Sazerac Brands LLC
[2024] ATMO 42
•1 March 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Sazerac Brands LLC to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 1997670 (International Registration number 1457189) (classes 1, 29, 30, 31, 32, 33 and 34) - IGNITE (composite) - in the name of IGNITE INTERNATIONAL LTD.
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: David Larish and Sophie Yates of Counsel instructed by Bill Ladas, Sarah Goddard and Ashley Stocco of King & Wood Mallesons Holder: Griffith Hack |
Decision: | 2024 ATMO 42 Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – grounds of opposition under ss 59 and 60 of the Trade Marks Act 1995 (Cth) considered – no ground established – protection to be extended. |
Background
This opposition is made under reg 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’)[1] by Sazerac Brands 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: 1997670
Trade mark:
(‘Trade Mark’)
International registration number: 1457189
Holder: IGNITE INTERNATIONAL LTD (‘Holder’)
Filing date: 4 December 2018
Priority date: 20 November 2018 (‘Relevant Date’)
Goods: see Schedule 1 to these written reasons (‘Holder’s Goods’)
Endorsements: The mark consists of a stylized goat skull with horns with the word IGNITE centered over the skull. Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
The IRDA was examined and its acceptance was advertised on 10 December 2019. On 10 February 2020 the Opponent filed its Notice of Intention to Oppose. On 6 March 2020 the Opponent filed its Statement of Grounds and Particulars (‘SGP’).
On 19 May 2020 the parties filed an application for a cooling-off period. After an extension of the cooling-off period, this period expired on 19 May 2021. On 28 May 2021, the parties requested the suspension of the proceedings. On 4 June 2021 a delegate of the Registrar directed that the opposition be suspended for a period of 6 months under the provisions of reg 17A.34Q. The suspension of proceedings ended on 28 November 2021 and the Holder filed its Notice of Intention to Defend on 6 December 2021.
On 7 March 2022, the Opponent filed its Evidence in Support (‘EIS’) consisting of a declaration of Danny Suich, Global Brand Director (Fireball) with Sazerac Company Inc (the parent company of the Opponent), dated 4 March 2022, with Exhibits DS-01 to DS-29 (‘Suich’).
On 15 June 2022, the Holder filed its Evidence in Answer (‘EIA’) consisting of a declaration of Scott Rohleder, Chief Financial Officer of the Holder, dated 14 June 2022 with Exhibits SR-1 to SR-25 (‘Rohleder’) and a declaration of Jessie Shu, lawyer for Griffith Hack, dated 16 June 2022 and Exhibits JS-1 to JS-10 (‘Shu’).
On 29 August 2022 the Opponent advised this office by letter that it would not be filing Evidence in Reply.
On 28 September 2022 the Holder requested to be heard. On 30 September 2022 the Opponent requested to be heard. The Opponent filed written submissions of David Larish and Sophie Yates of Counsel, instructed by Bill Ladas, Sarah Goddard and Ashley Stocco of King & Wood Mallesons on 17 November 2023 (‘Opponent’s Submissions’). The Holder filed written submissions of its lawyers on 29 November 2023. I am to decide the matter as a delegate of the Registrar of Trade Marks.
Grounds and Onus
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.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The SGP nominated grounds of opposition under ss 42(b), 59, 60 and 62A. The Opponent advises that it presses grounds of opposition under only ss 59 and 60.[4] The date for the rights of the parties to be determined is the Relevant Date.
Evidence
[4] Opponent’s Submissions, [4].
EIS
The Opponent is a distilled spirits company which was founded in the United States of America. Amongst the drinks it sells is whisky and whisky liqueur sold under the word trade mark FIREBALL usually in proximity or alongside the image of what Suich describes as a fire breathing dragon (‘Dragon Trade Mark’). The label on the front of the Opponent’s bottles of whisky which feature these trade marks has the following appearance:[5]
(‘Front Label’)
[5] Suich, Exhibit DS-05.
Suich states that the Opponent is also the owner of the word trade mark IGNITE THE NITE (‘IGNITE THE NITE’). Suich states ‘IGNITE THE NITE appears on the labelling of every FIREBALL’ in Australia since 2014.[6] Below I reproduce the Opponent’s standard 700ml whisky bottle’s back label:
(‘Back Label’)
[6] Suich, [11].
