Southcorp Brands Pty Ltd v Winston Wine Pty Ltd

TRADE MARKS ACT 1995

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

Re:Oppositions by Southcorp Brands Pty Ltd to registration of trade mark applications 1455487,1455488,1455489,1455490 and 1455491 (32, 33, 35, 43) - WYNWOOD, WYNWOOD ESTATE and device, WYNWEST, WYNWOOD ESTATE, WYNWEST WINE - filed in the name of Winston Wine Pty Ltd

Delegate:	Nicole Worth
Representation:	Opponent: Benjamin Fitzpatrick of Counsel, instructed by Allens Patent and Trade Mark Attorneys. Applicant: Did not attend the hearing, but written submissions prepared on its behalf by Gerard Skelly, Shelston IP.
Decision:	2014 ATMO 91 Section 52 opposition – ss 44, 60 and 59 pursued – no grounds established – applications may proceed to registration.

Background

These are oppositions pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’). On 25 October 2011 Winston Wine Pty Ltd (‘the Applicant’) applied for the registration of the following five trade marks (referred to collectively as ‘the Trade Marks’):

Application No. 1455487	Application No. 1455488	Application No. 1455489	Application No. 1455490	Application No. 1455491
WYNWOOD	WYNWEST	WYNWOOD ESTATE	WYNWEST WINE

All of them are in respect of the goods and services specified below, although the retail and wholesale services of applications 1455487, 1455488, and 1455490 exclude the “retail and wholesale of timber and timber products used in flooring, flooring and other timber products”:
Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; non-alcoholic wines
Class 33: Alcoholic beverages; wines
Class 35: Exporting of food and beverages including wine and other beverages; advertising and promotional services in relation to food and beverages, including wine and other beverages; arranging exhibitions and tasting events, including in relation to food and wines; retail and wholesale, including on-line retail and wholesale of food and beverages including wine and other beverages; cellar door sales of wine
Class 43: Services relating to the provision of food and beverages; restaurant services; take away food and drink services; wine club services (the provision of drink), temporary accommodation
The applications were examined and, in due course, advertised as accepted for possible registration. Southcorp Brands Pty Ltd (‘the Opponent’) filed notices of opposition, on 7 August 2012 in respect of applications 1455487, 1455488, and 1455490, and on 16 May 2012 in respect of applications 1455489 and 1455491. The notices of opposition nominated most of the grounds available under the Act to oppose registration.
The parties served and filed evidence, described in more detail below, after which the Opponent requested a hearing. The matter came before me, as a delegate of the Registrar of Trade Marks, in Melbourne on 16 July 2014. Benjamin Fitzpatrick of counsel, instructed by Allens Patent and Trade Mark Attorneys, represented the Opponent. The Applicant did not attend the hearing but written submissions were prepared on its behalf by Gerard Skelly of Shelston IP.

Evidence

The evidence served and filed by the parties is as follows:
Evidence in support:
·Statutory declaration of Owen John Malone, Director of Intellectual Property of Treasury Wine Estates Limited (of which the Opponent is a wholly owned subsidiary), with exhibits OJM-1 to OJM-9, dated 7 February 2013.
Evidence in answer:
·Statutory declaration of Huafeng Jin, Executive Director of the Applicant, with exhibits HJ-1 to HJ-12, dated 15 August 2013.
·Statutory declaration of Gerard Skelly, legal practitioner and special counsel of Shelston IP, with exhibits GJS-1 to GJS-3, dated 22 August 2013.
The Opponent is the owner, in Australia and overseas, of several trade marks incorporating the word WYNNS or the prefix WYN. The evidence in support details a number of Australian registrations, shown in the table below. It is declared that WYNNS is pronounced by the Opponent and the wine consuming public as is the word “wins”, and that where the prefix WYN occurs in its trade marks then it too is pronounced as is the word “win”.

