Sandro Bottega v Ace of Spades Holdings, LLC

[2023] ATMO 134

TRADE MARKS ACT 1995

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

Re:Opposition by Ace of Spades Holdings LLC to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2084836 (International Registration number 1527422) (class 33) – combination of shape and colour - in the name of Sandro Bottega

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Davies Collison Cave Pty Ltd

Holder: Spruson & Ferguson

Decision:

2023 ATMO 134

Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under reg 17A.33 – sections 42(b), 43, 58, 60 and 62A of the Trade Marks Act 1995 (Cth) considered – no ground established – revocation of acceptance sought – no power to revoke - protection to be extended

Background

1. This opposition is made under reg 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’)[1] by Ace of Spades Holdings, LLC (‘Opponent’) to the extension of protection for an International Registration Designating Australia (‘IRDA’), the details of which I reproduce below:

   [1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

   Trade mark number: 2084836

   International registration number: 1527422

   Holder: Sandro Bottega (‘Holder’)

   Filing date: 26 February 2020 (‘Relevant Date’)

   Trade mark kind: shape

   Trade mark:

   (‘Trade Mark’)

   Description: ‘Pink’ (‘Original Endorsement’)[2]

   Specification: class 33 - Alcoholic beverages (except beers); brandy; peppermint liqueurs; rice alcohol; spirits [beverages]; bitters; anisette [liqueur]; anisette [liqueur]; aperitifs; arak [arrack]; alcoholic beverages (except beer); fruit (alcoholic beverages containing -); pre-mixed alcoholic beverages, other than beer-based; distilled beverages; cocktails; curacao; digesters [liqueurs and spirits]; alcoholic essences; alcoholic extracts; alcoholic fruit extracts; gin; mead [hydromel]; kirsch; liqueurs; nira [sugarcane-based alcoholic beverage]; rum; sake; cider; perry; piquette; wine; vodka; whisky. (‘Designated Goods’)

   [2] This is as it appeared in the notification of the IRDA from the International Bureau.

2. The IRDA was examined and acceptance was advertised on 7 August 2020. The Opponent filed a Notice of Intention to Oppose on 7 October 2020. The Opponent then filed its Statement of Grounds and Particulars (‘SGP’) on 9 November 2020. The Holder filed a Notice of Intention to Defend on 5 March 2021.

3. On 9 June 2021, the Opponent filed its Evidence in Support (‘EIS’) consisting of a declaration of Sebastien Besson, Chief Executive Officer of Armand de Brignac Holdings, LLC, a wholly owned subsidiary of the Opponent (‘Subsidiary’), dated 8 June 2021 with exhibits labelled Exhibits 1 to 11 (‘Besson’). The Holder filed no Evidence in Answer.

4. On 14 October 2021 the Opponent requested to be heard by way of written submissions. The Opponent’s Attorney Davies Collison Cave Pty Ltd filed its written submissions on 11 March 2022. Also on 11 March 2022, the Holder requested that the following endorsement be recorded against the application for extension of protection:

   Colour Claimed: PINK. The mark consists of a three-dimensional pink coloured bottle with a dark pink foil covered cap, a lighter coloured band around the neck of the bottle below the foil cap, and having the letter “B” below the said band, as depicted in the representations filed with the application.

5. The endorsement as it appears on the Australian Trade Mark Search now appears as follows (‘Amended Endorsement’):

   Pink.

   Colour Claimed: PINK. The mark consists of a three-dimensional pink coloured bottle with a dark pink foil covered cap, a lighter coloured band around the neck of the bottle below the foil cap, and having the letter “B” below the said band, as depicted in the representations filed with the application.

6. The Holder requested to be heard by written submissions and its Attorney, Spruson & Ferguson, filed written submissions on 18 March 2022.

7. Before the matter was decided the parties requested a cooling off period which was granted from 6 April 2022. On 7 July 2022 both parties were informed that the Original Endorsement had been amended. On 5 October 2022 the parties again requested a further cooling off period of 6 months, which was granted. The second cooling off period expired on 6 April 2023.

8. I was allocated the matter for decision as a delegate of the Registrar of Trade Marks (‘Registrar’). Because the amendment of the Original Endorsement took place after the submissions of the Opponent, I afforded the parties an opportunity to provide additional submissions on the specific issue of the Amended Endorsement. On 18 May 2023 I directed them to do such. The Opponent filed additional submissions on 31 May 2023 (‘Opponent’s Additional Submissions’). The Holder did not file any additional submissions.

