Ringland Vintners Pty Ltd v Murray Magdziarz

[2002] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Ringland Vintners Pty Ltd to registration of trade mark application 868169(33) - TRIPLE RIVERS - filed in the name of Murray Magdziarz.

Date of Decision:   15 October 2002
Delegate:   Hearing Officer Mary Skivington
Representation:.  Opponent - Madderns, Patent and Trade Mark Attorneys

Decision:   Section 52 opposition successful in terms of section 44

Background

Murray Magdziarz ('the applicant') filed trade mark application number 868169 on 2 March 2001, for the trade mark TRIPLE RIVERS, in respect of goods in class 33, namely:

Fortified and non fortified wine products.

Acceptance of the application was advertised in the Official Journal of Trade Marks on 4 October 2001.  On 21 December 2001 a notice of opposition, listing numerous grounds of opposition, was filed on behalf of Ringland Vintners Pty Ltd ('the opponent'), by its trade mark attorneys, Madderns.

All the evidence in support was filed on 19 March 2002 and a copy of the evidence was served on the applicant by registered mail.  The applicant has not filed or served evidence in answer. As neither party has requested to be heard in the matter, the opposition has been referred to me, as a delegate of the Registrar of Trade Marks, to determine on the basis of the materials on file.

The Evidence

The evidence consists of the following four statutory declarations.

Date	Declarant	Description	Exhibits
6 March 2002	Christopher Lloyd Ringland	Managing director of Ringland Vintners Pry Ltd	CR1 -CR5
7 March 2002	Brendan Joseph Comas	Chief Technology Officer of BOMWeb Pty Ltd
27 Feb.2002	Thomas Alan Melville	Patent Attorney of Madderns
28 Feb. 2002	Stephen John Visentin	Employee of East End Cellars

Mr Ringland states that he is the opponent's predecessor in business and first used the trade mark THREE RIVERS in respect of wines in 1989.  Ringland Vintners Pty Ltd is the successor in title to the trade mark THREE RIVERS.  The trade mark THREE RIVERS has been in continuous use since 1989 and is the subject of registration number 864940 in class 33 for wines.  Its priority date is 6 February 2001.  Mr Ringland, and/or his successor in title have, he says, been selling wines under the trade mark THREE RIVERS, to distributors and private customers in Australia since 1991 as well as exporting to the UK, New Zealand, Switzerland, Singapore and the United States.  Mr Ringland avers that wines labelled with the trade mark are premium wines released in small quantities with the wholesale price in 2001 averaging more than $300 per bottle.  The wine has, states Mr Ringland, gained a considerable reputation amongst Australian and foreign consumers of fine wines.  Exhibits CR 2 to CR5 are copies of articles from Australian newspapers and an American magazine featuring the opponent's shiraz, sold under the THREE RIVERS trade mark.

The Comas and Melville declarations attest to each declarant entering a wine retail outlet in Victoria and South Australia respectively and asking a sales person in each store, 'Do you have any TRIPLE RIVERS wine?'  In both cases the salespersons asked if the declarants meant THREE RIVERS wine.  The Visentin declaration attests that the declarant is an employee of East End Cellars and that on 25 February 2002 a person he now knows to be Thomas Alan Melville entered the store and asked, 'Do you have any TRIPLE RIVERS wine?'  He declares that he assumed that the person was a customer and responded, 'Do you mean THREE RIVERS?'  He declares his belief that it would be very easy to confuse the 'name' TRIPLE RIVERS with THREE RIVERS.

The Law

To the extent that it relates to this application, section 44 of the Trade Marks Act 1995 provides:

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.

Discussion

I have noted that the opponent's wines are for the very exclusive end of the market where buyers will be knowledgeable and will exercise care in their purchases, nonetheless, the goods overlap and the priority date of the opponent's trade mark is earlier than that of the applicant's. The section 44 ground of opposition thus turns on whether or not TRIPLE RIVERS and THREE RIVERS are substantially identical or deceptively similar. Further, I am to consider the situation as if the parties used their trade marks to the full extent of their specifications: re Smith Hayden & Co Ltd's application (1946) 63 RPC 9. The tests for 'substantial identity' are different from those tests, which help to determine 'deceptive similarity'. In respect of the term 'substantially identical' Windeyer J in Shell Co of Australia v Esso Standard Oil, (1963) 109 CLR 407 at 414 said:

... (the two marks) 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

These are simple word marks where each word contributes equally to the identity of each trade mark.  Both trade marks share the word 'Rivers' but there are clear and obvious differences between the marks when they are compared side by side.  'Triple' and 'three', although they have similar meanings, look and sound quite different, so that the trade marks taken as whole are not substantially identical.

