Sazerac Company, Inc. v Liquid Exchange Pty Ltd
[2015] ATMO 4
•20 January 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Sazerac Company, Inc. to registration of trade mark application 1474473 (33) – BUFFALO BILL - filed in the name of Liquid Exchange Pty Ltd
Delegate: Debrett Lyons Representation: Opponent: Lena Balakrishnan of Davies Collison Cave, Patent & Trade Mark Attorneys
Applicant: no representation at the hearing; written submissionsDecision: 2015 ATMO 4
s52 proceedings: ss42(b), 44, 59 and 60 pressed – none established; opposition unsuccessful; application to be accepted for registration.Background
On 14 February 2012 (“the Priority Date”), Liquid Exchange Pty Ltd (“the Applicant”) filed an application under the Trade Marks Act 1995 (“the Act”) to register BUFFALO BILL as a trade mark (“the Trade Mark”).
The Trade Mark was examined and accepted for possible registration in respect of the goods shown below (“the Goods”):
Class 33: Digesters (liqueurs and spirits); spirits (beverages); still spirits; beverages containing wine (wine predominating); drinks containing wine (wine predominating); fortified wines; wine; blended whisky; bourbon whisky; malt whisky; whisky; rum; vodka; gin; tequila; none of the aforementioned goods being cocktails
Acceptance was advertised in the Australian Official Journal of Trade Marks on 7 June 2012 and on 4 December 2012, after obtaining an extension of time to do so, Sazerac Company, Inc. (“the Opponent”) filed a Notice of Opposition to registration of the Trade Mark.
The Opponent filed evidence in support of its opposition comprising a declaration of Guy May made 25 September 2013 and a declaration of Dave Higgins made 4 November 2013. The Applicant did not file any evidence.
A hearing was convened in Sydney on 16 October 2014 before me, Debrett Lyons, acting as a delegate of the Registrar of Trade Marks. The Opponent was represented by Lena Balakrishnan of Davies Collison Cave, Patent & Trade Mark Attorneys. The Applicant was not represented and chose to rely solely on written submissions it made before the hearing.
The Opponent lodged written submissions in accordance with directions I gave before the hearing from which it was clear that the Opponent intended to rely for its opposition on sections 42(b), 44, 59 and 60 of the Act. Those grounds were the only grounds pressed at the hearing.
The Opponent bears the onus of establishing one or more of those grounds of opposition on the balance of probabilities.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663.
The date at which the grounds of opposition must be established is the Priority Date of the application.[2]
[2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.
Submissions
Applicant
The Applicant appears to be owned or at least controlled by a Mr. Marc Negro. Mr. Negro expressed an interest in attending the hearing but in the end chose not to pay the hearing fee, requesting instead if he might passively listen to the proceedings via telephone, which he did.
Albeit not in conformity with the directions I gave in the weeks leading up to the hearing, Mr. Negro filed written submissions. I have included them hereunder, deleting the exhibited material and references thereto for reasons which follow.
Our Product name Buffalo Bill is inspired by Bill Cody (Buffalo Bill). He was a hunter of Wild Buffalo’s (sic). We have adopted his story.
Our product label has a picture of a man and not a buffalo. It tells the story of Buffalo Bill.
There are other products on the market that have the word and picture of buffalo’s (sic). One example is WILD BUFFALO Class 33 Trademark No.1024930 which was registered and approved after [the Opponent’s] Buffalo Trace [trade mark] was registered in Australia.
There are many other alcoholic products on the market that have a picture of a Buffalo or what resembles a buffalo on their label.
We do not believe that there is ANY confusion between our Buffalo Bill and Buffalo Trace. Our label features a man and the associated story of Bill Cody (Buffalo Bill). Buffalo Trace has a picture of a buffalo.
In the United States of America, they have 2 brands of Bourbon….Buffalo Bill and Buffalo Trace. They have been on the market there for many years without confusion. The same would apply in Australia.
We believe that Sazerac Company INC are attempting to control the word BUFFALO in Australia. If this is the case, they should have registered the word “Buffalo”.
Referring to their points 54 and 55, we think it is unfair to say that the first part of the word is more important. Imagine ordering Wild ….would you receive a bottle of Wild Buffalo or Wild Turkey? When ordering Sam…would you receive Sam Houston, Sam Crow, Sam Clay or Sam Cougar? When ordering Glen…would you receive Glen Campbell, Glen Moray, Glen Grant, Glen Parker or Glen Elgin?