Number	Trade Mark	Class	Priority date
59454	WYNVALE	33	19 Feb 1932
182128	WYNN’S COONAWARRA ESTATE	33	7 Aug 1963
205899	WYNNS	33	2 Nov 1966
205900	WYNNS ESTATE	33	2 Nov 1966
235636	WYNNS OVEN VALLEY ESTATE	33	12 Jan 1970
251621	WYNVALE	33	3 Sep 1971
310992	WYNNS JOHN RIDDOCH	33	6 Sep 1977
334050	33	13 June 1979
593929	WYNNS COONAWARRA ESTATE MICHAEL	33	11 Jan 1993
822540	33	7 Feb 2000
828636	wynns.com.au	33,42	23 Mar 2000
1258381	33	22 Aug 2008
1288759	WYNNS V&A	33	11 Mar 2009
1401571	33	23 Dec 2010
1478342	WYNNS SAMUEL	33	5 Mar 2012
1478343	WYNNS MICHAEL	33	5 Mar 2012
1478361	WYNNSDAY	35	5 Mar 2012

The Opponent’s original winery was established by John Riddoch in the Coonawarra region in 1891 and is declared to be the oldest in the Coonawarra. The triple-gabled building featured in the Opponent’s labels was completed by John Riddoch in 1896. In 1951 Samuel Wynn purchased the winery and renamed it Wynns Coonawarra Estate. The first wine under the WYNNS COONAWARRA ESTATE brand was released in 1952[1]. Southcorp Wines Pty Ltd, the Opponent’s parent, acquired the Wynns Coonawarra Estate business and trade marks in the early 1990’s, and the Opponent became the registered owner of the trade marks in 2003. It is declared that the WYNNS trade marks have accordingly been used continuously for more than 60 years, since 1952.
[1] It is declared that ‘Wynns’ is the plural of or equivalent to the possessive form of the Wynn family name.
The Opponent declares that the WYNNS brand has become a household name and the Opponent’s website lists more than 30 awards and commendations that WYNNS branded wines have achieved. An extract from James Halliday’s online Australian Wine Companion[2] is in evidence, and in it Mr Halliday states:
Today Wynns Coonawarra Estate is the region’s best known wine producer and largest single vineyard holder, with the best and longest established vineyard sites in Coonawarra. Its wines are regarded as benchmarks for the district, lauded for their consistent quality and depth of flavour.
[2] James Halliday is a wine critic and competition judge, and is the author of the Australian Wine Companion, an annual guide to wines and wineries in Australia. The extract in evidence is dated 31 January 2013.
The Opponent’s wines are sold throughout the world, particularly in the United States, Canada, the United Kingdom, Asia and Australia. They are sold via major retail outlets, specialist wine sellers and wine auction houses. In the period 2003 to 2012, approximately 13 million bottles of WYNNS branded wine were sold in Australia.
The Opponent declares that the word WYNNS has its own identity in relation to wines, and that it is also used as part of composite words and phrases such as WYNNS COONAWARRA ESTATE or WYNNSDAY. It is also declared that “Media commentary and reviews also often include plays on the word WYNNS, such as ‘Who pairs, Wynns’ and ‘Who dares, Wynns’”, although there are no exhibits supporting this statement.
The Opponent caused a search of the Australian trade marks database, ‘ATMOSS’, to be conducted. Aside from its own registrations and the applications that are the subject of this opposition, the only other registered or pending trade marks to include the prefix WYN in class 33 are several registrations incorporating the word WYNDHAM (currently owned by Pernod Ricard Winemakers Pty Ltd) and a single registration incorporating the name JAMES WYNEN (owned by Glug Pty Ltd). All are in respect of wines.
In respect of the WYNDHAM marks, the Opponent declares that the name is known in the industry and by the wine consuming public as WYNDHAM ESTATE. The winery at Wyndham Estate was established by George Wyndham in the early 1800’s under the name ‘Dalwood’, because it is located in Dalwood, NSW. It was renamed Wyndham Esate in 1970. It is declared that the WYNDHAM ESTATE trade mark has been used since then, a period of almost 45 years, and that a substantial reputation subsists in it. In respect of the coexistence of WYNNS and WYNDHAM ESTATE, the Opponent declares that they
have come to co-exist in the marketplace over a long period of time despite the presence of the common prefix WYN, since their respective historical geographical origins differ. The WYNNS and WYNDHAM ESTATE marks have become distinguishable to the public and the trade only by virtue of their long co-existence and the independent and concentrated development of their respective reputations.
