Southcorp Brands Pty Ltd v Luzhou Lao Jiao Co Ltd

[2019] ATMO 51

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 1807798 (33) - TREASURE WINGS - in the name of Luzhou Lao Jiao Co Ltd.

Delegate:	Iain Thompson
Representation:	Opponent: Southcorp Brands Pty Limited – written submission by Wrays. Applicant: Phillips Ormonde Fitzpatrick
Decision:	2019 ATMO 51 Trade Marks Act 1995 Section 52 opposition - grounds under sections 44, 60, 42 and 62A. Ground under subsection 42(b) established – Trade Mark misleadingly similar to a sign relied upon by the Opponent.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Luzhou Lao Jiao Co Ltd (‘the Applicant’) has applied for the registration of the trade mark which appears below:

   Application No:         1807798

   Priority Date:             14 November 2016
   Goods:  Class 33: Wine
   Trade Mark:               TREASURE WINGS

   (‘the Trade Mark’)

2. The Trade Mark was examined as provided for by section 31 of the Act and, on 6 December 2019, advertised as accepted for possible registration in the Australian Official Journal of Trade Marks.

3. On 19 May 2017, Southcorp Brands Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 16 June 2017 by a Statement of Grounds and Particulars which details grounds under sections 42, 44, 60, and 62A of the Act.

4. On 27 July 2017, the Applicant filed a Notice of Intention to Defend.

5. On 1 November 2017, the Opponent filed its Evidence in Support which is a declaration by Andrew Geoffrey Butler, a registered patent and trade marks attorney of the firm Wrays, made on 1 November 2017, with Exhibits AGB-1 to AGB-3.

6. The Applicant has not filed Evidence in Answer.

7. Both parties have been informed of their right to be heard or to make written submissions.  Neither party requested to be heard; the Opponent has filed written submissions by Wrays.

8. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record.

   Onus and Relevant Date

9. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[1]

   [1] 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]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

10. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[2] of the opposed.

    [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

    Evidence

11. The Opponent is part of the Treasury Wine Estates Limited group of companies (‘Treasury Wines’).  In the words of Mr Butler:

    Treasury Wines is a substantial business, being one of the world's biggest premium wine producers. Following its separation from Foster's Group's beer, cider and spirits business in 2011, it became the world's largest listed stand-alone wine company. It has an extensive portfolio of hundreds of brands, servicing markets across 5 continents, and an enviable stable of premium wine brands including internationally recognised brands such as Penfolds, Wolf Blass, Beaulieu Vineyards, Beringer, Blossom Hill, Wynns, Lindemans and Rosemount. It controls more than 15,000 hectares of vineyards in the premium wine growing regions of the Barossa Valley and McLaren Vale in Australia, the Napa Valley in California, in New Zealand and in Italy, and operates more than 20 wineries throughout the world.

    Treasury Wines acquired the Opponent in 2005, and the Opponent since that time has been one of many wholly owned subsidiaries of Treasury Wines. It is the practice of Treasury Wines to, either, file a trade mark in the name of the relevant subsidiary company (by way of example, Treasury Wine Estates (Matua) Limited is the registered owner of the MATUA trade mark) or to file a trade mark in the name of the Opponent, which functions as a holding company for much of Treasury Wines' intellectual property rights, including the world renowned PENFOLDS trade mark and corporate trade marks pertaining to the general business of Treasury Wines.

    Treasury Wines, as the parent company in the Treasury Wines group, is authorised to use the trade marks owned by its subsidiaries, and any reputation or goodwill engendered by the use of the trade marks by Treasury Wines or by its subsidiary companies in relation to the relevant goods and services inures or accrues to the benefit of the Treasury Wines group as a whole.

    […]

    Treasury Wines is a substantial business. It is one of the world’s largest wine companies, Australia's largest beverage producing company, and one of the best performing companies on the Australian Stock Exchange in recent years.

12. Mr Butler exhibits to his declaration pages printed from the Treasury Wines website which show both the background to the Treasury Wines business and various of the many wine brands owned by Treasury Wines.