Our application for the name Buffalo Bill was accepted by the Australian Trade Mark Office in 2012. We have been selling it ever since.
Our advertising campaign is small, we are a small, growing company with a small portfolio. Although our website doesn’t show our entire range. It is not a reflection of our intentions. At this stage we can’t spend our resources in this area. It is not viable for us, especially if there is doubt over a product.
Given the fact that the Applicant did not participate in the evidentiary stages of the opposition and chose to rely only on these submissions it is appropriate that I make the following comments:
a.I must disregard the statement that the Applicant’s product label has a picture of a man and not a buffalo and tells the story of Buffalo Bill[3]. Firstly, that label is not in evidence in conformity with the Trade Marks Regulations 1995 (“the Regulations”). Secondly, and more fundamentally, the Trade Mark at issue is a word mark without figurative elements.
b.It follows that that assertion by the Applicant that “[W]e do not believe that there is ANY confusion between our Buffalo Bill and Buffalo Trace. Our label features a man and the associated story of Bill Cody (Buffalo Bill). Buffalo Trace has a picture of a buffalo” is not part of the assessment I am to make under the Act having regard to the grounds of opposition pressed.
c.There is no evidence of the claim that “[T]here are many other alcoholic products on the market that have a picture of a Buffalo or what resembles a buffalo on their label.” I therefore cannot give that assertion any weight.
d.There is no evidence of the claim that “[I]n the United States of America, they have 2 brands of Bourbon….Buffalo Bill and Buffalo Trace. They have been on the market there for many years without confusion. The same would apply in Australia.” I therefore cannot give that assertion any weight.
e.There is no evidence of the claim that the Applicant has been selling class 33 goods bearing the Trade Mark (or any other trade mark) since the time the application was accepted by the Australian Trade Mark Office.[4]
f.There is no evidence of the claim that “other products on the market that have the word and picture of buffalo’s (sic).” The single example cited by the Applicant is of a trade mark on the Register. There is no evidence of market use.
Opponent
[3] For the purposes of the later section 59 discussion I take note of the existence of that product label.
[4] Again, for the purposes of the section 59 discussion, I note that there is nonetheless nothing in the Opponent’s evidence to controvert this claim of use.
The Opponent submitted that the section 60 ground of opposition was its strongest ground. Ordinarily, it would be logical to assess that ground first but in this instance I have found it more useful to look at section 44 before the other grounds.
Section 44
13. Section 44 of the Act relevantly provides:
44Identical 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).
14. The Opponent relies upon its registration number 797495 (“the Registration”) for the trade mark, BUFFALO TRACE. The date of the Registration is 16 June 1999, being earlier than the Priority Date. The Registration is in class 33 for “bourbon”, being “similar goods”[5] to the Goods and so the remaining question is whether BUFFALO BILL and BUFFALO TRACE are “deceptively similar”[6], an expression defined by section 10 of the Act. In The Coca-Cola Company v All-Fect Distributors Ltd, (1999) 96 FCR 107; 47 IPR 481, section 10 was considered by the Full Federal Court and in their joint judgment, Black CJ, Sundberg and Finkelstein JJ said the following at [39]:
Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.
[5] As defined in s 14(1) of the Act, namely the same goods or goods “of the same description”.
[6] There being no submission that they are substantially identical.
15. After summarizing well known principles of comparison, the Opponent submitted:
The following points of similarity are noted:
§ The first element "BUFFALO";
§ The identical rhythm and cadence between the words – BUFFALO TRACE and BUFFALO BILL – both comprising of an identical first word followed by a monosyllabic second word;
§ The word BUFFALO is understood to mean any of several mammals of the ox kind.
It is the Opponent's submission that the element “BUFFALO" is the most important element of both trade marks, particularly with respect to the Class 33 goods. This is because it is the first word of each trade mark, and therefore takes on a particularly important role given the tendency for people to slur the end or second word. As observed by Sargant LJ in the London Lubricants decision:[7]
“the tendency of persons using the English language to slur the termination of words…has the effect necessarily that the beginning of words is accentuated in comparison, and…the first [word] is, as a rule, far the most important for the purpose of distinction”
The relevance of the first word and the tendency for people in Australia to slur in speech is particularly important when considering the setting in which the goods of each mark are purchased. Bourbon and other alcoholic beverages are typically purchased in noisy environments, such as bars and restaurants, through a verbal requests (sic). Thus, by way of example, if a bartender were to hear a request for “BUFFALO BILL” in a noisy environment, there is a real tangible danger that he or she would mistakenly understand the request to be for “BUFFALO TRACE” given the likely prominence a consumer would give to the first word “BUFFALO”.