   Grounds and Onus

9. Regulation 17A.34 broadly provides that an extension of protection can be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds of opposition specified in ss 58 to 61 and 62A. The Opponent has the onus of establishing at least one of the nominated grounds of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

10. The SGP nominates grounds of opposition under ss 42(b), 43, 58, 60 and 62A. The date for the rights to be determined is the Relevant Date.

    Evidence

    EIS

11. Of particular relevance in Besson, and shown throughout it and Exhibits 1 to 11, are various bottles used by the Subsidiary. The Subsidiary has sold and promoted gold and pink bottles. A silver-coloured bottle with an otherwise identical design also appears, though less frequently. The gold bottle has been sold in Australia from November 2009 and the pink bottle from June 2010. I reproduce the Gold Bottle and Pink Bottle at Schedule 1 to these written reasons.

12. The Exhibits to Besson in summary consist of:

    ·Exhibit 1 being various undated screen captures of the Subsidiary’s website and a Wikipedia page about the Subsidiary.

    ·Exhibit 1A being an extract of lyrics of, and 2010 YouTube screen capture for a music video with, a song titled Show Me What You Got, performed by the musician Jay-Z. An extract of a Wikipedia page also provides background for the song and music video.

    ·Exhibit 2, being a confidential exhibit, consisting of 26 invoices dated between 2009 and 2015 which list the sales of bottles of champagne under the trade mark ‘Armand de Brignac (“Ace of Spades”)’. Besson confirms the sales shown by the invoices are for the Gold Bottle and Pink Bottle. There is also an invoice register report showing sales to an Australian business with invoice numbers alongside dates in 2016 to 2019, without specification of particular goods or trade marks, though showing total prices for the invoices. Besson declares the invoices to be for the ‘gold, pink or other metallic coloured bottles in Australia’. In general sales for the Pink Bottle appear much less than those shown for the Gold Bottle.

    ·Exhibit 3 being current and historical screen captures from the website of the Subsidiary’s Australian distributor Southtrade International. Those which are dated are from 2018 and 2019 and show the Gold Bottle and Pink Bottle.

    ·Exhibit 4 which provides undated screen captures from websites of 6 Australian online retailers selling the Pink Bottle and Gold Bottle.

    ·Exhibit 5 being over 150 copies of advertising for, reviews of and articles about the Subsidiary’s champagne published throughout the world. A large proportion of these are not dated and of those which are dated a large majority are dated exclusively between 2007 to 2009. Some publications are in languages other than English without a verified translation. The articles are almost entirely for readers outside Australia and there is no indication of their circulation rate to Australian consumers. Many articles show celebrities with the Gold Bottle or Pink bottle.

    ·Exhibit 6 being copies of 6 articles said to be targeted at Australia or Australian consumers, which mention the Subsidiary and its champagne. I note that other than one article by Business Insider Australia, dated 8 November 2014, the articles appear to be for an international audience that could include Australia. One article is dated after the Relevant Date.

    ·Exhibit 7 being confidential total revenue figures for sales of champagne in the Gold Bottle in Australia and internationally each for years 2009 to 2021.

    ·Exhibit 8 being confidential total revenue figures for sales of champagne in the Pink Bottle in Australia and internationally each for years 2009 to 2021.

    ·Exhibit 9 being confidential total marketing expenditure figures said to promote all bottles in Australia and internationally for years 2009 to 2021. This shows only a totalled marketing spend for all countries together.

    ·Exhibit 10 being copies of overseas certificates of registration of trade marks in the name of Opponent from the European Union, Japan, United Kingdom, Turkey, China and Macau.

    ·Exhibit 11 being copies of decisions by the European Union Intellectual Property Office (‘EUIPO’) Second Board of Appeal concerning the Opponent’s trade marks in the European Union.

    Section 60

13. The Opponent relies upon s 60, which provides:

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

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)  because of the reputation of that other trade mark, the use of the first‑mentioned     trade mark would be likely to deceive or cause confusion.

    Note:          For priority date see section 12.

