Southcorp Wines Pty Ltd v Elders Limited

[2001] ATMO 42

TRADE MARKS ACT 1995

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

Re:The matter of the suspension of proceedings in relation to the opposition by Southcorp Wines Pty Ltd to the registration of trade mark application number 810876(29) - GRANGE BEEF and device - filed in the name of Elders Limited.

Background

This issue is concerned with whether the opposition to the registration of this trade mark should continue in the normal way, or should be suspended from being decided by the Registrar of Trade Marks until proceedings in the Federal Court between the parties, which directly relate to opposition proceedings, have been finalized.

The proceedings before the Registrar arose in the following way.  On 20 October 1999, Elders Limited (Elders), filed application to register the trade mark appearing below in respect of “Grain fed beef” in Class 29 of the International Classification of Goods and Services:

The application was accepted for registration, and advertised as such, in the Australian Official Journal of Trade Marks on 27 July 2000.  On 12 October 2000, within the time allowed for under the Trade Marks Act 1995 (the Act), and in accordance with the regulations thereto, Southcorp Wines Pty Ltd (Southcorp) filed Notice of Opposition to the registration of the trade mark.  Since those grounds are of some relevance to the issue before me, I note that these grounds are:

1. The trade mark is not capable of distinguishing the Applicant's goods in respect of which registration of the trade mark is sought by the Applicant from those of the Opponent.

2. Because of a connotation which the trade mark has the use of the trade mark would be likely to deceive or cause confusion and registration of the trade mark would be contrary to Section 43 of the Act

3. The trade mark is substantially identical with, or deceptively similar to, Opponent's trade mark GRANGE which had, before the priority date of the application, acquired a reputation in Australia and because of that reputation, the use of the trade mark would be likely to deceive or cause confusion and registration of the trade mark would be contrary to Section 60 of the Act

4. The Opponent is the owner of the following trade mark registrations:

   (i)No.227560 – “GRANGE" - registered in class 33 in respect of "wines",

   (ii)No. 227561 - "GRANGE HERMITAGE PENFOLDS" label - registered in Class 33. in respect of "wines".

   (iii)

   No.246459 - '”GRANGE" - registered in class 33 in respect of "spirits and liqueurs"

   
   

   (the "GRANGE trade marks")

5. The trade mark is substantially identical with, or deceptively similar to Opponent's said GRANGE trade marks and registration of the trade mark by the Applicant would be contrary to Section 44 of the Act.

6. The use of the trade mark by or with the authority of the Applicant would constitute an infringement of the Opponent's GRANGE trade mark registrations.

7. Because of the reputation the Opponent has in its GRANGE trade marks, the use of the trade mark in relation to the goods for which registration is sought would be likely to mislead or deceive and pass off the goods as being those of or associated with the Opponent and would be contrary to the provisions of Sections 52 and 53 of the Trade Practices Act 1974 and corresponding state legislation.

8. For the reasons set out in paragraphs 6 and 7, the use of the trade mark would be contrary to law and registration of the trade mark by the Applicant would be contrary to Subsection 42(b) of the Act

9. Registration of the trade mark ought to be refused in the exercise of the Registrar's discretion, by reason of the conduct of the Applicant and/or the nature of the mark and/or of its use and/or on such other grounds as the Registrar or the court, on appeal, may find.

Southcorp has not served or filed its evidence in support of the opposition.

Other

On 17 March 2000, Southcorp instituted proceedings (No V154) against Elders in the Federal Court.  The issue has been listed for directions in the Victorian District Registry on 8 June 2001.  I will mention now that there are two statutory declarations filed by Southcorp to support its request for suspension of the opposition.  These are by Siobhan Ryan and Elizabeth Kate Godfrey, both solicitors in the employ of Davies Collison Cave, who act for Southcorp.  The declarations attest to the detail of the Federal Court proceedings and these facts are not in dispute.

The Federal Court application and statement of claim include claims, inter alia:

·     that Elders has infringed Australian Registered Trade Marks Nos. 227,560, 227,561 and 246,459

· that the use by Elders whether by itself, its officers, servants or agents or otherwise howsoever, whether directly or indirectly, of the trade mark GRANGE, the GRANGE Trade Marks or any of them, whether alone or in association with any other words, or any name, word or mark substantially identical therewith or deceptively or misleadingly similar thereto in the course of trade on or in relation to the Respondent's goods constitutes a breach of section 52 of the Trade Practices Act 1974.

