Scotch Whisky Association v Jin Ho Lee and Myong Gil Lee
[2013] ATMO 1
•9 January 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Scotch Whisky Association to registration of trade mark applications 1425923(33) - McDOWELLS (LABEL) and 1425925(33) BAGPIPER - filed in the names of Jin Ho Lee and Myong Gil Lee.
Delegate: | Iain Thompson |
Representation: | Opponent: Bill Ladas of Corrs Chambers Westgarth Applicant: Did not appear or file written submissions |
Decision: | 2013 ATMO 01 s52 opposition – s59 established, applicants have no intention to use trade marks. Registrations refused Costs in relation to each of the matters awarded against applicants |
Background
1. These are proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) concerning oppositions to the registration of the trade marks (‘the Opposed trade marks’) which appear below filed in the name of Jin Ho Lee and Myong Gil Lee, (‘the Applicants’) of 2/8 Lyons Street, Strathfield, New South Wales:
Application No: 1425923
Priority Date: 26 May 2011
Goods:Class 33: Blended whisky; bourbon whisky; malt whisky; whisky; rum; rum punch; brandy; brandy based liqueurs
Trade Mark: (‘the McDowell’s trade mark’)
Application No: 1425925
Priority Date: 23 May 2011
Goods:Class 33: Blended whisky; bourbon whisky; malt whisky; whisky
Trade Mark: BAGPIPER (‘the Bagpiper trade mark’)
2. The Opposed trade marks were examined in compliance with section 33 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 15 September 2011.
3. On 12 December 2011, The Scotch Whisky Association (‘the Opponent’) of Atholl Crescent, Edinburgh, served and filed Notices of Opposition (‘the Notices’) to registration of the Opposed trade marks. The Notices recite all of the available grounds provided by the Act including that under section 59 under which I will decide each of these matters.
4. The Opponent has served and filed evidence in support of its opposition to the registration of the Opposed trade marks. The Applicants have not served and filed evidence in answer and, indeed, have not participated in these proceedings in any way whatsoever.
5. Both parties were informed of their right to be heard in these matters. The matters subsequently came before me, a delegate of the Registrar of Trade Marks, to be heard in Melbourne on 15 November 2012. The Opponent was represented by Bill Ladas of Corrs Chambers Westgarth. The Applicants did not appear nor were they represented at the hearing and they did not file written submissions.
Onus
6. The Opponent bears the onus of establishing in each matter one or more grounds of opposition on the balance of probabilities.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].
7. The date at which the grounds of opposition must be established is the date of filing of the Opposed trade marks (‘the relevant date’): see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.
Evidence
8. The evidence in support of the oppositions to registration comprises the statutory declarations of:
· Ian Glen Barclay made on 7 March 2012;
· Lisa Marie Dibiagio made on 9 March 2012;
· John Edward Halmarick made on 9 March 2012; and
· Michael David made on 9 March 2012.
Background
9. Mr Barclay is a Scottish solicitor and Notary Public and has been employed by the Opponent since 1978 as its Director of Legal Affairs.
Mr Barclay explains that the Opponent was incorporated as a company limited by guarantee in terms of the United Kingdom Companies Act 1948 on 22nd April 1960. The Opponent then took over the function of the formerly unincorporated Association known as ‘The Scotch Whisky Association’ which had been in existence since 15th May 1942. Its predecessor, which was dissolved on that date, was known simply as ‘The Whisky Association’. One of the principal objects of the Opponent is the protection of the interests of the Scotch Whisky trade at home and abroad. The Opponent has been in continuous existence since the date of its incorporation. In pursuance of its stated object and to protect the integrity of Scotch Whisky, the Opponent opposes trade mark applications and takes legal actions in courts throughout the world.
There are currently 51 members of the Opponent, each of which is engaged in the distillation and/or blending and/or sale of Scotch Whisky. The members of the Opponent produce over 90% of the Scotch Whisky sold worldwide, including all the internationally well known brands such as JOHNNIE WALKER, WHITE HORSE, VAT 69, DEWAR’S, BALLANTINE’S, CHIVAS REGAL, GLENFIDDICH, GLENLIVET, GLENMORANGIE, J&B and HAIG.
