Southcorp Brands Pty Ltd v Casella Wines Pty Limited

[2018] ATMO 35

TRADE MARKS ACT 1995

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

Re:Opposition by Southcorp Brands Pty Ltd to registration of trade mark application 1741495(33) - ABEL TASMAN - filed in the name of Casella Wines Pty Limited.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Wray and Associates Applicant:  Pizzeys Patent and Trade Mark Attorneys
Decision:	2018 ATMO 35 Trade Marks Act 1995 Section 52 opposition to registration: grounds under sections 44, 60, 42(b) and 62A. Ground under section 60 established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Casella Wines Pty Limited (‘the Applicant’) has applied for the registration of the trade mark which appears below:

Application No:           1741495

Priority Date:               15 December 2015
Goods:  Class 33: Fortified wines; Sparkling wines; Wine
  (‘the Goods’)
Trade Mark:                ABEL TASMAN

(‘the Trade Mark’)

1. The Trade Mark was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 12 May 2016.

2. On 9 May 2016 Southcorp Brands Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.

3. On 13 May 2016 the Opponent filed its Statement of Grounds and Particulars detailing grounds under sections 44, 60, 42, and 62A of the Act.

4. On 8 July 2016 the Applicant filed a Notice of Intention to Defend.

5. Both parties have filed evidence as is further discussed below.  Both parties have been advised of their right to be heard or to make written submissions.  The Applicant has filed written submissions by its attorneys, Pizzeys Patent and Trade Mark Attorneys.  The Opponent, who is represented by Wrays, has elected to neither be heard or to make written submissions.

Evidence

1. On 13 October 2016 the Opponent filed its Evidence in Support being declarations by:

   Anna Gabrielle Gibson, Intellectual Property Manager of the Treasury Wine Estates group of companies, made on 12 October 2016, with Exhibits AG-1 to AG-14 and two Confidential Annexures; and

   Declaration by Sandra Elizabeth Forman, Trade Marks Attorney of Wrays, made on 12 October 2016, with Exhibit SEF-1.

2. On 25 January 2017 the Applicant filed its Evidence in Answer being declarations by:

   Julian Raccanello, Global Sales Support & South America Market Manager of the Applicant, made on 25 January 2017, with Exhibits JR1 to JR6; and

   Jennifer Ann Mackie, Registered Trade Marks Attorney and Principal of Pizzeys Patent and Trade Mark Attorneys, made on 25 January 2017, with Exhibits JAM1 to JAM4.

The Opponent

1. Ms Gibson states that Opponent is a part of the Treasury Wine Estates group of companies (‘TWE’) and declares that:

   TWE has an extensive trade mark portfolio, comprising hundreds of brands serving markets around the world, including the regions of Australia/New Zealand, the Americas, Europe and Asia. These brands include the internationally renowned Penfolds, Wolf Blass, Wynns, Lindemans, Rosemount and Beringer brands.

   TWE controls around 15,000 hectares of vineyards in the premium wine growing regions of Australia, New Zealand, California and Italy, and operates more than 20 wineries throughout the world.

2. Ms Gibson states that the Opponent is the owner of the trade mark which appears below:

Registration No:           1313095

Priority Date:               4 August 2009
Goods/Services:          Class 33: Wine
Trade Mark:                ABEL’S TEMPEST

(‘the Opponent’s Trade Mark’)

1. Concerning the history of the Opponent’s Trade Mark Ms Gibson states:

   The [Opponent’s Trade Mark] was adopted by the Opponent in 2009, as a new sub-tier of the Heemskerk brand and for use in relation to a range of wines made from grape varieties sourced from within Tasmania.

   The Heemskerk brand name was first established in 1965, when its founder, Graham Wiltshire, planted the first vines in the Pipers River region of Tasmania. This was shortly followed by the establishment of the Heemskerk winery in 1975, as now owned by TWE.

   The Heemskerk name was taken from one of the two sailing ships the 'Heemskerk' and the 'Zeehan' of Dutch explorer Abel Tasman, who is the first European reported to have sighted Tasmania's west coast in 1642 after sailing through the violent tempests that raged around the Tasmanian coast.

   The Heemskerk name has therefore long been associated with the history of Abel Tasman and the [Registered Trade Mark] was specifically developed and chosen to conspicuously reflect this relationship and origin [...].

   […] the [Opponent’s Trade Mark] was specifically selected to reflect the Heemskerk brand's strong connection with Abel Tasman and the story of his ships' journey of discovery through the violent tempests off the coast of Tasmania 1642.