14. To satisfy s 60(a), the Opponent must establish that at the Relevant Date another trade mark had acquired a reputation in Australia.[5] The word ‘reputation’ here means, ‘the recognition of the [trade mark] by the public generally’.[6] Something more than a reputation among a small number of persons is required and the size and extent of the class of persons may vary depending on the circumstances.[7] Reputation may be inferred from a high sale volume, together with substantial advertising expenditures and other promotions, without direct evidence of consumer appreciation of the Trade Mark.[8] Where there is use alongside other trade marks, this may overwhelm or discount the value of any evidence of use.[9] However, a component part of a larger composite trade mark, or use in conjunction with other trade marks, can still constitute use of a trade mark.[10] The use as shown in the evidence must be use such that it indicates a connection in the course of trade between the goods and the person who applied the trade mark to the goods.[11] This is an objective question from the perspective of the ordinary consumer.[12]

    [5] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 (‘ConAgra Inc’), [77] (Lockhart J).

    [6] McCormick & Co Inc v McCormick [2000] FCA 1335 (‘McCormick’), [127] (Kenny J).

    [7] Conagra Inc (n 5) [131]-[132] cited with approval in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [81] (Greenwood, Jagot and Beach JJ).

    [8] McCormick (n 6) [80] (Kenny J).

    [9] Anheuser-Busch Inc v Budejovicky Budvar [2002] FCA 390, [191] (Allsop J).

    [10] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’); RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2022] FCA 1042 [190] (Rofe) (‘RB (Hygiene Home)’) citing Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, [97] (Sunberg J); Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664, [133] (Kenny J); Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (2014) 106 IPR 291, [245] (Murphy J).

    [11] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sunberg and Finkelstein JJ), cited with approval in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [43] (French CJ, Gummow, Crennan and Bell JJ).

    [12] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 425 (Kitto J) (‘Shell’).

15. The Opponent relies on Coca-Cola Company v PepsiCo Inc (No 2)[13] where Besanko J stated:

    In Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 … (at 347‑349), Gummow J identified a number of principles relevant to whether there has been use as a trade mark in the context of a case involving a word mark. First, he said that a court is entitled to take into account a usage common in the relevant trade. Secondly, he said that the court is entitled to consider the way in which the word has been displayed in relation to the goods or advertisement of which complaint is made. Thirdly, his Honour noted that a word may have a descriptive element, but still serve as a badge of origin. That proposition can, I think, be adapted to the shape of a container. A bottle for non‑alcoholic beverages contains otherwise formless goods and, therefore, one of the functions it performs is as a container. The fact that a bottle performs that function does not, of itself, mean that the shape of the bottle cannot operate as a trade mark. Furthermore, the fact that the shape of a bottle includes a decorative element does not mean the shape may not be used as a trade mark (see Adidas AG and Another v Pacific Brands Footwear Pty Ltd (No 3) (2013) 103 IPR 521; [2013] FCA 905 …). Fourthly, his Honour said that there might be trade mark use and infringement even though a defendant adds words to indicate that it, rather than the plaintiff, is the trade origin of the goods or services in question (see Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & CoLd (1941) 58 RPC 147 …at 161 per Lord Greene MR). Finally, his Honour said that the fundamental question is whether “those to whom the user is directed” are being invited to purchase the goods of the defendants which are to be distinguished from the goods of other traders partly because they are described by the words in question. His Honour emphasised the words “partly because” and noted that this formulation of the fundamental question is based on the statements of Williams J in Mark Foy’s Limited v Davies Coop and Company Limited and Another (1956) 95 CLR 190 at 205.[14]

    Justice Besanko continued:

    In [Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605], Sundberg J identified some general principles in relation to shape marks which are, with respect, helpful. First, his Honour said that whether a person has used a shape or a feature of a shape as a trade mark is a matter for the court, and cannot be governed by the absence of evidence on the point. Secondly, his Honour said that context “is all important” and will typically characterise the mark’s use, either trade mark use or not. Thirdly, his Honour said that there is a spectrum involving, at one end, shape or features that are purely functional and, at the other end, features of a mark that are non‑descriptive and non‑functional. They may make a shape “more arresting of appearance and more attractive, thus providing a means of distinguishing the goods from those of others” (at … [62]‑[63]).[15]

    [13] [2014] FCA 1287 (Besanko J) (‘Coca-Cola’).

    [14] Ibid [200].