In addition, we submit that the net impression of each mark is similar, with both marks conjuring notions of an ox like animal from the United States. Thus when considering imperfect recollection, there is a real tangible risk of a consumer confusing the trade marks.
I do not consider the trade marks to be “deceptively similar” within the meaning of section 10. I have no reason to question the Applicant’s statement that the Trade Mark was adopted as a reference to the American buffalo hunter and showman “Buffalo” Bill (William) Cody and I find that reference to be the primary connotation of the Trade Mark. I do not find that the word “buffalo” is the single, important element of the trade marks, as the Opponent submits. I do not find that the trade marks have identical rhythm and cadence, as submitted. The quotation and reliance upon the London Lubicants case does not assist me since I find that in all important respects – visually, aurally and conceptually – the trade marks are quite distinct, a conclusion drawn in part from my finding that the word “trace”[8] appears in seemingly odd juxtaposition to the word “buffalo” and I would regard the meaning of the expression “buffalo trace” to be unknown to most Australian consumers.
[7] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264 at 279.
[8] Within the context of the Opponent’s trade mark, a path or trail that has been beaten out by the passage of animals or people.
The section 44 ground of opposition has not been established.
Section 60
18. I come then to section 60 having made the finding that BUFFALO BILL and BUFFALO TRACE are not deceptively similar trade marks and making (a) the additional finding that they are in my view quite dissimilar trade marks; and (b) the observation that the Opponent lays claim to a reputation in the word “buffalo”, solus, in addition to its trade mark BUFFALO TRACE.
19. Section 60 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.
(a) consideration of BUFFALO TRACE
20. In redacted form, the Opponent’s section 60 submissions are that:
The Opponent is the largest private single family owned distilling company in the United States and is a global producer of beverages, specifically alcoholic beverages. A primary focus of the business is the production and sale of American Whiskey, including bourbon.
The Opponent’s most well known brand of bourbon is BUFFALO TRACE bourbon. The trade mark BUFFALO TRACE was adopted because of the location of the Distillery where the bourbon was first made in 1857.
Bourbon bearing the BUFFALO TRACE trade mark was first sold in the United States in August 1999. Since then, BUFFALO TRACE bourbon whiskey (?) has won numerous awards and has been sold in over thirty countries, including Australia and New Zealand.
BUFFALO TRACE bourbon was first made available in Australia in November 2009 and has been sold continuously since that date through the Opponent’s exclusive distributor, SouthTrade International Pty Ltd.
BUFFALO TRACE bourbon is sold in over 511 liquor stores throughout Australia, including at BWS and Dan Murphy stores;
BUFFALO TRACE bourbon is also distributed to various drinking establishments throughout Australia;
Liquor shops and drinking establishments are provided with various merchandise bearing the BUFFALO TRACE trade mark to increase awareness and promote the product, including posters, bar mats, barrels, wooden boards, barrel dispensers, t-shirts, umbrellas, coasters, chalk boards, glorifiers and Mint Julep coups (sic)[9].
Bottles of BUFFALO TRACE also include a neck tag and information booklet with the trade mark;
Further promotional activities in Australia include:
SouthTrade International Pty Ltd’s “Liquid Miles” program (paragraph 13 – Higgins Declaration), whereby purchasers accrue more “points” with SouthTrade International Pty Ltd if they purchase BUFFALO TRACE bourbon;
An instructional video distributed to various drinking establishments training bartenders on how to make a “Mint Julep” cocktail;
Tasting events for BUFFALO TRACE bourbon at liquor shops.
Given the extensive sales and promotion, the evidence confirms that the Opponent has established that its BUFFALO TRACE trade mark, has acquired a reputation in Australia…
[9] In the evidence the reference is to “jelup cup”, an item I cannot properly comprehend from the photographic image; I do not know what a “glorifier” might be and there is nothing in the relevant evidence to explain that term.
21. In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:
What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?
