Southcorp Brands Pty Limited v Gotop Australia Pty Ltd

[2024] ATMO 205

TRADE MARKS ACT 1995

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

Re:Opposition by Southcorp Brands Pty Limited to registration of trade mark application number 2332688 (class 33) – 389 Figurative – in the name of Gotop Australia Pty Ltd

Delegate:

Debrett Lyons

Representation:

Opponent:  Herbert Smith Freehills, Solicitors

Applicant:  no representation

Decision:

2024 ATMO 205

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44, 58 and 60 pressed – s 44 established – trade mark refused registration

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Southcorp Brands Pty Limited (‘Opponent’) to registration of the following trade mark:

   Trade mark no:           2332688

   Trade mark:                  (‘Trade Mark’)

   Applicant: Gotop Australia Pty Ltd (‘Applicant’)

   Filing date:7 February 2023

   Specification:             Class 33: Beverages containing wine (wine predominating); Dry red wine; Dessert wine; Cooking wine; Blended wine; Dry sparkling wines; Dry white wine; Dry wine; Ginger Wine; Wine; White wine; Vintage wines; Sweet red wine; Sweet wine; Red wine; Mulled wines; Wine-based beverages; Low alcohol wine; Alcoholic beverages containing wine; Alcohol for drinking; Alcoholic beverages, except beer; Alcoholic cocktails; Baijiu (Chinese distilled alcoholic beverage); Rice alcohol; Liquors (alcoholic beverages); Grain-based distilled alcoholic beverages; Alcoholic beverages containing fruit; Fruit based alcoholic beverages; Fruit extracts (alcoholic); Alcoholic extracts of fruits

   (‘Applicant’s Goods’)

2. The Trade Mark was examined as required by s 31 of the Act and accepted early. The Applicant was notified of that and advised that advertisement of acceptance would occur after 7 July 2023. On 8 July 2023 that occurred. On 28 July 2023 the Opponent filed a Notice of Intention to Oppose and on 28 August it filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend on 5 September 2023.

3. On 13 September 2023, the Applicant randomly submitted to the Office an image of a bottle showing the Trade Mark and was advised to file evidence in accordance with the Trade Mark Regulations 1995 (Cth) (‘Regulations’).  Over the following fortnight, the Applicant again sent isolated images to the Office and was reminded to formalise evidence at the proper time.

4. Following the Regulations, the Opponent filed evidence in support being the declaration of Anna Gabrielle Olsen, Global Director of Intellectual Property of Treasury Wine Estates Limited, the Opponent’s parent company (‘Olsen Declaration’) with Exhibits AGO-1 to AGO-32 made on 13 December 2023.  The Applicant did not file Evidence in Answer.

5. The Opponent requested a hearing by written submissions.  Only the Opponent filed submissions.  The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide which I do based on the SGP, the Olsen Declaration and any other material of relevance being part of the official records of this Office pertaining to acceptance of the Trade Mark.

   Grounds of opposition, onus, and relevant date

6. In the SGP, the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60 of the Act. The Opponent bears the onus of establishing at least one of those grounds.[1]  The standard of proof is the civil standard of the balance of probabilities[2]  and the date at which the rights of the parties are to be determined is 7 February 2023     , being both the filing date and priority date of the Trade Mark (‘Relevant Date’).

   Discussion

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Section 44

7. Section 44(1) of the Act provides:

   (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.

8. The SGP cites the following trade mark registration (‘Registration’) as the basis for s 44:

Regn. no.	Trade mark	Specification	Priority date
867038	BIN 389	Class 33: Table wines	22 Feb 2001

1. To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods and that neither of s 44(3) or (4) applies.

2. The Registration is owned by the Opponent and has a priority date earlier than the Relevant Date. Section 14(1) of the Act states that goods are similar if they are the same or of the same description as other goods. The Registration covers “wine” and the Applicant’s Goods are either the same or of the same description as wine. As the Opponent correctly states, it is well established that alcoholic beverages of different kinds are similar for the purposes of s 14(1).[3]

   [3] See, for example, E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27; section 32B.2.4 of the Trade Marks Manual of Practice and Procedure.

3. The remaining question for the purposes of s 44(1) is whether the Trade Mark is substantially identical with, or deceptively similar to, the mark of the Registration. The Opponent submits that they are both substantially identity and deceptively similar. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd  the test for substantial identity was set out as follows:

   [the marks] should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   [4] [1963] HCA 66, [12].

4. On a side-by-side comparison there are clear differences between the trade marks.  I find that a total impression of resemblance does not emerge from a comparison made in the manner described and so I find that they are not substantially identical.

5. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

   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.

6. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[5]  This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[6]  In other words, the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer is likely to lead to confusion as to the origin of the goods.[7]  Allowance is made for imperfect recollection of the trade marks.[8] The impression comes from the trade marks in their entirety,[9] and is informed by the look, sound and ideas conveyed by the trade marks.[10]

   [5] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

   [6] Ibid.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [8] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [9] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [10] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

7. Together, the Opponent’s submissions and the Olsen Declaration establish that the term of art “bin” refers to wine bins and predominantly indicates the storage location but can also be a reference to the style or history of the wine.  Further, the Chinese character 坊 appearing below the number 389 in the Trade Mark can be expressed in Pinyin as “fang” and when it is paired with the Chinese character for wine, 酒, (in Pinyin, “jiu”) forms 酒坊 which transliterates as “wine shop”.  Furthermore, that the Opponent has spent time and energy directing the marketing of its premium wines, of which BIN 389 is one, to the Chinese – Mandarin speaking wine buyer in Australia.

8. Some of those arguments may be thought to stray outside s 44 considerations and are perhaps more relevant to s 60 and reputation. However, I consider that over recent years sufficient publicity has been given to the practice of Australian wine makers to develop a Chinese market for their goods and that this can be reasonably considered within the matrix of s 44 and the question of deceptive similarity. It is not a question of reputation so much as a matter of industry practice. Furthermore, whilst that practice has focused primarily on the export market, the natural corollary is a raised awareness of wine and wine makers amongst the significant number of Chinese consumers in Australia.

9. I am in agreement with the Opponent that the relevant class of consumers is the general population of alcohol drinkers, which consists of most of the adult Australian population and that a relevant subset of that class is the Chinese-speaking adult Australian population.  I agree, too, with the broad proposition put forward by the Opponent that consumers look for key indicators on the labels when selecting alcoholic beverages.  Likewise, I am mindful of the possible notional fair use of the Trade Mark by the Applicant, which might include use on an identically stylized bottle and label to that sold by the Opponent.  

10. Since the Trade Mark contains a Chinese character it is reasonable to assume that an intended class of consumers would be Chinese-Mandarin speakers.  The Opponent insinuates that those consumers would regard the Chinese character element of the Trade Mark as descriptive.  The writer’s own enquiries suggest that the Chinese character 坊 transliterates to “square”.  There is no evidence on the matter to assist me, but it appears that the character has no descriptive sense or obvious connotation when used in relation to the Applicant’s Goods – certainly none to indicate that the character 坊, alone, would suggest “wine shop”. 

11. That said, my own knowledge of Chinese characters is that they more often or not have more than one meaning and that the relevant meaning is contextually determined.  I find that Chinese speakers seeing that character in use in relation to the Applicant’s Goods may infer a meaning of “wine shop” or similar.  But whether those consumers drew that inference, or treated the character as contextually meaningless, the numbers 389 would exist as the memorable part of the Trade Mark.  Further, it can reasonably be inferred that those same consumers would have no understanding of the word “bin” and disregard it.  In short, they would perceive 389 as the dominant and memorable part of both marks.

12. To the wider class of consumers - the adult Australian population who do not read Chinese -the character 坊 would have no meaning and it would more likely than not be treated as ornamental, or perhaps a translation of the number 389 into a different script.  Further, most of those consumers would have seen the word “bin” used by the Opponent and others on labels.  Whether they understood its meaning in connection with wine (described already) or had no precise understanding of its meaning, they are likely to treat it as descriptive/generic and principally recall the number 389.

13. I am satisfied that the prominent and memorable part of the respective marks is the three numeral combination of 389 and there would be a real and tangible danger of confusion.  I find that the marks are deceptively similar.

14. Accordingly, the final requirement of s 44(1) is satisfied. There is nothing to indicate that either of s 44(3) or (4) should apply since there is no evidence of concurrent or other use of the Trade Mark by the Applicant, nor of special circumstances. For completeness, I add that the matter submitted to the Office by the Applicant from 13 September 2023 onwards has no influence on the reasoning above, even if it was somehow found to be admissible under the Regulations. The s 44 ground of opposition is therefore successful. It is not necessary to consider the other grounds in the SGP.

    Decision

15. Section 55 of the Act relevantly provides:

    (1) Unless subsection (3) applies to the proceedings, 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.

16. The Opponent has established a ground of opposition. Accordingly, I decide that application number 2332688 should be refused.  If the Registrar is served with a notice of appeal the disposition of the application should otherwise be in accordance with the Court’s order or direction.

    Costs

17. The Opponent sought costs. It is usual for costs to follow the event, and there is no reason to depart from that principle in this case. I award costs against the Applicant in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.

    Debrett Lyons

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    23 October 2024