    [15] Coca-Cola (n 13) [201].

16. The Opponent submits there is a reputation in what it phrases as a ‘metallic coloured bottle’ (‘Metallic Coloured Bottle’). It states this trade mark comprises, ‘the shape of a bottle in a metallic colour, including gold and pink/rose gold’. However, the Subsidiary’s use of the Metallic Coloured Bottle is not of merely a bottle shape with a metallic colour. Additional elements are used in combination with a metallic coloured bottle shape. The Gold Bottle and Pink Bottle bear a clear depiction of a decorative ace of spades with a cursive letter ‘A’ (‘Ace of Spades Trade Mark’), on both the neck and centrally on the body. The Pink Bottle has a black neck portion terminating the rose pink colour of the body. The highly distinctive Ace of Spades Trade Mark is prominent and conjures the idea of an ‘ace of spades’ as appearing in a deck of cards. There is also a plaque at the lower portion of the bottles with an inscription in cursive writing of the words, ‘Champagne’ and ‘Armand De Brignac’.

17. The Opponent submits, ‘[w]here the issue of whether a shape has been used as a trade mark is concerned, common sense suggests, and authority confirms, that shapes dictated by functional requirements are less likely to involve trade mark use, whereas those which are purely aesthetic are more likely to do so’.[16] It characterises its trade mark for the purposes of s 60 as being not only in shape but also metallic colour. It submits the colour is purely aesthetic and without utilitarian function. Therefore, it submits that it is the metallic colour of the Pink Bottle and Gold Bottle is an arresting and attractive feature which distinguishes the goods. The Opponent submits its use of the ‘Metallic Coloured Bottle’ amounts to use as a badge of origin that would readily distinguish its goods from the goods of other traders.

    [16] Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27, [63] and [69] (Greenwood J) (‘Mayne Industries’).

18. I now assess the EIS and whether a reputation has been acquired in a trade mark. The sales for goods sold in the Pink Bottle and Gold Bottle are substantial on a global level. The Australian sales are of a low volume, even after I note the high relative price for these goods. I note that there has been a period of sales of over ten years in Australia, again of a relatively low total volume and value. There are numerous examples of marketing material reflecting use of the Pink Bottle and Gold Bottle in the evidence. This includes the prominent musician known as Jay Z’s mention of the Subsidiary’s champagne in song lyrics, ‘H.O.V.A gold bottles of that Ace of spade/why even fool with these other guys’.[17] The music video for this song has received media attention and is summarised in one article as showing Jay-Z, ‘rejecting a bottle of Cristal [which I understand is a competitor’s brand of champagne] in favour of Ace of Spades’. There is otherwise undeniably widespread international celebrity and media exposure with the champagne of the Subsidiary and the Ace of Spades brand at least in the years 2007 to 2009 shown in the evidence, though little shown outside this period. Importantly, almost every example of the Subsidiary’s use shows gold or pink bottles prominently bearing the Ace of Spades Trade Mark. Many examples of recognition even specifically note the handcrafted pewter labels of the Ace of Spades Trade Mark and the plaques. Whilst numerous overseas publications and websites mention the Metallic Coloured Bottles, there is no indication of how any reputation in those jurisdictions would extend to Australia. The 6 media articles said to be directed at Australian consumers do not demonstrate as much. One of these states ‘aside from the logo, [it]… stands out for its shiny bottle and fine taste’ though this article also identifies the champagne by the Ace of Spades Trade Mark. Of the 6 screenshots of websites of Australian online retailers who sell champagne in the Pink Bottle or Gold Bottle, some state the champagne is, ‘identifiable by its distinctive gold bottle’ and mention the ‘striking gold bottle design’. Another statement describes the champagne of the Subsidiary as being, ‘housed in the brand's signature metallic bottle…’. However, all of these are undated and so do not assist the Opponent on the fundamental question of whether there was a reputation in Australia at the Relevant Date. There is also variously in the articles at Exhibit 5 of Besson specific recognition of the presence of the Ace of Spades Trade Mark, such as one article which mentions, ‘the gleaming bottle, which features an ace-of-spades logo in pewter’.[18] The statements generally refer to all features of the Pink Bottle and Gold Bottle, including the Ace of Spades Trade Mark, not just colour and overall shape.

    [17] Besson, Exhibit 1A, Show Me What You Got.