   [The Opponent’s Trade Mark] was first used as a trade mark for wines with the commencement of bottling of the wines in November/December 2009. In March 2010, table wines labelled with the [Registered Trade Mark] were initially supplied to Coles' Vintage Cellars outlets, and later to other retailers, independents and licensed premises throughout all States and Territories of Australia.

   Due to the success of the initial ABEL'S TEMPEST still wine offering, use of the [Opponent’s Trade Mark] was extended to sparkling wines towards the end of 2011.

   Since its launch in 2010, I understand that the [Opponent’s Trade Mark] has been continuously used and marketed in relation to wines throughout Australia.

2. I will discuss other aspects of the Opponent’s evidence as it becomes relevant to my decision.

The Applicant

1. In his declaration Mr Raccanello states:

   The Applicant was established by the Casella family. The Casella family has a history of winemaking dating back to 1820. Filippo Casella recognised the great potential of the Riverina region in New South Wales for wine. In 1965, he bought land near the township of Yenda outside of Griffith in New South Wales and grew grapes for local winemakers. Grape growing soon became wine making; in 1969 the Casella family winery was established.

   John Casella, one of Filippo's sons, joined the family business and became Managing Director of the Applicant in 1994. John's vision has always been to produce great quality Australian wine for the world. Many consumers were intimidated by the mature, stuffy wine industry and avoided wine because they didn't want to learn about wine vintages, varietals and regions. The key to differentiation was to make a fun and non-traditional wine that was easy to drink for everyone. In 2001 the Applicant created the [yellow tail] trade mark and selected the iconic yellow-footed rock-wallaby as its logo for the label.

   Since its inception in 2001, the yellow tail brand has grown to be the Most Powerful Australian Wine Brand in the World and fifth Most Powerful Wine Brand globally. Exhibited hereto and marked JR-1 is the 2015 Intangible Business, The Power 100 Report noting this current ranking.

   The Applicant exports over twelve and a half million cases of [yellow tail] branded wine to more than fifty countries around the world every year and more than two and a half million glasses of [yellow tail] wine are enjoyed around the world each day.

   Today the Applicant has a large brand portfolio which alongside the [yellow tail] brand includes Peter Lehmann Wines brands, Morris Wines brands, Brand's Laira brands and other premium wine ranges. The Applicant also has an interest in the Australian Beer Company which manufactures and markets beer and cider goods.

   The Applicant has a number of land holdings around Australia associated with its products including in the Riverina region, the Coonawarra and Barossa regions and Tasmania.[1]

   [1] I am personally aware that the Applicant is the owner of the Redlands Estate in Tasmania’s Derwent Valley.

2. The Applicant has not, states Mr Raccanello, used the Trade Mark in Australia.

3. I will discuss the balance of the Applicant’s evidence as it becomes relevant to my decision.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.

2. The Relevant Date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application (whilst section 60 – under which I will decide this opposition – specifies the ‘priority date’, that date is here the same as the filing date).

Section 60

1. Section 60 of the Act provides:

   60Trade 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.

2. In order to found this ground the Opponent must establish that, at the priority date:

   ·    the reputation of the trade mark on which it relies[2] was such that

   ·    the use of the Trade Mark would be likely to confuse or deceive.

   [2] Under section 60 of the Act it is not necessary that the trade mark on which the Opponent relies be registered.

Reputation

1. In McCormick & Co Inc v McCormick[3] (‘McCormick’) Kenny J asked:

   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”.

   [3] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

2. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[4] Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)[5] was to be:

   ... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   (Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). ^[6]

   [4] [2000] FCA 1587; (2000) 50 IPR 1.

   [5] The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

   [6] [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

3. Regarding the measurement of reputation, in McCormick Her Honour went on to state:[7]

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [7] Op cit at [86].

4. It is also necessary, when appropriate, to consider the particular values and images with which a particular reputation is associated.  In McCormick[8] Kenny J quoted the Registrar’s delegate:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

   [Stress added]

   [8] Op cit at [85].

5. The confidential annexures to Ms Gibson’s declaration show revenue under the Opponent’s Trade Mark which I would characterise as very respectable as are the amounts expended on advertising and promotion under the Opponent’s Trade Mark.

