Societe Jas Hennessy & Co v Paradise Estate Wines Pty Ltd

[2006] ATMO 40

TRADE MARKS ACT 1995

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

Re:Opposition by Societe Jas Hennessy & Co to registration of trade mark application 959508(33) Paradise Estate Wines (Label), proceeding in the name of Paradise Estate Wines Pty Ltd.

Delegate:

Iain Thompson

Representation:

Opponent

Written submissions by Tymen Brom of Watermark.

Applicants

Written submissions by Fred Schilling of Davies Collison Cave

Decision:

1. s52 opposition, s44 established – registration refused.

Background

1.    Paradise Estate Wines Pty Ltd, of Mission Beach, Queensland, ('the applicant') has filed an application to register a trade mark, current details of which are:

App No:  959508

Filing Date:  28 June 2003

Acceptance Advert:  30 October 2003

Services:Class: 33:  Fruit wines

Trade Mark:  

2.    On 22 January 2004, Societe Jas Hennessy & Co of Cognac (Charente) in France, ('the opponent') filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The Notice cites most of the available grounds under the Trade Marks Act 1995 (‘the Act’) but in its written submissions the opponent relies on sections 44 and 60 of the Act. For the sake of completeness, I now find that those grounds other than those under sections 44 and 60 have not been established.

3. Evidence in support and evidence in answer were duly served and filed in accordance with the Act and regulations thereto.

4. Neither party has requested a hearing in this matter and, in order to meet the Registrar’s obligations under section 55 of the Act, the issue has been set down for me to determine as a delegate of the Registrar of Trade Marks. Both parties have filed written submissions.

Evidence

5.    In summary, the evidence comprises declarations by Yann Fillioux, a director of the opponent, Jonathan Coles, Senior Marketing Manager of Moet Hennessy Australia, in support of the application and declarations by Christopher Hammond of The Nuances Group; Gary Raymond Stewart, Company Director of Mendika Proprietary Limited; Marietje Lankester, CEO of the applicant; and, by Frederick Schilling, Patent Attorney of the applicant, in answer to the opposition.

6.    The evidence shows that the applicant uses its trade mark in Australia in relation to banana-based wine beverages and has done so since September 2003 (after the date of the filing of the application).  The opponent’s evidence shows that it has used the trade mark PARADIS on an exclusive and expensive brandy in Australia since 1993.

7.    The opponent’s trade mark is registered in Australia.  The details are:

Reg Number  350211

Priority date:  27 August 1980

GoodsClass: 33 Alcohols and brandy, liqueurs, spirits and aperitifs

Trade Mark:  PARADIS

8.    For reasons that will become obvious, it is not necessary to discuss the evidence of the parties any further.

Section 44

9. Section 44 of the Act relevantly provides:

44  Identical 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).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

10. The expression ‘deceptively similar’, above, is defined within section 10 of the Act which provides:

10  Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

11. The expression ‘similar goods’, above, is defined within subsection 14(1) of the Act which provides:

14  Definition of similar goods and similar services

(1)         For the purposes of this Act, goods are similar to other goods:

(a)         if they are the same as the other goods; or

(b)if they are of the same description as that of the other goods.

12.   In Registrar of Trade Marks v Woolworths [1999] FCA 1020 French J, with Tamberlin J agreeing, said at paragraph 39:

Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as "closely related goods" in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

13.   As the question of deceptive similarity is to be assessed in the context of the goods or services in question[1], it is logical to first consider the question whether the goods of the parties are similar.

[1] Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777

14.   It is important to stress here that what I am assessing is not any similarity between ‘banana-based wines’ and ‘brandy’.  The application seeks registration in respect of ‘fruit wines’ and the specification of the opponent’s registration is, ‘Alcohols and brandy, liqueurs, spirits and aperitifs’ and I must suppose that both parties use or intend to use their trade marks to the limits of their specifications. 

15.   In its context, I think that the word ‘alcohols’ in the opponent’s specification should be seen as referring to all alcoholic beverages within Class 33 which are otherwise not included in the specification.  It is unlikely that it should be read as meaning only spirituous liquors as spirits are specified elsewhere in the opponent’s goods.  The word does not seem to make any sense, in its context, unless it refers to all alcoholic beverages in Class 33.  The expression ‘fruit wines’ is thus caught by the word ‘alcohols’ within the opponent’s specification of goods.

16.   Fruit wines also fall within the description:

liqueur n.

any of several sweet alcoholic liquors, variously flavored, usu. drunk after a meal.

(From The Oxford American Dictionary of Current English in English Dictionaries & Thesauruses)

17.   And, if ‘fruit wines’ do not fall within the above definition, ‘fruit wines’ are, in my consideration, ‘goods of the same description’ as ‘liqueurs’.

18.   As observed by Goldberg J in San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842 , at paragraph 35:

It is a question of fact and impression whether goods are goods "of the same description": Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 545, 546. The authorities establish that a number of matters should be taken into account in determining whether goods are of the same description. These matters cover the nature of the goods and their characteristics, the use to which they are put and the trade channels through which they are sold: Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94; J Lyons & Coy Ld's Application [1959] RPC 120 at 128; Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 606; McCormick & Company, Inc v Mary McCormick [2000] FCA 1335 at [18]. Overall the matter is to be determined from a business point of view: Australian Wine Importers' Trade Mark (1889) 6 RPC 311 at 318.

19.   Fruit wines and liqueurs have the same nature and characteristics – they are typically sweet alcoholic beverages of variable alcoholic content.  They come onto the market through the same trade channels; and, they are bought by the same class of customer for the same purpose.  That is, fruit wines and liqueurs and are both commonly consumed as an accompaniment to dessert or cheese or as after dinner alcoholic beverages.  The difference, for example, between cherry wine (a fruit wine) and cherry liqueur may be unnoticed. 