Included in the Opponent’s declaration are a number of statements that are in the nature of submissions. They assert that the prefix WYN is unusual in respect of wines and beverages in general and imply that, given neither the Applicant’s name nor any of its officers’ names are related to the prefix WYN, the adoption of the Applicant’s trade marks could not have been properly motivated. The Opponent submits that a more explicable spelling of the Applicant’s marks would be WINWOOD and WINWEST, and notes that the Applicant has three pending applications for trade marks containing the word WINSTON - each of which are currently deferred, most likely pending the outcome of a removal action for an earlier registration for WINSTONS owned by a third party.
The Applicant is involved in the production and sale of wine in Australia and for export overseas, particularly China. It declares that it initially intended to adopt trade marks comprising or containing WINSTON because that name was a natural fit with its company name, and WINSTON comprises or is contained within three trade marks currently pending registration. Trade mark searches disclosed potential issues with WINSTON, particularly the prior registration for WINSTONS (which as previously mentioned is now the subject of a removal action by the Applicant). As a result the Applicant needed to consider additional trade marks that both reflected the Applicant’s company name and the Chinese Fengshui acceptable to its Chinese investors.
The Applicant declares that the additional trade marks needed to commence with the letter “W” on the basis of Chinese Fengshui, “W” being connected with the sky and absorbing positive energy from above, important for an agricultural based industry. The next step was to decide between the prefixes WIN or WYN. WIN had the positive meaning of success and accomplishment, but WYN was phonetically equivalent to WIN and had a preferable visible structure. Hence, the Applicant settled upon the prefix WYN. The final step was choosing suitable suffixes. WOOD was chosen for its connection with grape vines and wine making, and “with the positiveness from the prefix WYN being transformed into the WOOD which is the nature of grape vines”. The WEST suffix was chosen because of its connection with Australia, being a western culture. Accordingly, the Applicant declares, it settled upon the WYNWOOD and WYNWEST trade marks with the intention of adopting them as additional trade marks to the WINSTON trade marks.
The Applicant declares that it was aware of the WYNNS and WYNDHAM brands, and their longstanding co-existence, when it settled upon its trade marks but formed the view that there was unlikely to be a real risk of confusion. In forming that view the Applicant declares that it was aware that the words WYNN and WYNDHAM were relatively common surnames, and also that WYNDHAM was an Australian geographic place. Exhibited are the results of a ‘Search for Australian Surnames’[3] which reveals 616 occurrences of the surname Wynn and 185 occurrences of the surname Wyndham. Also exhibited are web pages that show Wyndham City is a local government area on the fringe of Melbourne, Victoria, and a small town in northern Western Australia.
[3] This is a search available upon the IP Australia website, based on past electoral roll data.
The Applicant also conducted its own searches of ATMOSS and it notes that there are multiples registrations in class 33 that begin with the prefix WIN, and numerous registrations in class 33 that contain either WOOD or WEST. In addition to the ATMOSS results it exhibits web pages from wineries commencing with the prefix WIN, being Winbarra Vineyards, Winstead Vineyard and Winya Wines, and a winery containing WYN as a suffix, being Welwyn Meadows.
Lastly, the Applicant’s legal practitioner exhibits the results of a ‘Search for Australian Surnames’ which reveals 69 occurrences of the surname Wynwood and 154 occurrences of the surname Winwood, and the Wikipedia® pages of Wynwood (a neighbourhood in Miami, USA) and Steve Winwood (an English musician).