The tests for deceptive similarity are more subtle than those for substantial identicality.  On the matter of deceptive similarity Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F S Walton & Co. Ltd  (1937)58 CLR 641 at p658 said:

In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of the potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis or any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

and in Shell Co of Australia Ltd v Esso Standard Oil, supra, Windeyer J said:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is the 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 impression that such persons would get from the defendant's television exhibitions.

The Macquarie Dictionary defines the word 'triple' as 'three times as great, threefold, consisting of three parts, of three kinds'.  'Three' in the same dictionary is defined as 'a cardinal number, two plus one, a set of this many persons or things'.  The meanings are so close that in ordinary conversational speech they are almost interchangeable terms.

I have noticed that wines are frequently trade marked with a reference to some geographic feature, possibly of the vineyard, where the grapes for wine are grown.  In the industry, trade marks containing words such as hill, mountain, valley, tree or river abound so that other features in the trade marks may assume an important role for the purpose of differentiating between the marks.  In this case the words that differentiate the trade marks are words that when used in conjunction with the word Rivers play an essential role in establishing the idea of the mark as a whole.  Triple and three are used to qualify 'Rivers' in the applicant's and the opponent's trade marks respectively.  Both trade marks when used in respect of wines, bring to my mind same idea of a country scene, with a vineyard, idyllically situated where THREE RIVERS meet.

The 'idea' of a trade mark was considered in Jafferjee v Scarlett, (1937) 57 CLR 115 where Latham CJ cited from Lord Herschall's Committee's report at pages 121 and 122:

Two marks, when placed side by side, may exhibit many and various differences, yet the idea left upon the mind by both may be the same, so that a person acquainted with a mark first registered and not having the two side by side for comparison, might well be deceived if goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.  Take, for example, a mark representing a game of football; another mark may show the players in a different dress and in very different positions, and yet the idea conveyed by each might be simply a game of football.  It would be too much to expect that persons dealing with trade-marked goods, and relying, as they frequently do, upon the marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing

The trade marks under consideration in that case were representations of athletes.  In this case  the trade marks under consideration are word marks but the same principles apply, as word marks, may equally create ideas or mind pictures by which they will be remembered.  There is a natural connection between the words 'triple' and 'three' and when each is joined with the word 'rivers' the same image comes to mind.  I think it is probable that many consumers on seeing one of the marks and not having fixed the 'exact details' of the other in mind would confuse these semantically similar trade marks because the idea left upon the mind by both trade marks is the same.

The connection, in the minds if ordinary consumers, between the words 'triple' and 'three' is so close that it is likely, in my opinion, that confusion would also arise because consumers would consider that these trade marks were related and denoted wines from a common source.  In John Fitton & Co Ltd's Application (1949) 66 RPC 110 at 113 the Assistant Comptroller said:

..the Registrar is required to postulate a simultaneous use of the two marks under consideration, whether or not one is already in use, and to assess to the best of his ability the likelihood of ensuing confusion or deception, and no limitation is, to my mind, placed upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or confusion or deception as to the trade provenance of the goods.

The Comas and Melville declarations do, in fact, demonstrate that ordinary people are likely to make a connection between the words 'three' and 'triple'.  I do not know if the applicant is currently using the trade mark TRIPLE RIVERS but the THREE RIVERS trade mark has been in use since 1989, according to the Ringland declaration.  It is clearly evident that people knowing of the opponent's trade mark, were confused when wine under the applicant's trade mark TRIPLE RIVERS was requested.  I believe this to be persuasive evidence that deception and confusion would result if both trade marks were to be registered.

French J in Registrar of Trade Marks v Woolworths, 45 IPR 411 at 426 said:

The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

And at 428:

..the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.'

I am satisfied that there is a real likelihood that many consumers would confuse the trade mark TRIPLE RIVERS with THREE RIVERS and as a consequence I find that TRIPLE RIVERS is deceptively similar to THREE RIVERS. Therefore, the opponent has been successful on the basis of the section 44 ground of opposition.

Decision

The opposition has been successful and I refuse to register trade mark application number 868169.

Costs

The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

Mary Skivington

Hearing Officer

Trade Marks Hearings

15 October 2002