Section 59 Evidence
Ms Dibiagio is a paralegal employed by the solicitors for the Opponent. Relevant to the ground of opposition under section 59 of the Act, Ms Dibiagio states at paragraph 11 of her declaration that on 9 March 2011 she searched ATMOSS, the Trade Marks Office data-base of registered and pending trade marks. Ms Dibiagio found 31 applications for registration by the Applicants and she comments on several of those applications; I summarise Ms Dibiagio’s findings[2] in the table below:
[2] The comments in italics are those of the Registrar’s delegate. Although the italicised passages are not in evidence, the circumstances of the Opposed trade marks as revealed by the evidence in support (which has been served on the Applicants) strongly suggest that the Applicants are well aware of this information.
| App/Reg No | Trade Mark | Comment |
| 663717 | SKILISH | Never Registered Class 41: Providing education with sporting and entertainment |
| 664717 | SKI ENGLISH | Never Registered Class 41: Providing education with sporting and entertainment |
| 666773 | SURFLISH | Never Registered Class 41: Providing education with sporting and entertainment |
| 666774 | GOLFLISH | Never Registered Class 41: Providing education with sporting and entertainment |
| 666775 | TRAVELISH | Never Registered Class 41: Providing education with sporting and entertainment |
| 666776 | LEISURELISH | Never Registered Class 41: Providing education with sporting and entertainment |
| 666777 | LEPORTLISH | Never Registered Class 41: Providing education with sporting and entertainment |
| 666778 | TOURLISH | Never Registered Class 41: Providing education with sporting and entertainment |
| 667058 | KAL PAK: KAL PACKAGE | Never Registered: Class 39: Transport; packaging and storage of goods; travel arrangement KAL is a trade mark used by Korean Air Lines |
| 668958 | Skypass | Refused Class 39: Travel arrangements Skypass is the name of the Korean Airlines frequent flyer program. The Opponent’s evidence shows that the word SKYPASS is currently registered in Class 39 in the name of Korean Airlines Co., Ltd. |
| 674045 | English plus | Never Registered Class 41: Education; providing of training; entertainment; sporting and cultural activities |
| 675798 | HONEYMOON + | Never Registered Class 39: Transport packaging and storage of goods travel arrangement |
| 747800 | SIGMA CARD | Never Registered Class 36: Financial affairs, monetary affairs |
| 747800 | SKYPASS | Never Registered Class 38: Telecommunications |
| 1074222 | MIJAIN HWANGTO SOAP | Registered Class 3: Cosmetics, perfumery essential oils, lotion, cleaning preparation, soap, polishing preparation, mudpack, facial pack The website indicates that the words MIJAIN HWANGTO are used as a trade mark in relation to soap in Korea by Chamtowon Co Ltd. |
| 1074223 | HWANGSOL PACK | Never registered: Class 3: Cosmetics, perfumery essential oils, hair lotion, cleaning preparation, soap, polishing preparation, mudpack, facial pack |
| 1094086 | BEAUTY CREDIT | Registered Class 3: Cosmetics, soaps, perfumery, skin lotions, lipsticks, make up, cosmetic power cleansing cream, make up base, hair lotions eye liners, mascaras, essential oils, common lotions The website indicates that the words BEAUTY CREDIT are used by Korean company Somang Cosmetics as a trade mark in respect of 180 franchised beauty products outlets around the world. |
| 1094087 | THE ETUDE HOUSE | Never Registered Class 3: Cosmetics, soaps, perfumery, lotions, hair lotions, cleaning, polishing, lipsticks, make up, mascaras, cleansing cream, cosmetic powder, eye liners The website indicates that the trade mark ETUDE HOUSE is used by Korean company Etude Corporation as a trade mark in relation to 200 branded beauty products stores around the world. The Opponent’s evidence shows that the trade mark is now registered in Classes 3 and 21 in the name of the Etude Corporation of Korea. |