    [18] Besson, Exhibit 5, 95.

1. In Self Care the High Court commented on situations where several signs are used in combination: ‘[w]here there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also’.[19] I read the statements in the evidence as references to a combination and not necessarily as a recognition of merely the Metallic Coloured Bottle as indicating a trade mark. I characterise the promotional exposure demonstrated in the evidence as being for the bottle as a totality, including the Ace of Spades Trade Mark. The shape of the Metallic Coloured Bottles is broadly similar to many other wine bottles. While the choice of colour is in a sense arbitrary, when choosing a block colour for product packaging, there are limited options. As such there is a clear dominant brand in the Ace of Spades Trade Mark. One newspaper article in the evidence even confirms this effect when commenting on Jay Z’s music video stating, ‘the entire music video reads like an advertisement for Ace of Spades [emphasis added]’. Indeed, the song lyrics also include references to ‘ace of spade’. On my assessment, consumers are unlikely to view the combination of the components of shape and metallic colour in the Subsidiary’s use as a separate distinct commercial indicator of origin from the Ace of Spades Trade Mark. Ultimately, I do not consider the evidence as demonstrating on the balance of probabilities that there is a reputation in Australia. Taken at its highest, assuming for now that there is any acquired reputation, it would be for a total combination of the Metallic Coloured Bottles with the Ace of Spades Trade Mark and other additional elements. Given its inherent distinctiveness, and the frequency with which it is referred in the various items of evidence discussed above, it is likely that the Ace of Spades Trade Mark also has a reputation.

   [19] Self Care (n 10) [25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

2. For completeness I will consider whether because of reputation in a trade mark, use of the Trade Mark for the Designated Goods would likely deceive or cause confusion. The Opponent refers me to Sydneywide Distributors v Red Bull Australia Pty Ltd (‘Sydneywide Distributors’)[20] noting confusion may occur when there is similar get up even though different brands are presented alongside each other. It also relies on BP plc v Woolworths Limited (‘BP plc’) to assert that if a colour creates an impression which is totally separate from the other trade marks, is distinctive and emerges out of the background and ‘hit[s] the buyer in the eye’.[21] The Opponent submits that the additional elements in the Pink Bottle or Gold Bottle, such as the Ace of Spades Logo, are of little prominence or importance because the whole bottle is a metallic colour. It asserts the essential feature of the Pink Bottle and Gold Bottle is the shape of a bottle in a metallic colour, either gold or pink. It also notes the letter ‘B’ in the Trade Mark is coloured consistently and is so minor and insignificant that it would be ignored by consumers. It adds, that because the Pink Bottle and Gold Bottle each contain the letter ‘A’ this adds to the likelihood of confusion when contrasted with the single letter ‘B’, which is alphabetically consecutive to the letter ‘A’.

   [20] Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 (Branson, Weinberg & Dowsett JJ).

   [21] BP plc v Woolworths Limited (with Corrigendum dated 27 October 2004) [2004] FCA 1362, [64] (Finkelstein J).

3. I interpret the Trade Mark as being for the matter as described in the second sentence of the Amended Endorsement and as depicted in the representations. I do not read the Amended Endorsement as, for example, a separate claim for the colour pink. The Trade Mark is not merely the colour pink as applied to a bottle. The Trade Mark contains a plainly stylised letter ‘B’ in contrast to a clearly cursive letter ‘A’ within the ace of spades device in the Ace of Spades Trade Mark. The colour arrangement of the Pink Bottle and Gold Bottle, as described at paragraph 16 of these reasons, is also different and striking. All of these differences overshadow any similarities the respective trade marks have in colour and shape, mitigating the risk of any confusion.

4. The Opponent submits a similar conclusion should be reached to three decisions of the EUIPO Second Board of Appeal where registration of a trade mark was refused because of the earlier trade marks of the Opponent for various metallic bottle trade marks registered in the European Union. I do not consider the factual scenario and comparison made before the EUIPO Second Board of Appeal to be the same one before me;[22] significant common visual cues between the trade marks were present in those cases which are not present here.