13. In addition, the Opponent owns the following registered trade marks:

    Registration No:         1369486

    Priority Date:             30 June 2010

    Goods/Services:         Class 35: Retailing services, wholesaling services, promotional services, business services; advertising, business management; business administration; office functions

    Class 43: Bar and cafe services, catering services; services for providing food and drink; temporary accommodation

    Trade Mark:               TREASURY WINE ESTATES

    ___________________________________________________________________________

    Registration No:         1369488

    Priority Date:             30 June 2010

    Goods/Services:         Class 35: Retailing services, wholesaling services, promotional services, business services; advertising, business management; business administration; office functions

    Class 43: Bar and cafe services, catering services; services for providing food and drink; temporary accommodation

    Trade Mark:               TREASURY WINE BRANDS

    ___________________________________________________________________________

    Registration No:         1373403

    Priority Date:             21 July 2010

    Services:Class 35: Retailing services, wholesaling services, promotional services, business services; advertising, business management; business administration; office functions

    Class 43: Bar and cafe services, catering services; services for providing food and drink; temporary accommodation

    Trade Mark:               

    (‘the Logo Trade Mark’)

14. I will refer to the above collectively as ‘the Opponent’s Trade Marks’.

15. Mr Butler states:

    I am aware that the Opponent's [Trade Marks] indicated at paragraph 8 above have been used extensively and continuously since May 2011 in relation to wines, and even prior to that time when steps were being taken in respect of the demerger of the Foster's Group's beverage business as noted at paragraph 4 above.

16. I note that Exhibit AGB-1 shows the Logo Trade Mark in use in relation to the whole of the Treasury Wines business which includes over 70 wines brands, over 13,000 hectares of vineyard, and 36.4 million cases of wine sold in over 70 countries.  Additionally, Exhibit AGB-1 shows that trade mark in use in relation to the aforementioned in the form shown below:

17. In addition to the use of the Opponent’s Trade Marks, as discussed above, the Exhibits to Mr Butler’s declaration show the extensive use of the words “Treasury Wine(s)” (‘the Sign’) as referring to the corporate identity “Treasury Wine Estates Limited” by both the Treasury Wines itself and articles in print media about Treasury Wines.  These articles are numerous and, as their import is unchallenged by the Applicant, do not warrant discussing at length – a few headlines will therefore suffice:

    Grange maker Treasury Wine soars on Asia aspiration[3]

    Treasury Wine's $800 million pot of gold in luxury wines as Asia booms[4]

    [3] The Age – 10 November 2016.

    [4] The Age – 19 August 2016.

    TREASURY WINES HITS BACK AT 'MISLEADING' DOWNGRADE, REAFFIRMS CHINA GROWTH STORY[5]

    California wildfires hit Treasury Wines[6]

    [5] SBS – 1 August 2017

    [6] news.com.au – 10 October 2017.

18. The articles exhibited to Mr Butler’s declaration contain many more references to the Sign within them.

    The Applicant

19. The Opponent asserts in its submissions that the Applicant is a manufacturer of spirits based in China.

    Other

20. I will mention now that the Opponent argues, in effect, that the resemblance of the Trade Mark to the Opponent’s Trade Marks and the Sign is not coincidental.  For the sake of straightforward comparison, I replicate these below:

    TREASURE WINGS (the Trade Mark)

    TREASURY WINES (the Sign)

21. I observe that there is one letter difference in each of the words which comprise the Trade Mark and the Sign.  The Opponent submits:

    … the opposed trade mark Treasure Wings does not form a memorable term or a term which has a readily apparent meaning. Because it is an unwieldy combination of two English words which have an obvious similarity to 'Treasury' and 'Wines', the mark lends itself to being mistaken for the term Treasury Wines, the term Treasury Wine or the term Treasury Wine Estates.

22. I further note that it is convenient to decide this matter under subparagraph 42(b) of the Act because the Opponent relies upon the Sign to found this ground, whereas section 60 of the Act refers to the reputation in Australia of “another trade mark”.

    Section 42

    Statement of Grounds and Particulars

23. In its Statement of Grounds and Particulars the Opponent asserts:

    In light of the significant reputation in one or more prior trade marks including the Opponent's trade marks which are the subject of registration nos. 1369486, 1369488 and 1373403 and in the Opponent's parent company's name 'Treasury Wine Estates Limited', which is also often shortened to 'Treasury Wines' or 'Treasury Wine', any use of the opposed trade mark would be contrary to law, including a breach of the Australian Consumer Law (for example, Sections 18 and 29) and/or constitute passing off.

    Section 42 – Framework

24. Section 42 of the Act relevantly provides:

    42Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    […]

    (b)its use would be contrary to law.

