Southcorp Wines Pty Limited v David C Coy

[2001] ATMO 21

TRADE MARKS ACT 1995

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

Re:Opposition by Southcorp Wines Pty Limited to registration of trade mark application 785662(33) - DEVILS BACKBONE- filed in the name of David C Coy.

Background

This issue arises out of the filing of application 785662 in the name of David C Coy (‘Mr Coy’) to register the words DEVILS BACKBONE, in respect of goods which now read “wine”, in Class 33 of the International (Nice) Classification of Goods and Services. 

Following examination, the application was accepted for registration and advertised in the Australian Official Journal of Trade Marks as such on 24 June 1999.  On 24 September 1999, within the time allowed under the Trade Marks Act 1995 (‘the Act’) and regulations thereto to do so, Southcorp Wines Pty Ltd (‘Southcorp’) filed Notice of Opposition to the registration of the application.  The grounds canvassed in the Notice are wide-ranging but the grounds relied on at the hearing of the opposition were those under:

·section 44

·section 60

·section 43

·section 41

The latter ground was not overtly referred to in the Notice which otherwise includes a ‘catch-all’, “Such other grounds as the Registrar of Trade Marks or the Court, on appeal, may see fit.” I allowed argument at the Hearing in relation to section 41, but reserved my decision as to whether I would accept and consider such argument.

The hearing was before me as a delegate of the Registrar of Trade Marks.  Ms Janet Williamson, solicitor, of Southcorp, represented Southcorp.  Mr Coy did not attend at the hearing or put in written submissions.

Prior to discussing the issues, I will outline the evidence of the parties and state my reasons in relation to the additional ground that was relied on by Southcorp at the Hearing.

The Evidence

There are four statutory declarations in evidence.  There are two by Matthew Adams who is senior brand manager at Southcorp.  The first, dated 8 December 1999, brings into evidence as an exhibit the second declaration, which is dated 24 November 1999.  The remaining two declarations comprise the evidence in answer - one is a declaration by Celia Jane Cumming who is an employee of Freehills Carter Smith Beadle, who are trade marks solicitors and attorneys.  The other declaration is by David Charles Coy.

I will remark that all of the declarations are defective in regard to regulation 21.6(4) in that they do not state the names of the people before whom they were declared.  I therefore regard each of them as being not properly made and place reliance on them accordingly.  That is, I place some weight on them, but not as much as if they had been properly made.

I will refer to each of the ‘declarations’ by the surname of the declarant – in regard to Mr Adams, it is the ‘declaration’ dated 24 November 1999 to which I refer.

Mr Coy owns a vineyard and winery at Ensay, East Gippsland.  On 27 October 1997, he (along with others) bought a property of some 35 acres located at C.A. 18E, Parish of Yambulla, Ensay in East Gippsland.  Documentation relating to the purchase is in evidence.  The property is on a section of the Great Alpine Road that has historically been known as The Devils Backbone.  An extract of the book Names of the Great Alpine Road Between Bairnsdale and Omeo, by PJ Gardner, (the complete citation is not supplied), and photographs of a road sign bearing the words Devils Backbone, document the application of the name to this section of road.  The name stems from the tortuous nature of the road and a perceived similarity of such to the spine of the Great Deceiver – such similes are, in my experience, frequent in road names with the words Devils Elbow being applied to stretches of road in both Scotland and Australia.

Mr Coy says that the trade mark THE DEVILS BACKBONE was suggested by the proximity of the road to the property.  He states that he searched the availability of the trade mark within the records of IP Australia, concluded that there were no conflicting trade marks, applied to the National Data Centre, Australian Surveying & Land Information Group to reproduce AUSLIG mapping material on his label and appends documentation which shows this to his ‘declaration’.  Mr Coy has had a label designed for his wine but has not yet commenced use because of this opposition.

I note at this stage that Mr Coy has not asserted that he grows grapes at the property he bought on the Devils Backbone road.

The Cumming ‘declaration’ appends a print-out of several records from the Register of Trade Marks showing registered trade marks, and pending applications for registration of trade marks, in Class 33 which include the words DEVIL, DEVILS or DEVIL’S.  This is presumably to try to demonstrate that the word DEVIL is in frequent use in trade marks used in relation to wines.  I regard these records as being very inconclusive – a number of different inferences might be drawn from them.  It is apparent that at least one registration was restricted to avoid a perceived conflict with Southcorp’s registration 542972(33) DEVIL’S LAIR.  One, 771639, most curiously excludes beer which is not included in class 33; another might have been allowed to lapse on threat of proceedings by either Southcorp or United Distillers Plc.  The records do certainly not establish that the word DEVIL or its variants, above, have in any way become common to the trade or are even frequently used in trade marks in relation to wine.

The Southcorp evidence asserts that it adopted the trade mark DEVIL’S LAIR in 1990 in relation to wine produced from the Devil’s Lair vineyard which was established in 1980.  Prior to 1990, grapes produced from the Devil’s Lair vineyard were used by other wineries.