Suich identifies promotional activities and materials which have displayed the words ‘ignite the nite’. These include material on websites and on social media accounts such as Instagram, Facebook, YouTube and on third-party websites which show IGNITE THE NITE in relation to whisky. Social media posts of the Opponent show use of the words ‘ignite the nite’ and sometimes the tag ‘#ignitethenite’, usually alongside FIREBALL and/or the Dragon Trade Mark, in relation to whisky in years 2012 to 2018.[7] Third-party social media posts are also provided at Exhibit DS-9A, dated in 2012, 2013, 2017 and 2018, which show the words ‘ignite the nite’ and ‘#ignitethenite’, again mostly in proximity to FIREBALL, in relation to whisky. Historical screen captures of (‘Opponent’s Website’), dated in 2014 and 2018, also mention the words ‘ignite the nite’ in relation to whisky. Suich declares that as at 28 February 2022 the Opponent had dedicated Australian social media accounts for Instagram and Facebook, each with a sizable number of followers.[8] I note that some screen captures of other websites included throughout Suich are not dated other than by the date of declaration.[9]
[7] Suich, Exhibits DS-20 to DS-27.
[8] Suich, [67] and [71].
[9] Suich, Exhibits DS-09, DS-11, DS-13, DS-14, DS-16.
The Opponent also provides undated evidence of promotional goods it produces, including tip jar bottles, lights in the shape of bottles, dog toys and ornaments, appearing to bear the Front Label and Back Label. The Opponent also provides examples of device wallpaper images and recipes for mixed drinks which show the words ‘ignite the nite’.[10] Suich lists awards received by the Opponent’s whisky, most of which appear to be overseas competitions. No context is provided about the competitions or how IGNITE THE NITE has featured in the competitions.
[10] Suich, Exhibits DS-02 and DS-03.
After the Relevant Date the Opponent filed Australian trade mark application 2110981 for IGNITE THE NITE in class 33 for various alcoholic drinks and Australian trade mark application 2221195 for IGNITE EVERYTHING in classes 32 and 33 for various non-alcoholic and alcoholic beverages (‘Opponent’s Applications’). After examination of each of the Opponent’s Applications, examiners raised reports with s 44 as a ground of rejection for each based on the application for the Trade Mark. The Opponent also has pending and registered trade marks for the words IGNITE THE NITE in various other jurisdictions for unspecified goods in classes 32 and 33.[11]
[11] Suich, Exhibit DS-08.
Suich provides confidential sales figures for ‘IGNITE THE NITE Goods’ in Australia in the years 2017 to 2021. ‘IGNITE THE NITE Goods’ appears to refer to spirits (beverages), whiskys and liqueurs.[12] The sales figures are in litre units and Suich states that, ‘each nine litre unit typically comprises 12 750ml bottles’.[13] Suich also provides confidential figures for, ‘related advertising and marketing costs spent under or by reference to [IGNITE THE NITE] … for Australia’ in each year since 2017.[14] Examples of retailer websites which retail the Opponent’s whisky are provided, showing the Front Label.[15] Reviews dated in 2016 exist for the retailer BWS, showing 700ml and 200ml bottles of the Opponent’s whisky with the Front Label; and reviews in 2017 and 2018 for Dan Murphy’s showing 200ml bottles of the Opponent’s whisky with the Front Label. Extracts of websites for First Choice Liquor, Aussie Liquor and Amazon are undated and show bottles of the Opponent’s whisky with the Front Label. The extract from Amazon shows the Back Label and Front Label. These undated extracts show a mix of 700ml, 200ml, 1L and 3.5L bottles of whisky mostly with FIREBALL and the Dragon Trade Mark.
[12] Suich, [34].
[13] Suich, [97].
[14] Suich, [98].
[15] Suich, Exhibit DS-10.
EIA
Rohleder provides the history of the Trade Mark in Australia and other countries. Rohleder further provides background about the adoption and promotional activities of the Holder for the Trade Mark, the word trade mark IGNITE and the following trade mark:
Background about the Holder is also provided. The Holder was founded in 2017 in the United States of America and ‘originally began as a cannabis brand but has since expanded its product categories’.[16] Rohleder states that, [the word trade mark IGNITE], ‘is a global consumer premium brand, operating in several market segments. The [Holder’s] product categories include synthetic and tobacco derived nicotine, e-liquid, spirits, apparel, beverage, and cannabidiol (“CBD”) sectors’.[17] Operations have existed overseas with various product offerings including various alcoholic and non-alcoholic beverages. The Holder’s management are noted as discussing expansion in in various overseas jurisdictions with these jurisdictions listed.[18] Rohleder states that, ‘[i]n 2021, the company exited the cannabis industry. The company’s primary products today are electronic cigarettes, CBD supplements and topicals, apparel, energy drinks and adult beverages’.[19]
[16] Rohleder, [13].
[17] Rohleder, [11].
[18] Rohleder, Exhibit SR-14, 4-7.
[19] Rohleder, [34].
Shu is in answer to mainly Exhibit DS-10 to Suich. Shu includes extracts of results from searches of the websites of distributors and retailers extracted in Exhibit DS-10 to Suich. I need not otherwise summarise the EIA and refer to it where relevant throughout these reasons.