22. For the purposes of section 60, the question is whether consumers will be confused into believing that the Trade Mark signifies that the Goods emanate from the Opponent. In practical terms, that requires that I assess the likelihood of deception or confusion resulting from the combined effects of the reputation of the trade mark BUFFALO TRACE, the degree of similarity of that mark to the Trade Mark and finally, the nexus of the goods.
23. There is little doubt that the likelihood of confusion rises with the degree of similarity of the compared goods and here the goods are either identical or very similar. Notwithstanding the longevity of use of the trade mark BUFFALO TRACE in the United States I would regard the confidential Australian sales data as indicative of a modest reputation in the trade mark in relation to bourbon whiskey at the Priority Date. I have already found that the compared trade marks are quite dissimilar. In the result, I do not find that it is likely that members of the Australian public who frequent liquor stores or who order drinks at licensed establishments would be deceived by the Trade Mark in the sense that they are likely to be misled into thinking that Goods bearing the Trade Mark come from the Opponent, or confused in the sense that they are likely to wonder whether that might not be the case.
24. I find that the section 60 ground of opposition has not been established based on the Opponent’s use of the trade mark BUFFALO TRACE.
(b) consideration of BUFFALO
25. As indicated already, the Opponent claims a reputation in “BUFFALO solus as a trade mark in respect of bourbon whisky. The Opponent submits that its:
… reputation extends to the stand-alone word BUFFALO in respect of bourbon given the strong emphasis on the “buffalo” device and buffalo imagery in all of the Opponent’s advertising and use of the single word “Buffalo” in much of the Opponent’s advertising activities and point-of-sale material.
Both BUFFALO TRACE and BUFFALO BILL connote notions of buffalos and the wild west and the Frontier country of the United States of America.
The word BUFFALO and images of buffalo are readily visible to any consumer encountering the Opponent’s goods and advertising material, as demonstrated by the evidence discussed above. In particular, various point-of-sale promotional material, such as for example the Opponent’s drink cards, information booklets (see Exhibit DH-10) and posters (See Exhibit DH-9), refer solely to the word “BUFFALO” in the promotion of the Opponent’s products, by way of slogans such as “Eat Meat Drink Buffalo” on the drink cards and posters and “Why Did We Name Our World-Class Bourbon After A Buffalo?” on the front cover of the information booklet which is attached to each bottle purchased. Thus, the Opponent has created a reputation and association between its bourbon and “BUFFALO”.
The Opponent’s use of the trade mark BUFFALO TRACE gives particular prominence to the word BUFFALO and buffalo imagery. Given the Opponent’s use, BUFFALO is an essential element of the Opponent’s trade mark BUFFALO TRACE, and its application to bourbon is attributed to the Opponent.
The relevance of this is of particular importance when considering how alcoholic beverages are typically purchased. In addition to being purchased in liquor stores by visual selection, they are also ordered verbally in drinking establishments such as those listed by the Opponent. By way of the Opponent’s advertising, the BUFFALO element of the BUFFALO TRACE trade mark has taken on a particularly important role such that it would be the most prominent element of the Opponent’s trade mark in speech.
26. I have already found that the commonality of the word “buffalo” in the trade marks BUFFALO BILL and BUFFALO TRACE is insufficient to render the two marks deceptively similar as required by section 44 of the Act. That said, in terms of section 60, I must now be satisfied that, in essence, use of the image of buffalos, either with or without the word “buffalo”, by the Opponent is such that the word “buffalo” or the representation of a buffalo had such a reputation that it is likely that Australian consumers of the kind I have described would at least have cause to wonder whether or not the Goods emanated from the Opponent.
27. I cannot draw that finding because I cannot find a sufficient reputation in the word “buffalo” or the image of a buffalo. At most, I might characterize the Opponent’s use in that respect as aspirational in the sense that some of the Opponent’s promotional use strives for that result. However, by the Priority Date I can only see evidence of what I would call collateral use of the word “buffalo” (solus) or the image of a buffalo in relation to bourbon whiskey. In my assessment the evidence fails to show a level of trade mark use securing a reputation distinct from the trade mark BUFFALO TRACE.
28. Section 60 contemplates a fluid mixture of elements which might result in a likelihood of confusion or deception and so whilst, all else being equal, I would regard the potential for confusion between the trade marks BUFFALO and BUFFALO BILL as slightly higher than as between BUFFALO TRACE and BUFFALO BILL, I would at the same time regard any reputation in Australia in the word “buffalo”, or the image thereof, to be so faint that there is in my assessment no likelihood of confusion or deception by reason of use of the Trade Mark on the Goods.