   [22] R 113/2021-2 – Second Board of Appeal 14 April 2021, R 114/2021-2 – Second Board of Appeal 14 April 2021, R 115/2021-2 – Second Board of Appeal 14 April 2021. These decisions occurred after an appeal to the General Court in the European Union in Ace of spades v EUIPO - Krupp and Borrmann (JC JEAN CALL Champagne ROSE) (EU trade mark - Judgment) [2020] EUECJ T-620/19 on the specific issue of what points of similarity existed between the relevant trade marks and should have been noted by the Board the Appeal. I also note the Court did not appear to disturb the finding of the Board of Appeal that a relevant reputation was limited even in the European Union at the time of that decision.

5. The overwhelming differences between the Trade Mark and each of the Pink Bottle and the Gold Bottle are such that consumers are not likely to be caused to wonder whether there is similar origin, even considering any acquired reputation in the Ace of Spades Trade Mark or the combination of the shape, colour and Ace of Spades Trade Mark. I am not satisfied that because of the reputation in either the Pink Bottle or Gold Bottle, use of the Trade Mark for the Designated Goods would be likely to deceive or cause confusion.

6. Accordingly, I am not satisfied that the s 60 ground of opposition has been established.

   Section 58

7. The Opponent also relies on s 58 which provides,

   [t]he registration of a trade mark may be opposed on the ground that the Holder is not the owner of the trade mark.

8. In demonstrating that someone other than the Holder is the owner of a trade mark, an opponent may rely on an earlier use showing an earlier claim by any person for the trade mark. A threshold requirement to make out this ground of opposition is that the Trade Mark be at least substantially identical with the earlier claimed trade mark. This requires a side by side comparison of the two trade marks. I must be satisfied that, when viewed side by side and having regard to similarities and differences, a total impression of resemblance emerges.[23]

   [23] Shell (n 12) 414 (Windeyer J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020] FCA 1078, [161] (Markovic J); Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, 391 (Gummow J).

9. The Opponent claims ownership of the Trade Mark through the Subsidiary’s first use of the Metallic Coloured Bottle. However, the only use in the evidence that is before the Relevant Date is of the Pink Bottle and Gold Bottle (reproduced in Schedule 1 to this decision). That is, the metallic bottle with the Ace of Spades Trade Mark. I do not consider use of the Pink Bottle or Gold Bottle as shown in the evidence, to amount to use as a trade mark of simply the metallic colour as applied to a bottle.[24]

   [24] Whilst concerning other grounds of opposition, though concerning use of a trade mark as a badge of origin, see RB (Hygiene Home) (n 10) [139]-[184] (Rofe J); Frucor Beverages Limited v The Coca-Cola Company [2018] FCA 993, [164]-[177] (Yates J) (‘Frucor’); The Coca-Cola Company v Frucor Beverages Limited [2016] ATMO 38, [93] (Hearing Officer Kirov); Multix Pty Ltd. See also, Verve Clicquot Ponsardin, Maison Fondee en 1772’s Application (1999) 45 IPR 525, 531-2 (Hearing Officer Forno) which concerned s 41 and where the delegate accepted that the colour orange was distinctive for the applicant’s goods, noting as significant the evidence that showed the colour orange had only been used as the background of labels in combination with a word trade mark. A significant reputation was evidenced based on ‘an impressive array of wine experts… who identify the colour with the applicant’s champagne’ which distinguished the applicant’s champagne. See also, Mayne Industries (n 16) (Greenwood J).

10. As the evidence before me only substantiates use of the Pink Bottle and Gold Bottle before the Relevant Date, the required comparison for the purposes of substantial identity is between the Pink Bottle and/or Gold Bottle and the Trade Mark. I note that I have already concluded in respect of s 60, that use of any of those trade marks is not likely to cause confusion. The dissimilarities noted in the s 60 discussion also lead me to conclude that a total impression of resemblance does not emerge from the required side by side comparison. I do not consider the Trade Mark to be substantially identical with the Pink Bottle or Gold Bottle.

11. Accordingly, I am not satisfied that the s 58 ground of opposition has been established.

    Section 42(b)

12. Section 42(b) provides,

    [a]n application for the registration of a trade mark must be rejected if… its use would be contrary to law [my emphasis added].

13. The requirement is that I be satisfied that the use of the Trade Mark would not could be contrary to law.[25] The Opponent has two bases for its s 42(b) ground of opposition, which I now address.