Grounds and onus

In its submissions the Opponent confirmed that it relied upon the grounds of opposition under sections 44, 60 and 59 of the Act. It bears the onus of establishing at least one of these grounds. For completeness I find that none of the other grounds listed in the notice of opposition have been established.
I confirm that the relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities[4], and that the relevant date at which the rights of the parties are to be determined is 25 October 2011, the filing date of the applications[5].
[4] See for example Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26]; Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [27]; or Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 at [30] to [37].
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.

Section 44

Section 44 relevantly provides:

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.
…

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) 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 services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

(The referred-to subsections (3) and (4) relate to use of an applied-for trade mark or other circumstances which make acceptance of a trade mark proper, neither of which are reflected in the evidence before me and so are not relevant considerations.)

To establish an opposition under section 44 an opponent must show that there is another trade mark which:
- is registered or is pending registration;
- has a priority date earlier than that of the opposed trade mark(s);
- is owned by a person other than the applicant;
- is in respect of similar and/or closely related goods and/or services; and
- is substantially identical or deceptively similar to the opposed trade mark(s).

For this purpose the Opponent identifies its trade marks as detailed in the table at paragraph 6 (with the exception of the most recent three). All are registered and have priority dates earlier than the Trade Marks, and all are owned by the Opponent.

In respect of the similarity or close relationship between the respective goods and services, the Opponent clarified at the hearing that it pressed the opposition in respect of only some of them, which I will broadly describe as wines or alcoholic beverages and services relating to wines or alcoholic beverages. If necessary I will revisit the issue of similar or closely related goods or services after the discussion of the trade marks.
The Opponent did not press that the Trade Marks were substantially identical to any of its trade marks, but rather that they were deceptively similar. The expression “deceptively similar” is defined in section 10 of the Act 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”. The test for determining whether this is the case was considered in Shell Co. of Australia v Esso Standard Oil (Australia) Ltd[6]:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [trade mark].
[6] [1963] HCA 66 at [13]; (1963) 109 CLR 407 at 415.
In support of its position the Opponent listed legal principles relevant to deceptive similarity, being in summary:
- imperfect recollection must be allowed for;[7]
- the test is not necessarily that consumers think the marks are the same, but that they are from the same trade source;[8]
- that it is sufficient if the minds of the public are merely “perplexed” or “mixed up”;[9]
- use of a distinctive mark or highly distinctive part of a mark with an addition or substitution may lead consumers to believe both are from the same source;[10]
- the first portion of a word is the most important[11] and there is a tendency to slur the termination of words (accentuating their beginning);[12]
- a mark will be found to be deceptively similar to another if it takes a prominent and distinctive feature of that mark;[13]
- marks are remembered by general impression or some significant detail rather than photographic recollection of the whole;[14]
- commonality of idea, despite differences in execution, may leave similar impressions;[15]
- there is a tendency to abbreviate marks;[16]
- the nature of the goods involved, the circumstances of their sale and the nature of the consumers are relevant considerations;[17]
- a family of marks containing a common element is a relevant consideration;[18]
- evidence of an intention to appropriate the goodwill of another is relevant to the question of whether use is likely to cause confusion;[19]
- in certain circumstances the reputation of a trade mark may be taken into account in the assessment under section 44.[20]

In its submissions the Opponent argued that the risk of confusion between the marks arises from the prominent and distinct feature of the respective marks, being the term WYN, which is both the first portion of the respective marks and an unusual term in respect of wines and related goods and services. The risk of consumers being caused to wonder whether the goods came from the same source is submitted to be increased by the fact that the respective goods are essentially identical, would be sold through the same outlets and their purchase would involve both visual inspection of the label and an aural reference to the mark. The risk of confusion is also submitted to be heightened by the existence of the Opponent’s ‘family’ of marks that contain WYN or WYNN, of which the Opponent has made long use. The WYNNS mark is submitted to have achieved iconic status, such that its reputation may be taken into account in the assessment under section 44.[21]
[21] Submissions were also made that the Applicant’s explanation for adopting trade marks containing the prefix WYN, as opposed to WIN, were unsatisfactory. However without evidence of any intention to misappropriate goodwill and in the face of the discussion in paragraph 27, I do not consider it a relevant consideration.
In respect of the distinctiveness of WYN, whilst I acknowledge that its presence as a prefix in registered trade marks in class 33 is not frequent (it being present only in those owned by the Opponent, the WYNDHAM marks and the JAMES WYNEN mark), it is nonetheless a relatively common word stem in the English language. The actual etymology of WYN is likely to be largely unknown,[22] however I consider that members of the Australian public are likely to be familiar with it as a common syllable in geographic names and surnames of British, Germanic and/or Gaelic descent (in much the same way as ‘-wick-,’ ‘Mac-’ or ‘‑bury’). ‘Wyndham’, ‘Wynen’ and ‘Wynwood’, as pointed to by the parties, are but a few examples; others include ‘Wynyard’, ‘Wynd’, ‘Wynberg’, and at least 50 others which may be identified by a ‘Search for Australian Surnames’. I note also that many more names contain WYN as a suffix (for example SELWYN, GOODWYN, ALWYN and PHAEWYN, all being registered trade marks in class 33). Its prevalence in names used in Australia, although not necessarily in respect of wines, therefore tends against the prefix WYN being a highly distinctive element of trade marks.
[22] Which, according to the online edition of the Merriam-Webster dictionary, is that WYN is a variant of WYNN, an Old English word meaning ‘joy’ and the name of the runic letter that represented the consonant ‘w’.
Similarly I do not consider that the prefix WYN may be characterised as an essential element[23] of any of the trade marks discussed by the parties. It is not separately distinguishable in WYNNS, the name that the Opponent appears to have used to the greatest extent, or WYNNSDAY, which incorporates WYNNS as a prefix. Although the prefix WYN comprises a separate syllable in the trade marks WYNVALE, WYNDHAM (owned by a Pernod Ricard Winemakers Pty Ltd), WYNWOOD, WYNNSDAY and WYNWEST, the impression left by those words is as affected by the material other than WYN as it is by the presence of WYN. Rather it is the possessive or plural name WYNNS which comprises, on the face of it, an essential element of WYNNS COONAWARRA ESTATE or WYNNS [JOHN RIDDOCH/MICHAEL/ SAMUEL/V&A and so on], and it does not preclude on the basis of deceptive similarity the use of the prefix WYN as part of a larger overall name.
[23] Of the type contemplated in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd, supra.
I am not persuaded by the ‘family’ of marks submission. In discussing marks on the register which contain some characteristic feature in common, the Assistant Comptroller in Beck Koller & Co’s Application[24] observed:
If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a “series” of marks and judge the conflict between the applicants’ mark and each of the proprietor’s marks with this consideration in mind.
…
On the other hand, if the registered marks found were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant, who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant’s mark with the registered mark, using the principles laid down in the “Pianotist” case…the presence of marks on the Register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account.