Consideration
Section 60
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.
To satisfy s 60(a), the Opponent must establish that at the Relevant Date another trade mark had acquired a reputation in Australia. The word ‘reputation’ here means, ‘the recognition of the [other trade mark] by the public generally’.[20] 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.[21] Reputation may be inferred from a high sales volume, together with substantial advertising expenditure and other promotions, without direct evidence of consumer appreciation of the Trade Mark.[22] Use on social media platforms is one factor which may also be considered. Where there is use alongside other trade marks, this may overwhelm or discount the value of any evidence of use.[23] 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.[24] 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.[25] This is an objective question from the perspective of the ordinary consumer.[26]
[20] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[21] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [131]-[132] (Lockhart J), cited with approval in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [81] (Greenwood, Jagot and Beach JJ).
[22] McCormick (n 20) [86].
[23] Anheuser-Busch Inc v Budejovicky Budvar Národní Podnik [2002] FCA 390, [191] (Allsop J) (‘Anheuser-Busch Inc’).
[24] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ); RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10, [111] (Nicholas, Burley and Hespe JJ); RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2022] FCA 1042 [190] (Rofe J) citing Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, [97] (Sundberg 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).
[25] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg 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).
[26] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 425 (Kitto J).
The Opponent relies on the use of the words ‘ignite the nite’ on the Back Label of bottles of whisky, on social media and on the Opponent’s Website as evidence that there is a reputation in IGNITE THE NITE. I note that in all evidence almost every example of the use of the words ‘ignite the nite’ is located in proximity to FIREBALL and/or the Dragon Trade Mark. However, the Opponent argues that the reputation of IGNITE THE NITE is independent of the use in conjunction with FIREBALL and/or the Dragon Trade Mark. It points to uses of IGNITE THE NITE in relation to whisky which are not immediately adjacent to FIREBALL,[27] including in social media posts. I view these as few and likely limited in their impact. There is no explanation of the level of exposure to Australian consumers for some the Opponent’s social media posts. Further, whilst screen captures show the Opponent’s social media accounts, such as Instagram, Facebook and Twitter, as having have enjoyed sizable subscribers as at 28 February 2022, this date is over three years after the Relevant Date and I cannot conclude that such levels of subscribers existed as at the Relevant Date. I also note that there is no information about traffic to the Opponent’s Website, whether Australian or overseas.
[27] Opponent’s Submissions, [14(a)] and [14(b)].
I view FIREBALL and the Dragon Trade Mark on the Opponent’s bottles of whisky as being the ‘clear dominant “brand[s]”’[28] for the sales the subject of the confidential sales figures. Whilst sales of bottles of whisky sold under FIREBALL and the Dragon Trade Mark appear to be substantial, these are likely to have a low impact for the purposes of establishing a reputation in IGNITE THE NITE. The confidential advertising figures are not clearly targeted to specifically IGNITE THE NITE as they concern ‘related advertising and marketing costs spent under or by reference to [IGNITE THE NITE]’ for Australia. Whilst the statement regarding sales figures concerns a 9-litre unit which ‘typically comprises 12 750 ml bottles’,[29] I note that much of the Opponent’s evidence for distribution of whisky in Australia concern examples of 200ml and 700ml bottles of whisky.
[28] Anheuser-Busch Inc (n 23) [191].
[29] Suich, [97].
Overall, the evidence does not establish that there was a reputation in Australia for IGNITE THE NITE before the Relevant Date. At its highest, the evidence reflects a reputation in FIREBALL and/or the Dragon Trade Mark for whisky.
Accordingly, the ground of opposition under s 60 has not been established.
Section 59
Section 59 provides:
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
It is well established that applying for registration of a trade mark brings with it a presumption that the Holder intends to use the trade mark.[30] The onus is on the Opponent to displace this presumption by making out a prima facie case that the Holder lacked the requisite intention at the filing date.[31] If the Opponent makes out a prima facie case, the evidentiary onus may shift to the Holder to show its intention to use the trade mark at the filing date.[32] It has long been recognised that the absence of the requisite intention to use should not be inferred from lack of use of the Trade Mark, particularly as there may be good reason to defer use until the protection of registration is secured.[33] Actual use may be relevant to the existence of the relevant intention.[34]
[30] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J) (‘Suyen Corp’).
[31] Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J).
[32] SuyenCorp (n 30) [190].
[33] Suyen Corp (n 30) [207].
[34] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74] (Keane CJ, Stone and Jagot JJ).