| 1119085 | Never Registered Class 14: Jewellery, precious stones; horological and chronometric instruments Class 25: Clothing, footwear, headgear According to Wikipedia: Von Dutch is an American multinational licensing company named after artist Kenny Howard. After Howard’s death in 1992, his daughters sold the Von Dutch name to Michael Cassel and Robert Vaughn. The clothing brand gained popularity in the US and attracted the attention of celebrities such as Madonna, Britney Spears, Justin Timberlake, and later Ashton Kutcher. The French stylist Christian Audigier has popularized the brand and left it in 2004. The company was purchased in 2009 by Groupe Royer S.A., through its Luxembourg subsidiary Royer Brands International S.a.r.l. Groupe Royer is the largest shoe distributor in Europe and does distribution for brands such as Converse, New Balance, and Charles Jourdan. The Opponent’s evidence shows that the trade mark is now registered in Class 25 in the name of Royer Brands International S.a.r.l. of Luxembourg. | |
| 1119086 | Never Registered Class 25: Clothing, footwear, headgear According to Wikipedia: In 2004, Christian Audigier licensed the rights to produce the Ed Hardy clothing line, which is based on Hardy’s imagery. Prior to the Ed Hardy clothing line, Audigier was the Head Designer at Von Dutch Originals, which marketed the imagery of Kenny Howard. Audigier has attempted to replicate the marketing techniques employed by Von Dutch Originals, by marketing directly to celebrity clients and by opening stores in high profile fashion districts. Ed Hardy stores are located in San Francisco, New York, Los Angeles, Boston, Seattle, Minneapolis, Honolulu, Scottsdale, Tucson, Vancouver, Dubai, Johannesburg, Kuwait, Kuala Lumpur, Bangkok, Gurgaon, Delhi, Mumbai and Qatar. The Opponent’s evidence shows that the trade mark is currently registered in class 25 by Hardy Way LLC of New York. | |
| 1148784 | AZALEA | Never Registered Class 24: Textiles and textile goods, not included in other classes; bed and table covers |
| 1343645 | Sexlets Gum | Never Registered Class 10: Medical apparatus Class 17: Gum According to the website sexletsgum.com SEXLETS Gum is trade mark used in the USA by Future Lifestyles LLC in relation to a male enhancement chewing gum. |
| 1370085 | under armour | Never registered Class 25: for goods including, inter alia: thermal clothing; thermal clothing (other than for protection against accident or injury); thermally insulated clothing; waterproof clothing; waterproof clothing; water-resistant clothing; weather resistant outer clothing; weatherproof clothing; windbreakers (clothing) An Internet website sells sports clothing with an emphasis on thermal wear. The Opponent’s evidence shows that the trade mark is currently registered in class 25 in the name of Under Armour, Inc. of Maryland, USA. |
| 1370090 | NOVITA | Never Registered Class 11: Bidet taps; bidets; fittings for bidets; receptacles for use as bidets (connected to water supply); sanitary drain armatures for bidets; apparatus for water filtering; domestic water filtering apparatus; domestic water filtering units; drinking water filters; installations for water filtering; machines for water filtering (purifying); water filtering apparatus; water filtering apparatus for domestic use; water filtering apparatus for industrial use; water filtering installations; water filters (installations) for agricultural purposes; water filters (machines) for agricultural purposes; water filters for industrial purposes The Internet website novitausa.com states: NOVITA is the leading manufacturer of various Electronic Bidet products in South Korea. NOVITA USA has an exclusive dealership in the United States from NOVITA in Korea. NOVITA realizes the best customer satisfaction by high quality products and services, improvement of our technology through continuous innovation and pursuing the best value. With its own Laboratory and Factory, NOVITA has developed and provided world-class Electronic Bidet products through its strict quality control and strategic partnership with global company such as Samsung, Toshiba and so on. We are getting top quantity level of monthly production in Korea, with such a variety of different Electronic Bidet organization successfully. |