Southcorp seeks orders from the Federal Court, which include directing Elders to:

·     withdraw Trade Mark Application No. 810,876 and not file any other application for the registration of a mark including the word "Grange" or any other word substantially identical therewith or deceptively or confusingly similar thereto;

·     alternatively, to assign to the Applicant all its rights in relation to Trade Mark Application No.810,876.

Southcorp now seeks a direction from the Registrar that the proceedings before the Registrar be suspended until such time that the proceedings in the Federal Court between the parties have been finalised.  Elders does not agree with the proposed direction.  Accordingly, the issue was set down for a hearing.  I heard the issue in Canberra on 8 March 2001.  Mr Ben Fitzpatrick of Counsel represented Southcorp.  The solicitor for Elders, Mr Rob Kennett of Kelly & Co Lawyers of Adelaide, relied on written submissions.

The Submissions

In his written submissions, Mr Kennett noted that Regulation 5.16 of the Trade MarksAct 1995 states in part:

“the Registrar may, at the request of a party to the opposition proceedings ... give a direction in relation to the procedure in the proceedings".

Mr Kennett said that his client did not believe that Regulation 5.16 of the Act should be invoked to suspend opposition proceedings, particularly in the situation where there may be a significant length of time before the Federal Court proceedings will be listed for trial.

He said that the Federal Court matter has not yet been listed for trial, as interlocutory proceedings have not concluded.  The matter will not be listed for trial prior to 8 June 2001 because a directions hearing is scheduled for that date, and it is not known at what time interlocutory proceedings will be concluded, as the parties are still in dispute regarding certain discovery issues.  It is not known how soon these issues may be resolved.

He further submitted that a determination should therefore be made in the ordinary course as to whether the opposition by Southcorp to registration of the trade mark is sustainable.  He said that, "If the opposition proceedings were to proceed as usual and the trade mark ultimately accepted for registration, yet the Federal Court later finds at trial that use by Elders Limited of the Trade Mark is likely to deceive or cause confusion (which we maintain is highly unlikely), then the Federal Court may simply order that the Trade Mark be withdrawn from registration or transferred to Southcorp Wines by Elders Limited".  Mr Kennett observed that this is the usual procedure and he does not consider that the circumstances of the present case warrant departure from that course of action.

Mr Fitzpatrick responded, in his submissions at the hearing, by drawing my attention to the similarity of some of the grounds in the proceedings before Federal Court and the Registrar.  He said that, as the grounds of opposition and the Federal Court proceedings are founded on Southcorp’s reputation and goodwill in the GRANGE trade mark, both of which are direct products of use, the court proceedings are of direct relevance to the opposition proceedings (Outrigger Hotels Hawaii v Evangelista Pty Ltd [2000] ATMO 28 (31 March 2000)) (the Outrigger v Evangelista case).  The relevance is reinforced by the fact that the Federal Court application seeks orders directly relating to the opposed application.

Mr Fitzpatrick continued that is also reasonable to assume that the court will, in all probability, be provided with more comprehensive evidence than the Registrar, as the court will have the advantage of oral examination and cross-examination of witnesses.  He said that any finding of fact by the court, as to the reputation of the Southcorp trade mark, would be based on this more extensive material, as per the Outrigger v Evangelista case, supra.  He submitted that a critical factor in favour of a suspension of the opposition proceedings, is that the grounds of opposition include a claim that the use of the trade mark would infringe the Trade Practices Act and amount to passing off; together with a separate claim that use of the trade mark would be contrary to law.  As such determinations are ultra vires the power of the Registrar, a decision of the court is required before these grounds of opposition can be fully determined (see the Outrigger v Evangelista case, supra).

Mr Fitzpatrick proposed that there is no evidence or suggestion that any uncertainty about the Elder’s trade mark rights would be removed if the opposition proceedings continued.  He said that as the Federal Court application seeks orders for the withdrawal or assignment of the opposed application, any uncertainty can only be removed by the decision of the Federal Court.  If any rights of Elders in the trade mark are found to be valid, those rights will extend back to the date of filing of the opposed application.

Counsel then drew my attention to the time and expense involved in preparing evidence which may turn out to be unnecessary and be a disadvantage to an opponent, as per Ayrton Senna Promocoes E Emprendimentos Ltda v Senna Racing Team Pty Ltd (1998) 41 IPR 395 (the Ayrton Senna v Senna Racing Team case).  He said that the extent of the evidence that Southcorp would be required to collect would be considerable.  As set out in paragraph 6 of the Federal Court Statement of Claim, Southcorp has, observed Mr Fitzpatrick, been using the GRANGE mark since at least 1955.  Southcorp’s list of discoverable documents, exhibited to the declaration of Elizabeth Godfrey, also indicates the volume of documentation relating to the use of the GRANGE trade mark.