20.   The goods of the parties are therefore similar goods.

21.   As regards ‘deceptive similarity’, in Registrar of Trade Marks v Woolworths (above) at paragraph 50, French J, with Tamberlin J agreeing, made the following propositions:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Co Inc (1973) 129 CLR 353 at 362:

"the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

1. As far as the comparison of the trade marks is concerned, Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641 at page 658 say:

   In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

2. And as I have alluded to above, the comparison is to occur in the context of the goods in terms of Parker J’s statement in Pianotist,, above, where he said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

   24.   Adverting again to the goods, I would re-stress that I am bound to consider the effects of the concurrent use of the trade marks if ‘notionally’ used to the limits of both the opponent’s and applicant’s goods: Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8 and see Berlei, above.  I am not, therefore, comparing the trade marks in the context of the actual use of the opponent’s trade mark in relation to ‘brandy’ – and the applicant’s use on ‘fruit wines’.  What I am to consider is the likely effects of the use of both parties’ use of their trade marks on all of the goods within their specifications including, inter alia, ‘fruit wines’, or at least goods of the same description as ‘fruit wines’.

   25.   The word PARADISE is the dominant feature of the applicant’s trade mark.  It is the word by which the opponent’s trade mark will be known, remembered and ordered.  The word PARADIS, will, I consider, be seen as essentially the same word, it is the only word in the opponent’s trade mark and is, to all intents, phonetically indistinguishable from the word PARADISE.  In this regard, I note that in aural use the applicant’s trade mark is substantially identical to that of the opponent.[2]  Any verbal request for similar goods sold under the trade marks will result in deception or confusion.

   [2] See subsection 7(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’.

   26.   In George Ballantine & Son Ltd v Ballantyne Stewart & Co Ltd [1959] RPC 47 Lloyd-Jacob J said at 48-9:

   It is plain that such display must inevitably result in bottles so labelled being identified in the market by reference to these prominent features, and, having regard to the common practice of abbreviation obtaining in trade channels, the existence of which in the retail distribution of whisky in bottle was spoken to in evidence, it must be taken as reasonably probable that the form of reference will be to ‘Ballantyne’s’. Such reference is phonetically identical with the sound of two of the Plaintiffs’ aforesaid marks registered in respect of the same goods and would prima facie establish that the Defendant Company, in putting bottles so labelled upon the market, were infringing the exclusive right conferred by registration to the use of the Trade Mark in relation to the goods in respect of which it is registered.

   27.   Looked at another way, the words in question are either the sole or dominant feature of each of the trade marks.  The words are inherently distinctive in that there is no suggestion or evidence that they are in any way commonly used in the trade and they thus are how the trade marks will be known and remembered and requested.  While I note that a great many bottle shops or retail outlets for alcoholic beverages are of the self-service variety, many are not and customers are served from behind a counter with the bulk of the beverages being supplied on request.  Many of the outlets that are of the self-service variety have a ‘drive through’ where beverages are, or can be, ordered from a vehicle, without the customer alighting.  Moreover, many drinks are ordered in bars, bistros and restaurants only by aural reference to a trade mark.  A request for a bottle of PARADISE or PARADIS under any of these circumstances would be indistinguishable from each other.

   28.   The additional matter being the descriptive words ESTATE WINES and the sun device are not so prominent or memorable that they will become how the trade mark is known and remembered – nor do they combine with the word PARADISE in the opposed trade mark in such a way so as to change either its significance or immediate impact. 

   29.   And, if used to the extent of the specifications, the deceptively similar trade marks will not distinguish themselves from each other on the basis of sales point, price or type of beverage.

   30.   In short, if both trade marks are used to the extents of their specifications of goods, confusion and deception because of the similarity of the trade marks and the similarity of the goods is not only likely, it is unavoidable and inevitable.

   31. The supporting declarations by Messrs Hammond, Stewart and Schilling are not of great weight or assistance as they, in essence, state that there could be no deception or confusion because of the way in which the trade marks are in fact used on the respective goods of the parties. However, in terms of subsection 44(1), here, this is not what I am to consider.

   32. The opponent has established its opposition in terms of subsection 44(1) of the Act. The honest concurrent user provisions are not available to the applicant as use of the trade mark started after the application was filed. The rights of the parties are to be determined as at the application date of the opposed application as per Woolworths, at paragraph 21 of this decision, above.

   33. As the opponent has established its opposition under subsection 44(1), there is no need for me to consider the further ground of opposition in terms of section 60.

   Comment

   34.   It is doubtful that the honest concurrent user provision at subsection 44(3) will ever be of assistance to the applicant.  Any submission by the applicant that there has been no confusion or deception through the use of its trade mark may be met by the rather telling observation that the opponent has never used its trade mark on those particular goods – the trade marks would arguably not have been concurrently used on the goods in question.  A lack of present confusion would thus be unsurprising and the extent of any future confusion impossible to gauge.  Moreover, there would remain a potential that the present opponent will use its trade mark on all of the goods in its specification as it is entitled to do.

   35. Absent an agreement by the present opponent to limit its specification of goods, in my view if the applicant wishes to register its trade mark it will need to resort to the provisions of section 92 of the Act.

   Decision

   36. Section 55 of the Act provides:

   55. 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.

   37.   I refuse to register application 959805.

   Costs

   38.   The opponent is entitled to its costs which I order against the applicant at the official scale

   Iain Thompson

   Hearing Officer

   Trade Marks Hearings

   22 May 2006