| 1371574 | JUAN VALDEZ | Never Registered: Class 30: Coffee beans; coffee beverages; coffee beverages with milk; coffee concentrates; coffee drinks; coffee essences; coffee extracts; coffee flavorings (flavourings); coffee mixtures; coffee oils; coffee products; coffee substitutes; coffee-based beverages; decaffeinated coffee; extracts of coffee for use as flavours in beverages; flavoured coffee; freeze-dried coffee; ground coffee; ice beverages with a coffee base; instant coffee; malt coffee; malt coffee extracts; mixtures of chicory for use as coffee substitutes; mixtures of coffee; mixtures of coffee and chicory; mixtures of coffee and malt; mixtures of coffee essences and coffee extracts; preparations for creaming coffee (cereal or vegetal based); preparations for making beverages (coffee based); preparations for use in creaming coffee (glucose syrup based); preparations with a coffee and tea base; unroasted coffee Class 43: Coffee shop services According to the Internet website store.juanvaldezcafe.com/EN/About_us.html: Procafecol S.A. was created in November 2002 by the Colombian Coffee Growers Federation as the company in charge of commercializing the Juan Valdez® brand and has led its national and international expansion. Procafecol’s commercial management is carried out through its commercial channels: cafés, retail, institutional and electronic commerce, which includes the sale of the Juan Valdez® brand of Colombian Premium coffees and product. Thanks to the commercial management of Procafecol S.A., the Juan Valdez® brand of products are present in nine countries Asia, Europe, North America and Latin America. Now, by establishing this website dedicated to electronic commerce, the Juan Valdez® brand will have a global presence. The Opponent’s evidence shows that the trade mark is currently registered in Class 43 in Australia in the name of Federacion Nacional De Cafeteros De Colombia. |
| 1371578 | CHANGYU | Registered Class 33: Beverages containing wine (alcohol content 1.15% or more by volume); beverages containing wine (wine predominating); blended wine; dessert wine; drinks containing wine (wine predominating); dry fortified wine; dry red wine; dry sparkling wines; dry white wine; dry wine; fortified wines; ginger wine; mulled wines; non-sparkling wines; red wine; sparkling fruit wines; sparkling wines; still wines; sweet fortified wine; sweet red wine; sweet sparkling wine; sweet white wine; sweet wine; vintage wines; white wine; wine According to Wikipedia: Changyu Pioneer Wine Co. Inc., located in China’s Northeast Shandong Province is China’s oldest and largest winery. Started in 1892 by Zhang Bishi, the company’s name is formed from his surname Zhang (Chang) and the Chinese character which means prosperity. In 2002, the company entered into cooperation with Castel group in France to establish the first professional chateau in China. In 2006, the company cooperated with a Canadian company to build the largest ice wine chateau in the world near Huanlong Lake of Liaoning province. It has also expanded overseas, building Chateau Changyu Kely in New Zealand. Changyu Pioneer Wine Company is now the tenth largest wine company in the world, producing more than 9,000,000 tonnes of wine per year. |
| 1371583 | UNITED SPIRITS | Registered Class 33: Digesters (liqueurs and spirits); spirit based cocktails (spirits predominating); spirits (beverages); still spirits; beverages containing wine (alcohol content 1.15% or more by volume); beverages containing wine (wine predominating); blended wine; dessert wine; drinks containing wine (wine predominating); dry fortified wine; dry red wine; dry sparkling wines; dry white wine; dry wine; mulled wines; non-sparkling wines; red wine; sparkling fruit wines; sparkling wines; still wines; sweet fortified wine; sweet red wine; sweet sparkling wine; sweet white wine; sweet wine; white wine; wine According to the website Spirits Limited (USL) is the largest spirits company in the world by volume, selling 122.75 million cases for the fiscal ending March 31st, 2012. Besides Whyte & Mackay and Bouvet Ladubay being 100% subsidiaries of USL, the company has 22 millionaire brands (selling more than a million cases a year) in its portfolio and enjoys a strong 59% market share for its first line brands in India. United Spirits’ brands have won the most prestigious awards for flavors, ranging from Mondial to International Wine and Spirit Competition (IWSC) to International Taste & Quality Institute (ITQI); more than 165 awards & certificates. |