The SGP particularises the s 59 ground of opposition as follows:
As at the [Relevant Date], based on desk research, the [Holder] was not using the [Trade Mark] in respect of any or all of the [Holder’s Goods] in Australia and there are no obvious signs that it holds any sufficiently definite intention to do so. Rather, as at the [Relevant Date]:
(a)On its website, the [Holder] referred to itself as the “world’s first premium cannabis brand”.
(b)It was apparent that the [Holder] did not (and does not at the date of this SGP) trade or direct any trade activities into Australia (see its home-page which expressly refers to “USA & EUROPE”;
(c)The [Holder] could not trade under goods containing CBD legally in Australia.
(d)There was no reference to use or intended use for beverages of any nature on the [Holder’s] website in Australia, and that continues to be the case.[35]
[35] SGP, [18].
Suich states that, ‘[b]ased on research on the [Holder’s] website, I am not aware of use of the [Trade Mark] on any labels for the [Holder’s Goods]’.[36] The Opponent submits that ‘the [Holder] does not operate in Australia, nor do its goods have an Australian presence’.[37] It points to a lack of evidence of use of the Trade Mark by the Holder in relation to the Holder’s Goods in Australia and a lack of evidence regarding the Holder’s intentions. It alleges the evidence shows that the Opponent was not intending to trade in Australia. In this regard, it cites the fact that the Holder’s evidence is that the Holder was reportedly taking active steps to expand its brand into various markets though the Holder’s ‘Global Outlook’ set out in the Holder’s ‘Management’s Discussion and Analysis’ for the year ending 31 December 2021 does not include Australia.[38] It also notes the Holder ‘exited the cannabis industry’.[39]
[36] Suich, [106].
[37] Opponent’s Submissions, [30].
[38] Rohleder, Exhibit SR-14.
[39] Rohleder, [34].
There is nothing in the Opponent’s evidence which shows that the Holder could not provide the Holder’s Goods. Nor does the Opponent explain the basis it suggests it would be impossible for the Holder to legally sell products containing CBD in Australia. That there may be regulatory obstacles does not itself demonstrate a lack of intention to use a trade mark.[40] The Opponent provides no evidence about any of the desk research it mentions in the SGP or in Suich. Otherwise, the evidence does not establish that the Holder filed the application for the Trade Mark merely for speculative or defensive reasons. To summarise, the Opponent’s Submissions focus on a lack of use by the Holder rather than a lack of intention to use the Trade Mark. That the Holder owns or is using other trade marks, on goods other than the Holder’s Goods, and/or does not currently trade in Australia[41] does not establish a prima facie case for the s 59 ground of opposition. The evidence relied upon by the Opponent, and its submissions, rise no higher than mere allegations of there being a lack of intention to use the Trade Mark and its lack of use to date.
[40] Community First Credit Union Ltd v Bendigo and Adelaide Bank Ltd [2019] FCA 1553, [370] (Markovic J); Bendigo and Adelaide Bank Ltd v Community First Credit Union Ltd [2021] FCAFC 31 (Middleton, Burley and Thawley JJ).
[41] New South Wales Lotteries Commission v Novamedia BV [2001] ATMO 65 (Hearing Officer Ryan).
The evidence and the circumstances relied upon by the Opponent do not establish a prima facie case that the Holder lacked the requisite intention to use the Trade Mark for the Holder’s Goods as at the filing date. Consequently, the onus has not shifted to the Holder.
Accordingly, the s 59 ground of opposition has not been established.
Decision
Regulation 17A.34N 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.
The Opponent has not established any ground of opposition. Extension of protection to Australia 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
The Holder sought its costs, which ordinarily follow the event. I see no reason to depart from this approach. 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
1 March 2024
Schedule 1 – Holder’s Goods
Class 1: Plant extracts for use in the manufacture of creams, lotions and cosmetic products.
Class 29: Edible oils.
Class 30: Bakery goods and dessert items, namely, cakes, cookies, pastries, candies, and confections for retail and wholesale distribution and consumption on or off the premises.
Class 31: Sowing seeds for the Cannabaceae genus; live plants, namely, the Cannabaceae genus; none of the foregoing being plants or plant materials of the genera Grevillea, Coprosma, Agrostis or Triticum
Class 32: Sports drinks; non-alcoholic beverages flavored with tea; non-alcoholic beverages flavored with coffee; non-alcoholic fruit juice beverages; bottled drinking water; beer.
Class 33: Alcoholic beverages, except beer.
Class 34: Cigarette cases; cigarette lighters; cigarette rolling papers; electronic cigarette lanyards; tobacco pipes; tobacco water pipes; smokers' clips for securing hand rolled cigarettes; ashtrays for smokers made of non-precious metals; smokers' rolling trays; pocket machines for rolling cigarettes; oral vaporizers for smoking purposes.
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