The trade mark DEVIL’S LAIR, it is asserted, was coined by reference to one of Western Australia’s most famous archaeological sites – the Devil’s Lair Cave which has been periodically inhabited by mankind for some 7,000 years.  The remains of a prehistoric giant Tasmanian Devil were excavated from the cave and are thought to be the origin of the cave’s name. 

The Adams declaration asserts that the Devils Lair is considered to be one of the Ten Great Estates of Western Australia and appends a Langton’s Fine Wines Auction Catalogue in support of the claim.  I have a great deal of difficulty in accepting this proposition, as evidenced, as being anything more than an auctioneer’s puff. 

Southcorp uses its DEVIL’S LAIR trade mark both on its own and in company with a representation of a dog as shown below.

Registered Trade Mark 542972

'The composite trade mark'.

Southcorp also produces a wine under the trade mark FIFTH LEG which carries the identification Devil’s Lair Fifth Leg in small print on the reverse label at the rear of the bottle.

However, having claimed the latter trade mark (which is a very minor part of its FIFTH LEG trade mark) as one of the Devil’s Lair trade marks, Southcorp does not apportion any of the relevant factors which might go to the reputation of the trade mark between the DEVIL’S LAIR trade mark and the Devil’s Lair Fifth Leg trade marks.

Southcorp does not find it necessary to advertise the Devil’s Lair trade mark extensively – most vintages are sold out within six moths of release.  Promotion is through catalogues, booklets, fliers, postcards and the Internet.  Such promotional materials are in evidence.  Southcorp also features the wines at tastings.

Southcorp also includes many press-clippings, directory entries and wine guide extracts in its evidence.  It also provides figures as to the number of cases of wine sold and revenue figures.  I am not certain how these figures divide up between the Fifth Leg trade mark and the DEVIL’S LAIR trade mark.  This is a pertinent question since the words DEVIL’S LAIR are so minor on the FIFTH LEG label (and are on the reverse of the bottle) that many purchasers might be unaware on purchase of the wine of a connection between it and the DEVIL’S LAIR label.  However, having reviewed the literature derived from publications that Southcorp has submitted, I am prepared to accept that the DEVIL’S LAIR trade mark is moderately well-known among wine cognoscenti in Australia.

Reasons

Section 41

I have decided not to accept the argument that Ms Williamson presented to me at the hearing concerning grounds under section 41 of the Act. The ground was not overtly referred to the Notice which otherwise includes the ‘catch-all’, “Such other grounds as the Registrar of Trade Marks or the Court, on appeal, may see fit.” I allowed presentation of argument at the Hearing in relation to section 41, but reserved my decision as to whether I would accept such argument. In considering this situation from the viewpoint of the applicant, I believe that it would not be procedurally fair to consider this argument and debate its merits when the applicant has not been afforded the opportunity to respond. The applicant was not present at the hearing, arguably, on the basis that he or his legal advisers saw no need to address the stated grounds in the Notice of Opposition. They could argue, with some force, that if the section 41 ground had been overtly stated in the Notice, their judgement as to whether they should attend at the hearing might have been different. Alternatively viewed, it is possible that the ‘catch-all’ calls on me to exercise my discretion to refuse the application should I perceive that there exists a ground which was not included in a Notice of Opposition under which the application ought to be refused registration (as opposed to the situation here, where the opponent wishes me to read the ‘catch-all’ as including the additional ground). However, if I were to exercise my discretion in this way, I think the same principles of procedural fairness should apply – that is, the party whom I might adversely exercise the discretion against ought to have the opportunity to make representations.

Sections 44 and 60

The applicant’s trade mark is unused and the application is in respect of goods; section 44 therefore provides, as much as is relevant to these proceedings:

Identical etc. trade marks

44.(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.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

Section 60 provides:

Trade mark similar to trade mark that has acquired  a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

Sections 44 and 60 have in common a threshold test of whether the trade marks in question are substantially identical or deceptively similar. If the trade marks in question are neither substantially identical nor deceptively similar, I need not proceed to the other factors specified for consideration in sections 44 and 60.

I note that the operation of section 60 extends to an opponent’s trade marks which are either registered or unregistered – Southcorp’s use of the words DEVIL’S LAIR, solus, in relation to wines dates from around 1990 and thus (leaving aside the question of the reputation of the trade mark) predates this application. Southcorp’s composite trade mark registration has a priority date of 26 September 1990 and thus, also, predates the priority date of this application by Mr Coy. There are therefore, in terms of the assessment of the substantial identity or deceptive similarity of the trade marks, two questions to be assessed: whether the Southcorp composite trade mark is substantially identical or deceptively similar to the trade mark in terms of section 44 and 60; and, whether in terms of section 60, the words DEVIL’S LAIR is substantially identical or deceptively similar to the trade mark DEVIL’S BACKBONE. I will approach these questions from the standpoint that if the trade marks DEVILS BACKBONE and DEVIL’S LAIR are not substantially identical or deceptively similar, then neither can be the Southcorp composite trade mark and the words DEVILS BACKBONE.