| 1371802 | ALMARAI | Opposed Class: 32 Aerated fruit juices; aerated juices; beverages consisting of a blend of fruit and vegetable juices; bottled fruit juices; concentrates for use in the preparation of fruit juice drinks; fresh fruit juices; fresh vegetable juices; frozen concentrated fruit juices; frozen fruit juices; frozen vegetable juices; fruit juice beverages; fruit juice concentrates; fruit juice extracts (beverages or for making beverages); fruit juice extracts for use as a beverage; fruit juice nectar (beverages or for making beverages); fruit juices; grape juice; lemon juice (beverage); lime juice cordial; low calorie fruit juices; multi-vitamin fruit juice beverages (not for medical use); non-alcoholic fruit juice beverages; non-fermented fruit juices; orange juice; tomato juice (beverage); unfermented fruit juice; vegetable juice concentrates (beverages); vegetable juices (beverages) According to Wikipedia: Almarai (Arabic for “pasture”) is the largest integrated dairy foods company in the world. The company was established in the Kingdom of Saudi Arabia in 1976 as a partnership between the Irish agri-foods pioneer Alastair McGuckian and his brother Paddy, and HH Prince Sultan bin Mohammed bin Saud Al Kabeer. The company is based in Riyadh. Almarai Juices were first introduced to the market in 1999. Today Almarai offers 14 with a 40% market share across the Gulf Cooperation Council (GCC). |
| 1373656 | Never Registered | |
| 1425922 | BLUE RIBAND | Registered Class 33: Gin According to the website BLUE RIBAND GIN is made in India by United Spirits Limited (see 1371583, above) and is the fastest selling brand in the gin category worldwide. |
| 1430149 | Registered Class 43: Cafe services; cafes; cafeteria services; cafeterias; Internet cafe services (provision of food and drink prepared for consumption); self-service cafeteria services According to Wikipedia: Caffe Bene is a coffeehouse chain based in Seoul, South Korea. It was founded in May 2008 by Sun-Kwon Kim, current CEO of Caffe Bene. Caffe Bene is the largest coffeehouse in South Korea in terms of the number of stores. As of April 24, 2012, Caffe Bene has 760 outlets in South Korea. It was unprecedented that a start-up coffee chain opened more than 750 stores in four years. Caffe Bene made its international debut in New York in February and opened the second international store in Beijing, China one month later. As of April 26, 2012, Caffe Bene has 3 outlets in China and has signed with 7 countries. The trade mark is identical to that on the website |
Section 59
Section 59 of the Act provides:
59Applicant 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.
Sections 7, 9 and 17 of the Act provide:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
(2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4)In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
(5)In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
9Definition of applied to and applied in relation to
(1)For the purposes of this Act:
(a)a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and
(b)a trade mark is taken to be applied in relation to goods or services:
(i)if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or
(ii)if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and
(c)a trade mark is taken also to be applied in relation to goods or services if it is used:
(i)on a signboard or in an advertisement (including a televised advertisement); or
(ii)in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;
and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.
(2)In subparagraph (1)(b)(i):
covering includes packaging, frame, wrapper, container, stopper, lid or cap.
label includes a band or ticket.
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
It follows from the above definitions that a trade mark cannot be used only in respect of itself: it must be used in relation to goods and/or services. Thus if a person files application to register a trade mark with an intention at the filing date only to sell the trade mark to another person, or only to thwart a registration of a trade mark by its rightful owner and/or gain a financial benefit therefrom, or only as a spoiler or blocking strategy in a trade marks dispute with another person, there can have been no intention at that date to use that trade mark as the intended use must have been in relation to goods or services and not for some other purpose. In short, a use of a trade mark other than in relation to goods and services is not a use of a trade mark as defined by the Act and an application filed with only an intention to trade in the trade mark itself will be vulnerable to refusal or, if registered, removal under section 92 of the Act, revocation or expungement.
In Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9; (2010) 269 ALR 17; (2010) 86 IPR 437; [2010] AIPC 92-383 at [74], the Full Bench said of the intention to use a trade mark:
The intention must exist at the date of application and it may be accepted that the primary judge’s findings (at [108]) relating to use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application (Sapient Australia Pty Ltd v SAP AG [‘Sapient’][3] (2002) 55 IPR 638, at 645-6.
[3] And see Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [2002] ATMO 51
In his submissions Mr Ladas referred to the decision of Hearing Officer Lyons who set out a summary of case law factors relevant to ‘intention to use’ in Americana International Ltd v Suyen Corporation (2008) ATMO 4; (2008) 75 IPR 596:
· The filing an application for registration raises a prima facie presumption of intention to use in favour of the applicant (Aston v Harlee[4] et. al.);
· that presumption is rebuttable (Sapient; Danjaq[5]);
· once rebutted, the onus of proof shifts to the applicant (Sapient; Danjaq);
· where, under the Trade Mark Act 1955, a non-use applicant carried the initial onus of proof, case law supported the view that only slight evidence was required to shift the onus to the proprietor of the registration (Estex Clothing[6]);
· a mere allegation of lack of intention to use is not enough by itself to shift the onus (Medley Distilling Co[7]; NSW Lotteries Commission[8]; Torrag[9]);
· inferences can be drawn to indicate a lack of intention to use (Danjaq; Sapient);
· prior or concurrent actions between the same parties can be a source of inference (Phillip Morris[10]; Sapient; Danjaq);
· non-use does not by itself infer lack of intention to use (Aston v Harlee; Torrag);
· failure to respond to an allegation can draw an adverse inference (Jones v Dunkel[11] — discussed below); and,
· under section 59, it is the applicant who is best placed to know its own business and show evidence of intent when it is properly challenged (Danjaq; Wal-Mart Stores[12]).
[4] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242
[5] Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18; (2004) 61 IPR 651
[6] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1967] HCA 51; 116 CLR 254
[7] Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430
[8] NSW Lotteries Commission v Novamedia BV (2001) 52 IPR 638
[9] Torrag Pty Ltd v PAH Pty Ltd (2006) 70 IPR 349; [2006] ATMO 59
[10] Phillip Morris Products SA v Sean Ngu [2002] ATMO 96
[11] Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 at 312
[12] Wal-Mart Stores, Inc v Ozark-London Ltd [2004] ATMO 33
The consideration of whether or not, at the relevant date, the Applicants intended to use the Opposed trade marks, “must be determined on the evidence as a whole”: per Dodds-Streeton J in Suyen Corporation v Americana International Limited [2010] FCA 368 [229].
It follows that the evidence of the applications for registration after the filing date of the Opposed trade marks in terms of Dodds-Streeton J’s judgment (and that in Sapient) may cast some further illumination on the Applicants’ intentions at the filing date of the Opposed applications.
Mr Ladas also referred me to one of my decisions:
In relation to “trafficking” cases, we refer to the decision of the Hearing Officer in Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18 (7 April 2004). That case involved an application by RCA to register JAMES BONDI as a trade mark for services in class 41, and has some quite clear factual parallels to the instant case.
The parallels referred to by Mr Ladas are:
· The number of applications filed by the Applicants;
· The number of such applications which have never been registered;
· The preponderance of trade marks which were at their filing dates well known in countries other than Australia; and,
· The inherent unlikelihood that the Applicants currently engage, or propose to engage, in fields of commercial endeavor as disparate as distilling spirituous liquors, manufacture of fruit juices or cosmetics, running of wineries, or the provision of entertainment, sports, telecommunications, transportation and coffee house services.
Concerning the Bagpiper and the McDowell’s trade marks, similar observations apply to those relating to the trade marks listed at paragraph 12 as detailed below.
Bagpiper Whiskey[13]
[13] Here I follow the convention that the relevant spirit made in Scotland is spelt ‘whisky’ and that produced elsewhere in the world is spelt ‘whiskey’ and accordingly I refer to the relevant products as such apart from those usages which appear as direct quotes.