6. The advertising and promotion of the Opponent’s Trade Mark has laid stress on both the location of the Opponent’s vineyard and winery in Tasmania and the association of the Opponent’s Trade Mark with both Tasmania and Abel Tasman.  The vineyard and winery, Heemskerk, are named for one of Abel Tasman’s ships.  At the priority date of the Trade Mark the Opponent’s website explained:

   abel's tempest by heemskerk

   Through the violent tempests that raged around the coast of Tasmania, Dutchman Abel Tasman navigated his flagship, the Heemskerk, finally sighting the island's west coast in 1642. Many of Tasman’s attempts to land were thwarted by these huge winds which, while frustrating Tasman, are integral to creating the cool climate that Tasmania's vineyards thrive in. As a results, [sic] it has become one of Australia's premier cool climate regions.

7. A press release dated June 2010 concerning the launch of the Opponent’s wines under the Opponent’s Trade Mark stated:

   "Abel's Tempest is so named after the violent tempests that roar off the Tasman Sea and that thwarted Abel Tasman's initial attempts to land on Tasmania in 1642 aboard his flagship vessel, the Heemskerk".

8. An article concerning the relaunch of the brand, dated 1 April 2014, reads in part:

   “It was aboard the flagship Heemskerk that Abel Tasman sighted the west coast of Tasmania in 1642, discovering what was to become one of Australia's premier cool climate wine regions," he said.

   "Along the way Abel's attempt to reach the shore was thwarted by raging tempests, and it's these stormy winds that are depicted on the new Abel's Tempest by Heemskerk packaging."

9. The Opponent’s thesis is that the word ‘Abel’s’ within the Opponent’s Trade Mark has a considerable associative force with the name of the Dutch explorer Abel Janszoon Tasman by the physical location of the winery and the naming of Tasmania in his honour, the naming of the winery for one of Tasman’s ships, the use of his forename which is not a common one in Australia, and the marketing of the goods making reference to the name Abel Tasman.

10. The Applicant’s evidence and attorneys in their submissions draw the Registrar’s attention to various factors which they state weigh against this associative force.  Initially, however, I must dispose of the Applicant’s submission that:

    For the reasons provided in paragraphs 12 to 22 of these submissions[9] the mark of the Opposed Application and the trade mark ABEL’S TEMPEST are not deceptively similar and are thus not likely to lead to confusion regardless of their level of use.

    [9] These submissions relate to the ground under section 44 of the Act.

11. There is no requirement under section 60 that, in order to found the ground, the trade marks under consideration be deceptively similar. In my view, abstract (or conceptual) similarity, along with appropriate associative force as a part of the reputation of an opponent’s trade mark, may be sufficient to found section 60. For example, a hypothetical beer brewer might put his putative products onto the market with a range of cricket-field related trade marks depending on the type of beer: BACKWARD POINT LAGER; LONG STOP PALE ALE; SHORT LEG BITTER; SQUARE LEG MILD; EXTRA COVER IPA, and so on. These putative trade marks each then develop a reputation. However, another person’s proposed trade mark SILLY MID ON STOUT is not ‘deceptively similar’ to any of the pre-existing cricket-related trade marks and yet shares a strong abstract (or conceptual) similarity with those trade marks such that, in terms of section 60 of the Act, the likelihood of confusion or deception comes under consideration.

12. Mr Raccanello in his declaration states:

    Abel Tasman was an explorer in the 1600's. In 1642 his sea explorations led him to be the first European to discover Van Diemen's Land (Tasmania), New Zealand, Tonga Islands and some of the Fiji Islands. Exhibited hereto and marked JR-3 is some brief information about the explorer.

    I have looked at the Opponent's trade mark ABEL TEMPEST and do not associate this trade mark with Abel Tasman. The mark appears to refer to the character in the Bible called Abel and the torment or fight that he had with his brother and ultimately murderer Caine.

    There are many place names in both Australia and New Zealand which refer to Abel Tasman including in Tasmania the Tasman Peninsula, Tasman Bridge, Tasman Highway; in New Zealand the Tasman Glacier, Tasman Lake, Tasman River, Mount Tasman, Abel Tasman National Park, Tasman Bay and Tasman District and between Australia and New Zealand there is the Tasman Sea. I note that all of these place names associate themselves with the explorer by the use of the name "Tasman" and not "Abel". Accordingly I would be surprised if a consumer would think there is an association with ABEL'S TEMPEST and the explorer when there is no reference to Tasman in the mark.

13. I readily agree that, when divorced from any reputation that the Opponent’s Trade Mark possesses, any of the foregoing may be true, whilst keeping in mind that wine is not asserted by the Applicant to be produced in any of the specified locations referring to Abel Tasman’s name other than Tasmania.  However, where the Opponent has chosen to associate the Opponent’s Trade Mark with the explorer Abel Tasman via the use of his forename, and in its publicity material, and to stress that associative force between its vineyard and winery, Heemskerk (named for one of Abel Tasman’s ships), and the State of Tasmania (named for the explorer and known for its wines), the situation might be otherwise.