29. Accordingly, the opposition based on section 60 fails.
Section 42(b)
30. Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The law on which the Opponent relies is that contained in ss 18 and 29(1)(g) of the Australian Consumer Law (‘ACL’) within Schedule 2 of the Competition and Consumer Act 2010. Relevantly, section 18 of the ACL provides:
18 Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2) Nothing in Part 3‑1 (which is about unfair practices) limits by implication subsection (1).
Note: For rules relating to representations as to the country of origin of goods, see Part 5‑3.
29 False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
[…]
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits;
[…]
Note 1: A pecuniary penalty may be imposed for a contravention of this subsection.
Note 2: For rules relating to representations as to the country of origin of goods, see Part 5‑3.
31. The principles which apply are those enunciated in relation to the corresponding provisions in the predecessor of the ACL – the Trade Practices Act 1974 – in particular sections 52 and 53(c). In Re Equity Access Pty Limited v Westpac Banking Corporation and Westpac Savings Bank Limited and Challenge Bank Limited [1989] FCA 506; 16 IPR 431 Hill J said at [41]:
1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell[10] at 202. In the present case the misrepresentation on the part of the respondents is said to be that the financial product advertised and marketed by each of them is the product of the applicant or that there is some business relationship between the applicant and each of the respondents or that the applicant has endorsed the respective product of the respondents.
2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu[11] per Gibbs CJ at p 6 and per Mason J at p 15, Global Sportsman Pty Ltd v. Mirror Newspapers Ltd [1984] FCA 180; (1984) 55 ALR 25, at p 34.
3. Conduct will be likely to mislead or deceive if there is a “real or not remote chance or possibility” of misleading or deception regardless of whether it is less or more than 50%: Global Sportsman at p 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at pp 198-9.
4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at p 100; Bridge Stock Brokers v. Bridges [1984] FCA 391; (1984) 57 ALR 401 at p 413 per Lockhart J. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v. Katies Ltd (1977) 29 FLR 336, 343. The test in passing off cases is usually expressed as being whether a “substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant’s use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff’s goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question.” (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v. Odhams Press Ltd (1962) RPC 163 at 168 and see Saville Perfumery v. June Perfect Ltd (1941) 58 RPC 147 at 175-6, 10th Cantanae Pty Ltd v. Shoshana Pty Ltd (1987) 79 ALR 299 at 315 per Gummow J).
5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant’s business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person’s business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.
6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at p 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v. Lucas [1985] HCA 65; (1985) 61 ALR 307 at p 309.
[10] Taco Company of Australia Inc v. Taco Bell Pty Ltd [1982] FCA 136; (1982) 42 ALR 177.
[11] Parkdale Custom Built Furniture Pty Ltd v. Puxu Pty Ltd [1982] HCA 44; (1981-2) 149 CLR 191.
32. For the same reasons I have already given in relation to sections 44 and 60, there is nothing before me to suggest that use of the Trade Mark would be contrary to the provisions of the ACL. This ground of opposition has not been established.
Section 59
Section 59 provides:
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.
The Opponent’s submissions on the law, with which I am in concordance, are that:
The filing of an application for registration raises a prima facie presumption of an intention to use in favour of the applicant. Given the prima facie nature of the presumption, an applicant’s intention to use is readily rebuttable. While a mere allegation of a lack of intention to use is not enough by itself to shift the onus, inferences can be drawn to indicate a lack of intention to use.
On the facts, it is the Opponent’s submission that:
While an adverse inference cannot be drawn simply because the Applicant has not filed any evidence, we submit that the circumstances of the current case are different and that an adverse inference of a lack of an intention to use should be drawn against the Applicant for the foregoing reasons:
The Applicant has registered and/or sought to register various trade marks in Australia in respect of goods in Classes 32 and 33 that are owned by other foreign entities in the liquor industry. …
This evidence suggests a tendency to file trade marks owned by overseas entities in Australia, despite not actively pursuing use of the marks in Australia.
The Applicant did not otherwise participate in the Opposition. Neither IP Australia nor the Opponent has heard from the Applicant since the Notice of Opposition was filed, and the Applicant did not file any evidence in answer to otherwise refute the above allegations.