According to Wikipedia, “Bagpiper Whisky is an Indian whisky made by United Breweries. Bagpiper whisky was India’s largest selling whisky until 2010, when it was overtaken by Officer’s Choice, which is manufactured by Allied Blenders & Distillers (ABD). Bagpiper whisky was launched in October 1976. It is similar to a blended whisky flavored with pot still malt whisky but the neutral spirits used as base are distilled from molasses instead of grain. Outside of India, such a drink would more likely be labeled a rum.”
And the United Distillers website states:
Launched in 1976 by Herbertsons, Bagpiper is now USL’s legendary flagship brand. Having become a sell-out in the very first year of its inception, Bagpiper holds the honour of being USL’s first ‘Millionaire Brand’ and also carries the esteemed title of ‘The World’s Largest Selling Whisky’. Over the decades Bagpiper has attained phenomenal success and is now being exported to 10 countries across the globe. The Bagpiper blend is one that has been carefully crafted and perfected to offer the same rich experience as that of a scotch, and that too at convenient prices. With a light malty aroma and a hint of a smooth woody character, owing to the use of malt spirits specifically matured in pre-identified American oak casks, the Bagpiper experience has been espoused by millions of loyalists over the years.
McDowell’s Whiskey
Wikipedia states, “The drinking of Scotch whisky was introduced into India during the nineteenth century, during the period of the British Raj. Scotch-style whisky is the most popular sort of distilled alcoholic beverage in India. India has traditionally been thought to lack a domestic drinking culture, with the exception of Rajputs, Ahirs Gujjars and Jats even though there are quite a few local brews manufactured and consumed all over the country such as the popular palm-based alcohol and fruit wines of the south, such as arrack, and the fermented rice wines of the northeast like sonti. In fact, India has a rather high level of alcohol consumption, even to the point where the government has called for mandatory “dry weekends” where alcohol is not purchasable in any market in New Delhi. Whisky, however, has become fashionable for wealthier Indians, and as such the market for whisky among affluent Indians is one of the largest in the world. Brand names of Indian molasses whisky, including “Bagpiper”, “McDowell’s No. 1”, “MaQintosh” suggest that the inspiration behind the Indian whiskies is Scotch whisky, despite these products being chiefly made from molasses.
The United Distiller’s website states:
McDowell’s No.1 has undoubtedly been the top-of-the-line whiskey both literally and laterally. Over the years the brand has reinvented itself in all possible ways and has looked at greater accomplishments in product, packaging, marketing and promotions.
In the beginning, it had the tag ‘Mera No.1’ attached to it. However, over the years, it has evolved and transformed from an “icon” to a brand character. The brand has reinvented itself in all possible ways and has looked at greater accomplishments over the years. With the simple proposition of “celebrations in life begin with McDowell,” the trademark cheer finger has quite evidently made an impression.
The proof of its quality and appeal is that it has not only survived the Scotch invasion, but is on its way to becoming one of the biggest whisky brands in the world even beating pure Scotch!
Apart from the popular McDowell’s No. 1 Reserve Whisky, McDowell has another variant under its label - DietMate Whisky, world’s first diet whisky, created especially for the fitness conscious drinkers. The brand’s ability to change itself constantly and remain connected to the ever - changing customer aspirations is the key to its success.
One of the trade marks used by United Distillers in relation to its McDowell’s whiskey is that appearing below:
While Mr Ladas characterised the opposed McDowell’s trade mark as being a ‘slavish imitation’ of the United Distillers trade mark, I consider it should more properly be termed ‘a replica’.
Reasoning
In Aston v Harlee Fullager J said at [20]:
In Re The Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corporation Ltd. [1951] HCA 28; (1951) 82 CLR 199, Williams J. said: “To try and register in Australia a word which the applicant to the knowledge of the respondent is using elsewhere on its cigarettes is sharp business practice . But it is not in itself fraudulent or a breach of the law.” (1951) 82 CLR, at p 202 (I would think myself that it may or may not, according to circumstances, constitute “sharp business practice”.)