Likelihood of Confusion or Deception

1. The assessment of the likelihood of deception or confusion is moderated by the factors discussed by French J in Registrar of Trade Marks v Woolworths.[10] Absent any requirement under section 60 that the trade marks under consideration be deceptively similar, these factors are:

   [10] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].

   (i) […] 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 […] 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 Company Inc [1973] HCA 43; (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."

2. The terms ‘deception’ and ‘confusion’ refer to two different mental states.  The differences between ‘deception’ and ‘confusion’ were explained by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd:[11]

   ‘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.

   [11] [1979] RPC 410 at 423.

3. Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney:[12]

   In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion.[13] It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

   [12] 1937] HCA 38; (1937) 57 CLR 448.

   [13] I note that the onus is now on the Opponent to establish the likelihood of deception or confusion.

4. The likelihood of ‘confusion’ may be held to exist even if it does not persist to the point of sale.  In Tivo Inc v Vivo International Corporation Pty Ltd[14] Dodds-Streeton J observed at [105]:

   It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

   [14] [2012] FCA 252 at [105].

5. Of course, as discussed above, there is no requirement under section 60 that the trade marks under consideration be ‘deceptively similar’; however, the principle enunciated above applies here: deception can result in a sale – confusion may be dispelled before the putative sale takes place.

6. There are a number of factors to be balanced in the assessment of the likelihood of deception and confusion.  In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[15] the Registrar’s delegate observed:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

   [15] [2012] ATMO 124 at [40].

7. Here I again note that it is the Opponent’s thesis that a component of the reputation of the Trade Mark is its association with the Dutch explorer Abel Tasman.

Consideration

1. Ms Gibson states in her declaration:

   I observe that the Opponent's trade mark registration for ABEL'S TEMPEST and the Applicant's opposed trade mark application for ABEL TASMAN are the only two trade marks in Class 33 which contain the name ABEL and which cover wines. I observe also that the Applicant has filed a second application for the trade mark ABEL TASMAN on 7 October 2016, which application specifically excludes wine.

2. And Mr Rannanello states in his declaration:

   I note in the Forman Declaration it is mentioned that the Applicant has a later filed application for ABEL TASMAN which specifically excludes wine. This second application was filed as the Applicant has intentions to expand the use of this brand beyond only wine products. As this Opposed Trade Mark was already under opposition and already covered the wine goods the Applicant decided to exclude wine from its new application at the time of filing. This action was simply to differentiate the application and not any admission of validity of the basis of this opposition.

   I note also in the Foreman Declaration there is a claim that there are only two ABEL containing marks on the Register in class 33. However I note that other parties have now filed trade marks also containing the ABEL with other material.

3. I make nothing of any of the abovementioned later applications in Class 33 (or related classes) to register trade marks which include the word element ‘Abel’.  Each application must be considered on its own merits and according to its particular ownership and/or priority dates.

4. The question which must be addressed here is this: is it a likelihood that a person (knowing of the Opponent’s Trade Mark, and the wines sold under it, and aware of the reputation of the Opponent’s Trade Mark of which a component is reference to the name ‘Abel Tasman’, via the use of his forename within the Opponent’s Trade Mark and promoted as such by the Opponent in both the name of the vineyard and winery and in its publicity), when seeing the Trade Mark upon the same goods be caused to wonder whether there is some connection with the Opponent and its wine operations?

5. In my consideration the reputation of the Opponent’s Trade Mark both in terms of the quanta of sales and advertising, and in the way it has been promoted (the ‘particular popular images, or sets of values, that attach to the trade mark’ in terms of McCormick, supra) lead to the conclusion that confusion, at least, is a likelihood.  People knowing of the Opponent’s Trade Mark’s reputation and the way in which it has been promoted to the marketplace are likely, in my consideration, to wonder if there is some connection between the Trade Mark and either the goods bearing the Opponent’s Trade Mark or the Opponent and its operations.

6. The Opponent has established its ground under section 60 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (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.

   Note:For limitations see section 6.

2. I refuse to register the Trade Mark.

Costs

1. The Applicant has sought its costs if it was successful in this matter; however as the Opponent has been successful it is appropriate that I award costs against the Applicant at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.

Iain Thompson
Hearing Officer
Trade Marks Hearings
13 March 2018