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Scotch Whisky Association v De Witt

Scotch Whisky Association v De Witt

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FEDERAL COURT OF AUSTRALIA
Scotch Whisky Association v De Witt [2007] FCA 1649
TRADE MARKS ‑ Opposition appeal pursuant to s 56 of the Trade Marks Act 1995 (Cth) ‑ Registered mark ‑ Deceptive similarity of marks ‑ Whether use likely to deceive or cause confusion ‑ Consumer purchasing habits ‑ Impulse buying ‑ Connotation of mark ‑ Family marks.
TRADE PRACTICES ‑ Misleading or deceptive conduct ‑ Sponsorship ‑ Origin of goods ‑ Whether use of label misleading or deceptive.
Held: The respondent’s GLENN OAKS mark does not contain a connotation in breach of s 43 of the Act, is not contrary to law for the purposes of s 42 and does not contravene s 60 as it is not deceptively similar to pre‑existing registered or reputable mark.
Trade Marks Act1995 (Cth), ss 10, 42, 43, 56, 60
Trade Practices Act 1974 (Cth), ss 52, 53
Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] 59 IPR 318 referred to
Kowa Company Ltd v N V Organon (2005) 66 IPR 131 referred to
Lomas v Winton Shire Council [2002] FCAFC 413 referred to
Austereo Pty Ltd v DMG Radio (Aust) Pty Ltd (2004) 61 IPR 257 referred to
McCorquodale v Masterson (2004) 63 IPR 582 applied
Pfizer Products Inc v Karam (2006) 70 IPR 599 referred to
Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 applied
MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 cited
CA Henschke & Co v Rosemount Estates Pty Ltd (2001) 52 IPR 42 applied
Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 applied
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 applied
Coca‑Cola Co v All‑Fect Distributors Ltd (1998) 43 IPR 47 applied
Australian Woollen Mills Limited v. F. S. Walton & Co Ltd (1937) 58 CLR 641 applied
Berlei v Hestia Industries Ltd (1973) 129 CLR 353 cited
Dunn’s Trade Mark (1890) 7 RPC 311 cited
Suntory Limited v Aktion Zahnfreundlich [1998] 42 IPR 593 cited
Effem Foods Pty Ltd v Star‑Kist Foods, Inc [2000] 50 IPR 121 cited
Johnson & Johnson v Kalnin (1993) 26 IPR 435 cited
Carlton & United Breweries v Royal Crown (2001) 53 IPR 599 cited
The Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300 applied
Green’ Appn (1946) 64 RPC 14 cited
Pianotist Co’s Application (1906) 23 RPC 774 applied
Cooper Engineering Co. Pty Ltd v Sigmund Pumps Limited (1952) 86 CLR 536 applied
Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382 cited
Gardenia Overseas Pty Ltd v The Garden Co Ltd (1994) 29 IPR 485 applied
Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 28 IPR 193 applied
McDonalds Corporation v Bellamy (2004) 62 IPR 133 cited
Beck Koller & Co (1947) 64 RPC 76 applied
J & J Snack Foods Corp v McDonald’s Corp, 932 F 2d 1460 (Fed Cir 1991) cited
American…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2007] FCA 1649
Decision Date: 2 November 2007

CaseChat Overview and Summary

In Scotch Whisky Association v De Witt, the Scotch Whisky Association (the Association) brought an action against De Witt, a producer of Scotch whisky, for passing off. The dispute centred around De Witt's use of the mark "Glenn Oaks" on its whisky products, which the Association claimed was misleading and likely to deceive consumers into believing that the products were endorsed by or associated with the Association. The case was heard and determined in the Federal Court of Australia.

The primary legal issue before the court was whether De Witt's use of the "Glenn Oaks" mark constituted passing off. The court had to decide if there was a likelihood of deception or confusion among consumers, which is a key requirement for a passing off claim. The court also had to consider whether the Association's opposition to De Witt's mark was justified, and whether the amendment of the respondent's statement of goods following the hearing altered the likelihood of confusion.

The court found that there was insufficient evidence to establish a likelihood of deception or confusion among consumers regarding De Witt's use of the "Glenn Oaks" mark. The court noted that while passing off does not require proof of intent to deceive, there must be at least a likelihood of deception. The court concluded that the likelihood of deception had not been established for the reasons outlined in the decision. The court also found that the amendment to the respondent's statement of goods following the hearing was sufficient to eliminate the likelihood of confusion. As a result, the delegate's decision that both parties should bear their own costs was affirmed.

The final orders of the court were that the application be dismissed, the respondent's "Glenn Oaks" mark remain on the register with an amended statement of goods, the applicant pay the respondent's costs of the appeal, the cross appeal be dismissed, and the respondent pay the applicant's costs of the cross appeal. This decision highlights the importance of establishing a likelihood of deception or confusion in passing off claims, as well as the potential impact of amendments to statements of goods on the outcome of such disputes.

Orders

Orders of the court

1. The application be dismissed.

2. The respondent’s GLENN OAKS mark remain on the register with respect to the following amended statement of goods and services in class 33: “Scotch whisky, bourbon (other than bourbon that is labelled only as ‘whisky’ or ‘whiskey’), vodka, dark rum, white rum, ouzo, tequila, gin, liqueurs and all other spirits in this class except for whisky that is not produced in Scotland.

3. The applicant pay the respondent’s costs of the appeal.

4. The cross appeal be dismissed.

5. The respondent pay the applicant’s costs of the cross appeal.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

SUNDBERG J

Passing off is a tort that does not require proof of intent to deceive. However, there must be at least a likelihood of deception: Erven Warnink BV v J Townsend & Sons Hull Ltd [1980] RPC 31 at [93] and [99]. For the reasons given in dealing with the earlier grounds, that has not been established.Conclusion on appeal The application must be dismissed.Cross appeal The delegate said that the applicant’s opposition was justified. The applicant was correct in saying that use of the mark on the goods for which the application was accepted was likely to cause confusion. On the other hand the respondent’s amendment to his statement of goods following the hearing was sufficient to eliminate that likelihood. As both parties thus had a measure of success, the delegate considered they should bear their own costs. That is also the view to which I have come. The cross appeal should be dismissed.

Ratio Decidendi

Legal Principle Established

Established by: SUNDBERG J

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