Thus the situation of ‘sharp business practice’ by a local company which in fact intends to use a trade mark in relation to goods or services is to be distinguished from one in which a lack of any intended use is alleged and where the purpose of the filing is only to traffic in the trade mark itself.
The Opposed trade marks are not being considered under the section 59 ground only because they are identical to trade marks which are well-known in relation to particular goods in another country. They are being considered under section 59 because they are a part of a pattern of such applications which may reflect on the Applicants’ intention to use the trade marks in relation to goods or services.
My assessment of the evidence as a whole is that it is sufficient to rebut the prima facie presumption of intention to use. The evidence shows that the Applicants have an established pattern of applying to register trade marks which are well known in countries other than Australia and then either not pursuing those applications to registration or eventually registering them. Significantly, many of the applications filed by the Applicants have been subsequently registered by other people. The pattern strongly suggests the obvious conclusion that the Applicants file applications to register trade marks only in order to traffic in those trade marks and not to use them in respect of goods or services.
Whilst only slight evidence is required to shift the onus onto the Applicants, the evidence before me strongly suggests a conclusion that the Applicants had no intention of using the Opposed trade marks in relation to goods at the relevant date or, indeed, at all.
The Applicants have not responded to the allegation contained in the ground and explicit in the evidence. The establishment of use of a trade mark, via receipts, invoices, declarations by customers or suppliers and the like, is comparatively straightforward. Establishment of intended use via the appropriate documentation of business plans, registration of business names, establishment of websites, declarations from those with who the Applicants have negotiated for premises, supply, manufacture and distribution, or for wholesale and/or retail of goods under the respective trade marks is also straightforward. Absent such evidence, the inference should be taken that the Applicants have been content to sit on their hands as regard use of any of their trade marks once their trade marks have been filed and/or registered.
The Applicants have not responded with any information concerning the Opposed trade marks, indeed, they have not responded at all and have not, therefore, discharged the onus which is now on them to demonstrate that they intend to use the Opposed trade marks.
I therefore find that the Applicants did not intend to use the Opposed trade marks at the relevant date in respect of goods.
The Opponent has established its oppositions under section 59 of the Act.
Decision
Section 55(1) of the Act provides:
55Decision
(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.
I refuse to register trade mark applications 1425923 and 1425925.
Costs
Sections 202 and 221 of the Act provide:
202Registrar’s powers
The Registrar may, for the purposes of this Act:
(a)summon witnesses; and
(b)receive written or oral evidence on oath or affirmation; and
(c)require the production of documents or articles; and
(d)award costs against a party to proceedings brought before the Registrar; and
(e)notify, as he or she considers fit, any person of any matter that, in his or her opinion, should be brought to the person’s notice.
Note:For the awarding of costs see section 221.
221Costs awarded by Registrar
(1)The Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her.
(2)A party desiring to obtain costs must apply to the Registrar in accordance with the regulations.
(3)If a party is ordered to pay the costs of another party, the costs may be recovered in a court of competent jurisdiction as a debt due by the first party to the other party.
The Opponent, having been successful in these proceedings, is entitled to its costs which I award against the Applicants. In doing so I note that the Opponent has opposed registration of non-identical trade marks which may involve different sets of considerations and has filed one set of evidence in support in relation to each matter. Further, it was open to the Applicants to withdraw the Applications at any time after the Notices were served on them by the Opponent but the Applicants have not in any way participated in the proceedings. Accordingly, having regard to the circumstances of these oppositions, and in addition to any Official fees and allowances, the Opponent is entitled to separately claim its costs at the Official Scale set out in regulation 8 in relation to preparation of its evidence in support and for the preparation of the matters for hearing. The matters were to an extent separately argued at the hearing and the Opponent is thus entitled to its costs at two thirds of the Official Scale in relation to each matter in respect of its attendance at the hearing.
Iain Thompson
Hearing Officer
Trade Marks Hearings
9 January 2013
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