    Australian Consumer Law and passing off

    [25] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

14. The Opponent relies on (1) ss 18 and 29 of the Australian Consumer Law (‘ACL’);[26] and (2) the common law of passing off. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.[27]

    [26] Schedule 2 to the Competition and Consumer Act 2010 (Cth).

    [27] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

15. As already indicated in respect of s 60, I am not satisfied that use of the Trade Mark for the Designated Goods is likely to cause deception or confusion with the Pink Bottle or the Gold Bottle. It follows that on the stricter test of the ACL[28] and its predecessor,[29] I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL. As I have found that s 18 of the ACL has not been contravened, it also follows that use of the Trade Mark does not amount to passing off.[30] Therefore, I am not satisfied that use of the Trade Mark would be contrary law under the ACL or by the common law of passing off.

    Regulation 4.3(7)

    [28] Weili Mu v Guotai Huang [2021] ATMO 113, [35]-[36] (Hearing Officer Smith).

    [29] Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44. [7] (Gibbs CJ).

    [30] Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

16. Separately, the SGP particularises that the application for the Trade Mark was in contravention of reg 4.3(7) which requires,

    [i]f a trade mark for which registration is sought contains or consists of a sign that is a colour, scent, shape, sound or an aspect of packaging, or any combination of those features, the application for registration of the trade mark must include a concise and accurate description of the trade mark.

17. Regulation 4.3(7) is given life by 27(2)(a) which requires that the application be ‘in accordance with the [Regulations].[31]

    [31] An argument was made in Frucor (n 24) that s 27 was its own separate ground of opposition under s 57. By reference reg 4.3(7) as well as s 41, and initially s 62(b), were the particularised as grounds of opposition. Section 42(b) was not argued. Justice Yates decided the issue based on s 41, noting that s 27 was not itself a ground of opposition under s 57. Note also Effem Foods v Nestle SA [2008] ATMO 55, [48] (Hearing Officer Williams) (‘Effem Foods’) where the delegate commented on the power to overturn the decisions already having had been made regarding reg 4.3(7). See also, Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551, [82] (Mansfield J) which involved amendment of the endorsement to connect them with representations in the context of a s 41 matter.

18. The Opponent submits the Original Endorsement is not an accurate description of the Trade Mark because it fails to refer to the shape and other elements included in the representations. The Opponent’s Additional Submissions assert that the Amended Endorsement does not create any meaningful difference to the Original Endorsement. The Holder did not engage regarding this submission other than to submit that the Trade Mark does in fact comply with the requirements of reg 4.3(7), noting the Amended Endorsement.

19. It is the ‘use’ of the Trade Mark which must be examined and which must be contrary to law in order for the application for the Trade Mark to fall by a ground of opposition under s 42(b). None of the submissions concern the ‘use’ of the Trade Mark. The Opponent’s submissions concern the application for the Trade Mark as such; specifically an alleged technical failure of the application for the Trade Mark to comply with the requirements of the Act and Regulations, not use of the Trade Mark. I do not consider an application for a trade mark, here an application for extension of protection, as such to come within the ambit of use as it is defined in the relevant authorities and in s 7.[32] As such, I need not comment on the compliance of the Amended Endorsement with reg 4.3(7) and note that I may not even have the power in the context of opposition proceedings to revisit a decision previously made under reg 4.3(7).[33]

    [32] For example, s 7(4) provides that for the purposes of the Act, ‘use of a trade mark in relation to goods means use of the trade mark upon, or is physical or other relation to, the goods (including second-hand goods)’.

    [33] Effem Foods (n 31).

20. Accordingly, I am not satisfied that the s 42(b) ground of opposition has been established.

    Section 43

21. The Opponent relies upon s 43, which 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.

22. To establish its case for s 43 it is the Opponent who must clearly identify a connotation in the Trade Mark, or a part of it, and that because of that connotation, the use of the Trade Mark in relation to the Designated Goods would be likely to deceive or cause confusion. That ‘connotation’ is one which generally must be inherent in, and arising from, the Trade Mark itself[34] and s 43 does not operate on deception or confusion caused by a reputation in Australia of some other trade mark.[35] Thus the existence of earlier trade mark/s alone does not discharge the Opponent’s burden.

    [34] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Katzmann J); Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).

    [35] Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020, 389 (FCR) (Branson J, dissenting). See also, Ian Horak and Mark Davison, Shanahan’s Australian Law of Trade Marks & Passing Off (7e, 2022) 413-414. See also, Self Care (n 10) [13] and [42] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ), the Court noting the role of s 60 as striking a balance between commercial and public interests.