Analogies can be drawn from the above situation and the position in Danjaq LLC v Resource Capital Australia Pty [2004] ATMO 18, where similarly the Applicant in that case had a record of applying for trade marks similar to those of others. The Applicant in that case was also uncontactable and did not file any evidence to challenge the Opponent’s evidence inferring a lack of a genuine intention to use the trade mark. In the Danjaq LLC case, Hearing Officer Thompson concluded that an adverse inference could be drawn from the evidence which was:
“unchallenged and unrebutted by the applicant who could have readily addressed them in its own evidence. The opponent's evidence is cogent, relevant and drawn from the records of ASIC, the Federal Court and of the Trade Marks Office. The evidence thus has a high provenance and credibility in a situation where, as Hearing Officer Williams, in the Sapient decision said, slight evidence should suffice to shift the onus onto the applicant and the applicant has not responded. I therefore accept the inferences in the opponent's evidence and I am satisfied that the applicant does not intend to use the trade mark.”
As was observed in Wal-Mart Stores v Ozark-London Ltd [2004] ATMO 33:
“The reported cases have distinct essentials. In common between them there is, in the opponent’s evidence, inferences of some element of lack of good faith intention in the application. In Sapient, it was the making of an application for purely strategic purposes – for no other reason than to thwart a perceived rival which was, in Mr Williams’ words, “not supported by any genuine intention to commence bona fide commercial use”. In Danjaq, it was an apparent attempt at trade mark piracy. In Ngu, it was the ‘bridging over’ over of two very well known trade marks”...
“An additional essential to the Registry cases is that, in each (Sapient, Danjaq and Ngu), the totality of the opponent’s evidence put the applicant on notice that section 59 would be canvassed at the hearing”.
The Applicant’s current webpage <liquidexchange.com.au> does not refer to any beverages bearing any of its trade mark registrations, nor does it refer to any beverage under the BUFFALO BILL trade mark. This is yet a further inference of the applicant’s lack of intention to use its trade mark.
It is not completely accurate to say that the Applicant has taken no interest in these proceedings[12]. As indicated, it filed (late) written submissions. Whilst those submissions do not directly refute the Opponent’s section 59 allegations, what is said of relevance is this:
[12] Although at the time the Opponent filed its written submissions it was so.
Our product label has a picture of a man and not a buffalo. It tells the story of Buffalo Bill.
Our application for the name Buffalo Bill was accepted by the Australian Trade Mark Office in 2012. We have been selling it ever since.
Our advertising campaign is small, we are a small, growing company with a small portfolio. Although our website doesn’t show our entire range. It is not a reflection of our intentions. At this stage we can’t spend our resources in this area. It is not viable for us, especially if there is doubt over a product.
There is a positive (albeit unsupported) statement that the Applicant has been selling Goods bearing the Trade Mark since 2012. There is an explanation of sorts as to why the Trade Mark does not feature on the Applicant’s website. There is a product label bearing the Trade Mark. I therefore do not think it can be said that the Applicant has failed to make any affirmative statement whatsoever about its use or its intention to use the Trade Mark that would, of itself, shift the onus of proof under section 59.
It is then said that the evidence suggests that the Applicant is in the habit of applying to register the trade marks of others who make and sell liquor but does not itself actively use those trade marks.
The evidence before me does not have sufficient weight to support those inferences. The Opponent’s evidence does not prove that the Trade Mark is unused in Australia and the Applicant’s assertion is to the contrary. The Opponent’s evidence does not prove the assertion that the trade marks said to belong to third parties are unused by the Applicant. There is no suggestion in the evidence that the application for the Trade Mark or for any other trade mark filed by the Applicant was made primarily to thwart the interests of another.
I do not find that the section 59 ground of opposition has been established. To the extent that the evidence might raise an eyebrow as to the Applicant’s good faith intentions, the Opponent might have chosen to pursue its opposition under other provisions of the Act.
Decision and Costs
At the relevant date subsection 55(1) of the Act provided:
(1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
My decision is to allow the Trade Mark to proceed to registration.
I award costs against the Opponent calculated in the normal manner and in accordance with the Regulations.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
20 January 2015
Key Legal Topics
Areas of Law
-
Intellectual Property
Legal Concepts
-
Costs
-
Remedies
-
Standing
0
12
0