25. To found its ground, an Opponent must establish that the use of a trade mark would, rather than could, be contrary to law.[7]

    [7] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683; (2001) 52 IPR 24; [2001] AIPC 91-724.

26. In these proceedings the Opponent relies on sections 18 and 29 of the Australian Consumer Law (‘the ACL’): it is convenient for me to focus only on section 18 of the ACL. Section 18 of the ACL provides:

    18   Misleading or deceptive conduct

    (1)  A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

    (2)  Nothing in Part 3-1 (which is about unfair practices) limits by implication subsection (1).

27. Section 18 of the ACL is the same provision as Section 52(1) of the Trade Practices Act 1974 (‘the TPA’).  Concerning that provision in Equity Access Pty Ltd v Westpac Banking Corporation Hill J stated:[8]

    While there remain many areas of difficulty in the application of s.52 of the Act to the facts of a decided case there have been established a number of propositions, relevant to the determination of the present case, which are no longer in dispute:

    1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell at 202. In the present case the misrepresentation on the part of the respondents is said to be that the financial product advertised and marketed by each of them is the product of the applicant or that there is some business relationship between the applicant and each of the respondents or that the applicant has endorsed the respective product of the respondents.

    2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu per Gibbs CJ at p 6 and per Mason J at p 15, Global Sportsman Pty Ltd v. Mirror Newspapers Ltd [1984] FCA 180; (1984) 55 ALR 25, at p 34.

    3. Conduct will be likely to mislead or deceive if there is a "real or not remote chance or possibility" of misleading or deception regardless of whether it is less or more than 50%: Global Sportsman at p 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at pp 198-9.

    4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at p 100; Bridge Stock Brokers v. Bridges (1984) 57 ALR 401 at p 413 per Lockhart J. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v. Katies Ltd (1977) 29 FLR 336, 343. The test in passing off cases is usually expressed as being whether a "substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant's use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff's goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question." (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v. Odhams Press Ltd (1962) RPC 163 at 168 and see Saville Perfumery v. June Perfect Ltd (1941) 58 RPC 147 at 175-6, 10th Cantanae Pty Ltd v. Shoshana Pty Ltd (1987) 79 ALR 299 at 315 per Gummow J).

    5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant's business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person's business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.

    6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at p 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v. Lucas [1985] HCA 65; (1985) 61 ALR 307 at p 309.

    [8] [1989] FCA 506; [1990] ATPR 40-994; (1989) 16 IPR 431 at [41].

28. Whilst noting again that the Sign is the corporate name of Treasury Wines, rather than a trade mark, the reputation of the Sign relied upon by the Opponent is not challenged by the Applicant And I again note that the whole of the Treasury Wines business is conducted with reference by both itself and others to the Sign and includes over 70 wines brands, over 13,000 hectares of vineyard, and 36.4 million cases of wine sold in over 70 countries.  I therefore find that the Sign has a reputation.

29. The Opponent has submitted that:

    … the opposed trade mark Treasure Wings does not form a memorable term or a term which has a readily apparent meaning. Because it is an unwieldy combination of two English words which have an obvious similarity to 'Treasury' and 'Wines', the mark lends itself to being mistaken for the term Treasury Wines, the term Treasury Wine or the term Treasury Wine Estates.

30. The unwieldiness of the expression ‘Treasure Wings’ and its close resemblance to the Sign leads to a conclusion, on the balance of probabilities, that the Trade Mark was coined with a close iteration of the Sign in mind.  The Applicant has not filed evidence that counters this.

31. In Australian Woollen Mills Ltd v FS Walton & Co Ltd (‘Walton’) Dixon and McTiernan JJ observed:[9]

    The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.

    [9] [1937] HCA 51; (1937) 58 CLR 641 at 657

32. Although Walton concerned infringement and passing off, the principle in Walton, as it uses the term “mislead”, should also apply under section 18 of the ACL. This being so, use of the Trade Mark would be contrary to section 18 of the ACL.

33. I therefore find that the Opponent has established its ground under subparagraph 42(b) of the Act.

    Decision

34. 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.

35. I refuse to register application 1807798.

    Costs

36. The Opponent requested its costs in the event that the opposition was established. As the opposition has been established, and in terms of section 221 of the Act, I award costs against the Applicant at the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    8 April 2019