23. The Opponent submits:

    [t]he endorsement for the Application for the Opposed Mark reads “Pink. Pink” and the representation of the mark is an image of a bottle. The use of the Opposed Mark would therefore by likely to deceive or cause confusion because the nature and scope of the mark is unclear.

24. It otherwise provides no identification of an intrinsic connotation in the Trade Mark other than noting an earlier trade mark in use at other places in its submissions. These submissions appear to focus on the application as such, rather than use of the Trade Mark. Like s 42(b) the focus of s 43 is use of the Trade Mark. Noting my discussion of s 42(b) and reg 4.3(7), it is not clear to me what connotation exists in the Trade Mark such that use of the Trade Mark would be likely to deceive or cause confusion. I am not satisfied that because of some connotation in the Trade Mark, use of the Trade Mark in relation to the Designated Goods would be likely to deceive or cause confusion.

25. Accordingly, I am not satisfied that the Opponent has established the s 43 ground of opposition.

    Section 62A

26. Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. For this, I must determine whether, ‘in all the particular circumstances, the [Holder’s] knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards’.[36] This question is determined as at the Relevant Date.

    [36] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [167] (Dodds-Streeton J).

27. In DC Comics v Cheqout Pty Ltd, Bennett J noted that:

    Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.[37]

    [37] [2013] FCA 478, [62].

28. The Opponent submits that because it operates in the same field as the Holder, the Holder ought to have known it was not entitled to seek registration of the Trade Mark. It then says the Holder has failed to file any evidence in support of its position to refute a bad faith claim. What is submitted by the Opponent is a bare statement of bad faith. In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, the Registrar’s delegate stated:

    The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.[38]

    [38] Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

29. In this matter, the Opponent has not provided any evidence to support its assertions under s 62A of the Act. In the absence of such evidence, I cannot be satisfied that the application for the Trade Mark was made in bad faith.

30. Accordingly, I am not satisfied that the s 62A ground of opposition has been established.

    Revocation of Acceptance

31. The Opponent’s Additional Submissions request that I revoke acceptance of the Trade Mark. I note that revocation of acceptance of an IRDA is a completely separate power of the Registrar under the Regulations to those concerning an opposition to extension of protection. The Opponent submits that if I find the letter ‘B’ to carry any element of distinctiveness then acceptance of the application should be revoked so that the Registrar can re-examine the Trade Mark and cite one or more of the class 33 registrations which consist solely of the letter ‘B’.

1. The Opponent’s submissions, to the extent that they seek to have me revoke the acceptance of the IRDA, are outside the remit of my direction to provide additional submissions in the context of this matter; they also effectively seek to raise s 44 grounds of opposition at a late stage. The Opponent already sought revocation of acceptance in the days after the Opponent filed the SGP. This was dealt with in parallel to the opposition process, and the ultimate decision there was not to revoke acceptance. Most importantly and regardless of the above, the time in which the Registrar had the power to revoke acceptance of the IRDA has ended.[39] Even if I had some residual power to do so, I would not revoke acceptance of the Trade Mark.

   [39] Regulation 17A.27. The Registrar was notified on 20 April 2020 of the IRDA. A period of 18 months since the Registrar was notified of the IRDA had lapsed by 20 October 2021.

   Decision

2. Regulation 17A.34N relevantly provides:

   17A.34N  Decision on opposition

   (1)  Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)  to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)  to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2)  The Registrar must notify the International Bureau of the Registrar’s decision.

3. The Opponent has not established any ground of opposition. Extension of protection is to follow one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued and the disposition of the IRDA otherwise be in accordance with the Court’s order or direction. 

   Costs

4. The Holder sought its costs, which ordinarily follow the event. I have considered that the request to amend the Original Endorsement was only filed around the time of the Opponent’s submissions, which I do consider to be late in the process. I do not consider this amendment to have greatly prejudiced the Opponent and it makes no specific submissions about prejudice. As such I award costs against the Opponent according to the official scale set out in Schedule 8 of the Regulations.

   Benjamin Goldsworthy

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   7 September 2023

   Schedule 1

   (Gold Bottle’)

   (‘Pink Bottle’)