At the hearing, Ms Williamson conceded that the trade marks in question were not substantially identical; however, she submitted that they were deceptively similar and drew my attention to the test in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658 where, Dixon and McTiernan JJ stated:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken descriptions must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.

Ms Williamson submitted that the goods involved here, wines, are frequently sold through restaurants where they are included on wine-lists where the device portion of a trade mark does not appear.  I will note that in C A Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561; and, C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 the Courts appear to have adopted a similar approach – that is to say to place the emphasis in the comparison of the words in the trade marks, rather than any device element that was present.

Ms Williamson emphasized in her submissions that both trade marks start with the word DEVIL: Sargant LJ in London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264, emphasised the importance of prefixes when comparing trade marks. She drew my attention to the pronounced spine, or backbone, in the device component of Southcorp’s composite trade mark. However, I should bear in mind that it is the …

… impression of the marks [that] should be considered, bearing in mind points of resemblance and points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solutions were to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective marks: Clark v Sharp (1898) 23 RPC 141 at 146.

In these proceedings, the onus is on Southcorp to satisfy me that there is a reasonable likelihood of deception or confusion in order to succeed in their opposition to the registration of the trade mark.  In Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), para 34, French J said of section 33:

The condition of refusal of an application is that the Registrar is satisfied that there are grounds for rejection. If not so satisfied the Registrar must accept the application. Unless the Registrar thinks that the proposed trade mark is likely to deceive or to cause confusion then all other things being equal, the application must be accepted.

And at para 45:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

Section 10 of the Act provides:

Definition of deceptively similar

10. For the purposes of this Act, 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.

In Woolworths, above at para 50, French J said:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another 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 of deceptive similarity 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) 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."

Both of these trade marks have the genesis of their origin in minor geographical features, the one from the crooked nature of a road and the other from a cave where dwelt a giant Tasmanian Devil.  However, it may be doubtful that these idiosyncratic derivations will be known to many Australians when they contemplate the trade marks, or even when they, knowing of the Southcorp trade marks, contemplate Mr Coy’s trade mark.  To my mind, the impression gained from the trade marks is that they operate as wholes; that is, that the words DEVIL’S LAIR will be seen as members of the public as a unity with no particular emphasis on either word and as referring to the home or hideout of the Fallen Angel.  I think that much the same can be said of Mr Coy’s trade mark, DEVILS BACKBONE – it is likely to be seen again as a unity and as referring to the spine of the Evil One, perhaps in a jocular reference to the quality of the courage that could be gained from imbibing Mr Coy’s wine.

It seems to me to be unlikely that the trade marks in question will be remembered or recalled by reference to the word DEVIL, solus, as would be more likely to be the case if the trade  marks in question were, for example, DEVILS TIPPLE and DEVILS BREW.

Thus, the impressions that would be gained or taken away from the trade marks DEVIL’S LAIR and DEVILS BACKBONE are quite different from one another and the denotations of the trade marks are so different that it is not likely that the one might be mis-recalled or mis-remembered for the other.

Accordingly, I am not satisfied, in terms of Woolworths, above, that there is a likelihood of deception and confusion arising from any similarity of the applicants’ trade mark to the opponent’s trade mark. The opponent has not, therefore, established its grounds in terms of sections 44 or 60 of the Trade Marks Act 1995.

Section 43

Section 43 provides:

Trade mark likely to deceive or cause confusion

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.

Ms Williamson submitted that, as the words DEVILS BACKBONE denote a particular section of road and a mountain in the Omeo district of Victoria, the words DEVILS BACKBONE have a connotation such that the use of the trade mark on wines not from that geographical area would confuse or deceive.

I think that for such an argument to succeed, an opponent would need to show that not only is a geographical area known to Australians in the relevant market, but also that area is known for producing the relevant goods, which are here ‘wines’.  If a geographical area is not recognized by Australians who comprise the relevant market as a source of the relevant goods, the words cannot have taken on a connotation and it is difficult to see how confusion or deception could arise.

Here there is a suggestion that either the Devils Backbone road has taken its name from a mountain or that the mountain has taken its name from the road.  The evidence is not conclusive as to what has occurred and I prefer not to rely on it.  Moreover, there is no evidence that wines are produced there or that Australians who comprise the relevant market recognise the words DEVILS BACKBONE as indicating wines from that area and that thus the words have come to connote such wines.  On the evidence before me, it does not appear that 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”. 

This ground of opposition is therefore unsuccessful.

Decision

The trade marks in question are not deceptively similar – the opposition in terms of both sections 44 and 60 is not, therefore, successful. The words DEVILS BACKBONE have not been shown to connote wines from a particular area – the opposition in terms of section 43 is also unsuccessful.

Costs

Having been successful in these proceedings, Mr Coy is entitled to his costs at scale which I award against Southcorp.

Ian Thompson
Hearing Officer

16 March 2001