Southcorp Brands Pty Ltd v Modern Ancient Brands Pty Ltd

This matter came before Nicholas Smith, a delegate of the Registrar of Trade Marks, concerning an opposition filed by Southcorp Brands Pty Ltd (the Opponent) against applications by Modern Ancient Brands Pty Ltd (the Applicant) to register three trade marks. The dispute centred on the Applicant's proposed trade marks, referred to as the Galatea Mark and the Skeleton Mark, which the Opponent alleged were blatant reproductions of its own historical wine labels associated with its "Treasure Chest Series." The Opponent, as the successor in title to Woodley Wines Pty Ltd, claimed ownership of common law rights and prior trade mark registrations related to these distinctive labels.

The primary legal issue before the delegate was whether the Opponent had established any of the grounds of opposition pleaded, specifically under sections 42(b), 58, 60, and 62A of the *Trade Marks Act 1995* (Cth). The delegate focused on section 62A, which concerns conduct that is contrary to "honest commercial practices." The onus rested on the Opponent to prove its case on the balance of probabilities, with the relevant date for determining the rights of the parties being 25 February 2015, the priority date of the Applicant's trade mark applications.

The delegate found that the Opponent had successfully established the ground of opposition under section 62A. This conclusion was based on the evidence presented by the Opponent, including declarations detailing the historical use and renown of its "Treasure Chest Series" wines and their associated labels, which featured images almost identical to the Applicant's proposed marks. The delegate inferred that the Applicant, in applying to register these marks, was aware of the Opponent's rights and reputation and sought to take advantage of it or falsely convey an association with the Opponent. This conduct was deemed to fall short of acceptable commercial behaviour.

Consequently, the delegate refused to register the trade marks in question. The Opponent was awarded costs against the Applicant, with the quantum of costs for two of the trade marks being reduced in accordance with established practice.