This principle has also been applied in a number of administrative decisions[25].

[24] (1947) 64 RPC 76 at 83.

[25] In particular those involving the prefixes “Mc” or “Mac”, such as in McDonald’s Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37; McDonalds Corporation v David Bellamy [2004] ATMO 26 and McDonald’s Inc v Future Enterprises Pte Ltd [2007] ATMO 22.

Here, the Opponent does not own all trade marks beginning with WYN, even when confined only to the goods of interest (and not extending the consideration to the specified services, nor goods or services which may be considered similar). Additionally, of those it does own there is no common pattern of a WYN prefix that would cause the Trade Marks to appear as though they fall into the same pattern. Aside from the trade marks which contain WYNNS as a name in its entirety (which, as explained previously, I do not consider to be similar to using the prefix WYN), the remaining marks of the Opponent are WYNVALE and WYNNSDAY. I do not believe that WYNNSDAY falls into the same pattern as WYNVALE or the Trade Marks, it being likely to be interpreted as a play on the word Wednesday or a day of the week that uses WYNN or WYNNS instead of the day’s name. However, even were it to be considered as sharing a similar pattern two registrations in the name of the Opponent are not sufficient to establish a family of marks, particularly in the face of the WYNDHAM and WYNEN marks owned by third parties.
In respect of the reputation of the WYNNS trade mark, I note that the Full Federal Court in CA Henschke & Co v Rosemount Estates Pty Ltd[26] observed:
…[I]n our view, Woolworths[27] suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.

In this regard the Opponent submits that the WYNNS mark has achieved iconic status and that given this “there is a real risk…of confusion arising from use of the opposed marks. This is particularly so given the unusual and distinctive nature of the term ‘WYN’ in relation to wines and other beverages”.

[26] [2000] FCA 1539; (2000) 52 IPR 42.

[27] Registrar of Trade Marks v Woolworths (‘Woolworths’) [1999] FCAFC 1020; (1999) 45 IPR 411; wherein the Full Federal Court considered that “Woolworths metro” (against a background of wavy lines) could not be assessed without recognition of the notorious familiarity of “Woolworths” to consumers, and accordingly that “Woolworths” was so well known that it was the element of the mark most likely to be recalled such that “Woolworths metro” was unlikely to deceive or cause confusion with several trade marks containing “Metro”.

