisting as it does of the combination of a common surname and a word which is common to the trade in the relevant goods.  However, in view of the large number of such combinations registered in respect of wines I am unable to find that the mark is totally devoid of such a degree of inherent distinctiveness as would render the mark unregistrable in Part B of the Register.  The examiner was satisfied on the evidence of use of the mark that it was capable of becoming distinctive of the applicant’s wines and accepted the mark with a geographical restriction to the State of South Australia.  Mr Hamilton, however, attacked the evidence of use as misleading and inherently insufficient in view of the total market sales of wines throughout Australia.  Clause 4 of the Doyle declaration states:

My company first used the Trade Mark in relation to goods in Class 33 so as to indicate a connection in the course of trade between itself and the goods in 1985 and that the Trade Mark has been used extensively and continuously since that time.

Mr Hamilton adduced evidence to show that the company Richard Hamilton Wines Pty Ltd was not incorporated until 12 April 1991.  The trade mark was assigned by Richard Hamilton to that company on 11 May 1991 within the six-month period required by para45(1)(a) of the Act.  I take Ms Doyle’s statement to mean therefore that the mark was used by the company or its predecessor in business, Richard Hamilton, since 1985.

Next Mr Hamilton submitted that the extent of sales of goods under the mark were very small in relation to the total sales of wine throughout Australia.  While it is true that the applicant’s sales are insignificant as a proportion of such a large volume of sales, nevertheless those total sales are made in connection with many hundreds of trade marks and I cannot accept that a trade mark should be debarred from registration until it has captured a large proportion of total sales of a product.  Part B registration requires that a mark should be capable of becoming distinctive, not that it is already distinctive.  The examiner that the extent of use of the mark warranted the conclusion that it was capable at some future time of becoming distinctive and I have been shown no good reason why I should reach a come to a contrary. conclusion.

As the geographical significance of the word HAMILTON I think I need only say that while HAMILTON is a geographical name HAMILTON ESTATE is not.  For that reason alone I must reject the suggestion that an objection to registration exists on that ground.

Conclusion

I have found that the opposition fails on all of the grounds relied on.  I therefore direct that subject to any appeal from this decision the trade mark be registered.  I award costs to the trade mark applicant.

Michael Homann
Hearing Officer

20 October 1996.