Southcorp Limited v Barwick Wines Pty Ltd

[2006] ATMO 68

TRADE MARKS ACT 1995

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

Re:Opposition by Southcorp Limited to registration of trade mark application 1026010(33) - CRUSH - filed in the name of Barwick Wines Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Alan Tilley,  attorney, of Foster’s Group Limited Applicant: David Stewart of Minter Ellison, Lawyers
Decision:	Section 52 opposition - grounds under sections 41 & 43 not established – registration allowed. Costs awarded against the opponent.

Background

1. The applicant, Barwick Wines Pty Ltd, applied to register the following trade mark:

Application Number:	1026010
Priority date:	20 October 2004
Goods:	Class33: Wine
Trade Mark:	crush
Advertised:	7 April 2005

1. The opponent, Southcorp Limited, filed notice of opposition to the trade mark's registration on 7 July 2005.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

2. The parties duly served and filed evidence in support and evidence in answer.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 29 June 2006. Mr Alan Tilley, trade marks attorney, of Foster’s Group Limited Intellectual Property Department represented the opponent. Mr David Stewart, of Minter Ellison, Lawyers, represented the applicant by video link.

   Evidence

4. The evidence relating to the opposition consists of the following declaration:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Alan Wallace Tilley	7.11.05	AWT-1	Tilley
Evidence in Answer
Andrew John Rohrbach	6.02.2006	AJR-1 to AJR-20	Rohrbach

1. The Tilley declaration is directed to the section 43 connotation ground and exhibits the result of a Google search on the terms “crush wine OR winery –toronto –bar –shop”.

2. The Rohrbach declaration is made by the brand development and export sales manager of the applicant. He discusses the wine industry in Western Australia, and the applicant’s position in it. He provides details of the adoption of the applied-for trade mark by the applicant, and the use of the mark in relation to the specified gods.

   Grounds of Opposition

3. The opponent sought to rely on grounds under sections 41 and 43 of the Act. The latter ground had been specifically pleaded in the Notice of Opposition; however, the former was not and the opponent relied on ground 10: “[S]uch other grounds as the Registrar of Trade Marks or the Court, on appeal, sees fit.” The opponent had advised this office, and the applicant, by facsimile 19 July 2006 of this course of action.

4. The applicant objected to the additional ground, on the basis that it was an amendment to the Notice of Opposition that at such a late stage was embarrassing and prejudicial.

5. Having considered the submissions made by the parties at the hearing, and prior correspondence relating to the inclusion of the section 41 ground, I have decided that I am prepared to consider the ground. The ground does appear to be relevant in that the evidence, which was accepted by the applicant, is to the effect that the word “crush” is a term of art in the wine industry. I do not think that, in the words of Finkelstein J in Malibu Boats West Inc v Catanese (2001) 51 IPR 134, at 142, “it would be proper or fair … to ignore relevant material while discharging [my] statutory duty.”

6. I formally dismiss the remaining grounds of opposition.

   Section 41(2) Trade mark not distinguishing applicant’s goods

7. The opponent submitted that crush lacked inherent adaptation to distinguish wine, in that it consisted of a reference to the character of the goods such as composition, nature or other properties.

8. It was common ground between the parties that the term ‘crush’ is an established wine industry term referring to the harvest or the process of crushing wine grapes prior to fermentation.

9. The applicant submitted that wine bearing the label with the word crush and the vintage year would merely describe a wine from that year’s ‘crush’ or vintage.

10. While at first blush there appears to be some merit in the submission made by the opponent, in reality there is but the remotest reference to the character or quality of wine. While the term ‘vintage’ is descriptive of wine and usually incapable of distinguishing a winemaker’s goods, I do not consider that ‘crush’ is necessarily synonymous with vintage. From the evidence in support, it would seem that ‘crush’ is synonymous with ‘harvest’, which features in some 15 wine marks on the Register.

11. I do not consider that the word crush is one which other traders are likely, in the ordinary course of their business, and without any improper motive, to desire to use upon or in connection with their goods: see Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579, per Wilcox J at 588, following FH Faulding & Co Ltd v Imperial Chemical Industries of Australia & New Zealand (1965) 112 CLR 537.

12. I am not satisfied that this ground of opposition has been established and I dismiss it.

    Section 43Trade mark likely to deceive or cause confusion

13. Section 43 states:

    43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

14. The provisions of section 43 are applied when there is some connotation inherent in the trade mark applied for which is likely to lead to deception and confusion: George Schmidt v Down To Earth (Victoria) Co-operative Society Ltd 41 IPR 632; T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720.

15. The applicant submitted that crush could connote a non-alcoholic beverage, which could lead people to wonder whether the applicant’s beverage was alcoholic or not.

16. Additionally, the opponent submitted that if the applicant used its mark without a vintage year shown, it would confuse potential purchasers into believing the wine is non-vintage, and therefore run-of-the-mill or nondescript. Thus, suggested the opponent, this would mislead the purchasing public.

17. The applicant submitted that any connotation relating to ‘harvest’ or ‘the crushing process’ would not be likely to deceive or confuse because the connotation would not be a misdescription. The applicant submitted that if a consumer associated the mark with the industry term they might correctly assume that the beverage has undergone the regular process prior to the fermentation stage.

18. I am not satisfied that any connotation inherent in the mark is likely to deceive or cause confusion. There is no evidence to support the contention that crush would connote non-alcoholic beverages and I do not believe that it does.

19. While some potential consumers might associate crush with the expression meaning ‘harvest’ or ‘the crushing process’, I am not satisfied that this would lead to deception or confusion. The applicant’s goods derive from harvested grapes that are subject to a crushing process.

20. I dismiss this ground of opposition.

    Decision

21. The opponent has not established its grounds of opposition. Therefore, the applicant's trade mark may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

22. The applicant sought its costs.  I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    28 July 2006