I acknowledge that WYNNS is a well known brand in respect of wines. I have some reservations as to whether it is so ubiquitous or of such long standing that consumers generally must be taken to be familiar with it, however a finding on this issue is not necessary. This is because I do not consider WYNNS similar to the prefix WYN, such that use of one necessarily leads to conclusions about use of the other. Even if WYNNS has a reputation of the kind considered in Woolworths, I do not consider that confusion would arise. Indeed, as in Woolworths, to the extent the name WYNNS was ubiquitous and generally known to relevant consumers this would if anything reduce the risk of genuine confusion with the Trade Marks on the face of it. WYNNS is likely to be interpreted and remembered as a name per se. WYN, as a prefix, is unlikely to be separately distinguished from the larger name in which it appears[28]. Accordingly, the fame or notoriety of WYNNS says little regarding potential confusion with names that begin with the prefix WYN.
[28] An exception may be where a prefix is combined with a suffix which describes the goods or services of interest, as in McDonald’s Corporation v Macri Fruit Distributors Pty Ltd, supra, however that is not the case here.
In all I am not satisfied that it is likely consumers will wonder whether the Trade Marks originate from the Opponent owing to the purported common feature of the prefix WYN, or by virtue of the similarity of the trade mark WYNNS to the prefix WYN. Accordingly, the ground under section 44 fails and it is not necessary to revisit the issue of similarity between goods and services.

Section 60

Section 60 of the Act provides:
60. 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.
Accordingly, section 60 contemplates confusion or deception between trade marks that are not necessarily deceptively similar and which are in respect of goods or services that need not be similar or closely related. It is primarily concerned with the use of the Trade Marks in the face of the demonstrated reputation in Australia of another trade mark, and the likelihood of deception or confusion arising from that use. The Registrar’s delegate in Rogers Seller & Myhill v Reece Pty Ltd[29] qualified that general proposition, stating:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
[29] [2010] ATMO 5; (2010) 85 IPR 647.
It is not precisely clear which of its previously-identified trade marks, or whether it is all of them, that the Opponent relies on to establish the ground under section 60. I note that there is no evidence of use of WYNVALE or ‘wynn.com.au’ and very little use shown of WYNNSDAY. By far the most frequently shown mark in the evidence is WYNNS COONAWARRA ESTATE, and the Opponent’s submissions refer to “the WYNNS trade mark” and “the WYNNS trade marks”. To that end I will assume that it is WYNNS and WYNNS COONAWARRA ESTATE that the Opponent seeks to demonstrate a reputation in, and that confusion is likely to arise from use of the Trade Marks in the face of those marks.[30]
[30] The Applicant also makes brief submissions that it is uncertain whether the reputation or goodwill associated with the brand has been properly vested in the Opponent or some other entity. However for reasons that will become clear it is not necessary to address this concern.
To establish reputation the Opponent points to the history and long use of the name WYNNS, the substantial sales of its wines, the significant promotional expenditure and the numerous awards won by its wines. It also demonstrates that James Halliday, himself a respected wine critic and judge, has described the winery and wines as “the best and longest established vineyard sites in Coonawarra” and “benchmarks for the district” (see paragraph 8). To the extent necessary I accept that WYNNS and WYNNS COONAWARRA ESTATE had a reputation in respect of wines and wineries as at the priority date.
In respect of the likelihood of confusion the Opponent submits that consumers in Australia have been educated to associate WYNNS, “an unusual and distinctive term”, with the goods and services of the Opponent and that the Trade Marks take the “key feature” of the Opponent’s marks, which I take to be a reference to the prefix WYN. The Opponent further submits that the risk of confusion is heightened by the reputation in WYNNS having arisen through use in a variety of formats. Submissions are also made regarding the coexistence with WYNDHAM ESTATE (the quote in paragraph 12 effectively sums up that submission); that it is irrelevant that WYNWOOD and WINWOOD have surnominal or geographical significance; and that the Applicant’s examples of wineries commencing with WIN only highlights that the Applicant intentionally adopted trade marks commencing with WYN to trade on an association with the WYNNS brand.
I note firstly that use of WYNNS in formats other than on its own or as part of WYNNS COONAWARRA ESTATE is either not in evidence, or is scant only[31]. To that end I am not persuaded that consumers are accustomed to WYNNS being used as anything other than a name in its entirety. For the same reasons as those described under the discussion of section 44, I am not satisfied that confusion or deception is likely. I accept that in the context of section 60 the degree of resemblance need not rise to ‘deceptively similarity’, as in section 44. However even bearing this in mind I am not satisfied that the reputation of WYNNS is such that use of the prefix WYN in names which include other material as well (such as WEST or WOOD, as is the case here) would cause consumers to wonder or be left in doubt as to the origin of the Applicant’s goods and services.
[31] The only example of use in formats other than WYNNS or WYNNS COONAWARRA ESTATE is a list on the website ‘wynnswines.com.au’ of the Opponent’s wines that have won awards (which include, for example, WYNNS JOHN RIDDOCH CABERNET SAUVIGNON and WYNNS MICHAEL SHIRAZ, but not WYNVALE or any other names that combine the prefix WYN with other material), and a link to ‘Wynnsday’ on its website. All other examples relate to WYNNS or WYNNS COONAWARRA ESTATE.
Given I am not satisfied that the use of the Trade Marks in the face of the reputation of WYNNS and/or WYNNS COONAWARRA ESTATE is likely to confuse of deceive, the ground under section 60 is not established.

Section 59

Section 59 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
The act of filing an application to register a trade mark is prima facie evidence of an applicant’s intention to use that trade mark in respect of the goods or services specified in the application.[32] A mere allegation of non use by the Opponent is not enough by itself to shift the onus of proof to the Applicant, however where a prima facie case against it has been made then it is for the Applicant to rebut the allegation.[33] The relevant date to assess intention is the date the applications were filed,[34] here being 25 October 2011, and a lack of use is not itself determinative.[35]
[32] Aston v Harlee Manufacturing Co (‘Aston’) [1960] HCA 47; (1960) 103 CLR 391.
[33] Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited (1966) 116 CLR 254.
[34] Suyen Corporation v Americana International Limited (‘Suyen’) [2010] FCA 638; (2010) 87 IPR 262.
[35] Suyen, ibid.
The Opponent submits that the Trade Marks were filed as alternatives to the WINSTON marks which are pending registration, and the Applicant cannot therefore have had a sufficiently resolved and settled intention (per Re Ducker’s Trade Mark[36]) to use the Trade Marks.
[36] [1929] 1 Ch 113 at 121.
The nature of the requisite intention was discussed by Dodds-Streeton J in Suyen,[37] wherein various descriptions were quoted including: “a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time”,[38] “some definite and present intention to deal in certain goods…and not a mere general intention of extending his business at some future time to anything which he may think desirable”,[39] and “a resolved or settled purpose which has been reached at the time when the mark is to be registered”.[40] Her Honour also observed that the absolute requirement for a real and definite intention was qualified by Aston,[41] wherein Fullagar J stated at 401 “A manufacturer of (say) confectionary would, I should suppose, be entitled to register three trade marks in relation to confectionary, though he intended only to use two of them and had not made up the mind as to which two he would use”.
[37] Supra.
[38] Ritz Hotel Ltd v Charles of Ritz Ltd and Another (1988) 15 NSWLR 157.
[39] Re John Batt & Co’s Registered Trade Marks [1898] 2 Ch. 432.
[40] Re Ducker’s Trade Mark, supra.
[41] Supra.
I am not satisfied that a case sufficient to shift the onus to the Applicant has been established. In essence the Opponent’s case is that the Trade Marks have been filed as alternatives to the WINSTON trade marks (of which the Applicant maintains an intention to use), and therefore the intention to use the Trade marks cannot be sufficiently resolved and settled. The Jin declaration, filed on behalf of the Applicant, describes the Trade Marks as “additional” rather than “alternative” and specifically states “My company settled upon the WYNWOOD and WYNWEST trade marks and filed the Applications with the intention of adopting them as additional trade marks to those subject of the Winston Applications”. Therefore were it necessary I consider this statement would sufficiently rebut the proposition put forward by the Opponent, particularly in light of the qualification given by Fullagar J in Aston.
The ground of opposition under section 59 fails accordingly.

Decision

Section 55 provided, at the date the application was filed:
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.
The Opponent has not established any of the grounds of opposition and the opposition fails. Accordingly, I direct that trade mark applications 1455487, 1455488, 1455489, 1455490 and 1455491 may proceed to registration after one month from the date of this decision.
If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.
The parties sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Opponent as per Schedule 8 of the Regulations, with costs for the second, third, fourth and fifth oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.[42]
[42] (2001) 53 IPR 591.

Nicole Worth
Hearing Officer
Trade Marks Hearings
23 September 2014

[2014] ATMO 91

23 September 2014

Key Legal Topics

Areas of Law

Commercial Law

Contract Law

Civil Procedure

Legal Concepts

Breach

Damages

Contract Formation

Offer and Acceptance

Remedies