Mr Fitzpatrick concluded his submissions by stating that there is a public interest in having disputes between the parties resolved as efficiently as possible and with minimal cost to the public purse as is possible, with fairness between the parties, as per the Outrigger v Evangelista case, supra.  He said that in light of the commonality of the evidence to be prepared in relation to the opposition proceedings and the Federal Court proceedings, the public interest would not be well served by requiring the parties to prepare opposition evidence which may ultimately be rendered irrelevant by the decision of the Federal Court.  Furthermore, if any decision was issued in relation to opposition proceedings, it would be reasonable to expect it to be appealed by the unsuccessful party.  The result, he said, would be two separate Federal Court proceedings, both dealing with similar evidentiary issues but governed by distinct legal principles.

Reasons

Regulation 5.16 provides:

5.16     Conduct of opposition proceedings generally

(1)The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.

(2)A direction given under subregulation (1) must not be inconsistent with these regulations.

(3)The Registrar must not give a direction unless the Registrar:

(a)is reasonably satisfied that parties to the proceedings have been notified of the proposed direction; and

(b)has given the parties a reasonable opportunity to make representations concerning the proposed direction; and

(c)is reasonably satisfied that the proposed direction is appropriate.

Section 54 of the Act allows:

Opposition proceedings

54.(1) The Registrar must give to the opponent and to the applicant an opportunity of being heard on the opposition.

Note:For opponent and applicant see section 6.

(2) Subject to subsection (1), the proceedings for dealing with the opposition must be in accordance with the regulations.

Further, regulations 5.14 and 21.15 provide:

Hearing of opposition

5.14(1)       An applicant may ask the Registrar to hear the parties to opposition proceedings, if:

(a)the opponent serves a copy of a notice under subregulation 5.8 (1); or

(b)at the end of the period for service of:

(i)a copy of the evidence in support under subregulation 5.7 (1); or

(ii)a copy of the notice under subregulation 5.8 (1);

the opponent has not served a copy of the evidence in support or a copy of the notice.

(2)A party to opposition proceedings may ask the Registrar to hear the parties to the opposition proceedings, if:

(a)the applicant serves a copy of a notice under subregulation 5.11 (1); or

(b)at the end of the period for service of:

(i)a copy of the evidence in answer under subregulation 5.9 (1); or

(ii)a copy of the notice under subregulation 5.11 (1);

the applicant has not served a copy of the evidence in answer or a copy of the notice; or

(c)the opponent serves a copy of the evidence in reply under subregulation 5.12 (1) or a copy of a notice under subregulation 5.13 (1); or

(d)at the end of the period for serving:

(i)a copy of the evidence in reply under subregulation 5.12 (1); or

(ii)a copy of a notice under subregulation 5.13 (1);

the opponent has not served a copy of the evidence in reply or a copy of the notice.

(3)The Registrar must comply with a request made in accordance with subregulation (1) or (2).

(4)If:

(a)an applicant may make a request to the Registrar under subregulation (1); or

(b)a party to opposition proceedings may make a request to the Registrar under subregulation (2);

and a request is not made, the Registrar may, on his or her own initiative, give an opportunity to the parties to the opposition proceedings to be heard in relation to those proceedings.

Hearings by Registrar

21.15(1)       This regulation applies if the Act or these Regulations provide for a person to be heard by the Registrar.

(2)A request for a hearing by the Registrar must be in an approved form.

(3)On request, or on his or her own initiative, the Registrar may:

(a)fix a time, date and place for the hearing; and

(b)give the parties to the hearing at least 10 days’ notice in writing of the hearing and of the time, date and place fixed for the hearing.

(4)A party must, as soon as practicable after being notified of a hearing, inform the Registrar in writing whether the party wants to be heard.

(5)A party may attend a hearing in person or by such means as the Registrar reasonably allows.

(6)A party may make representations in writing before or during a hearing.

(7)A hearing must be conducted with as little formality and technicality, and with as much expedition, as the requirements of the Act and these Regulations and a proper consideration of the matters before the Registrar, allow.

(8)The Registrar is not bound by the rules of evidence but may inform himself or herself on any matter that is before him or her in any way that the Registrar reasonably believes to be appropriate.

(9)The Registrar may adjourn a hearing by notifying each party to the hearing accordingly.

(10)Subject to these Regulations, the Registrar may give a direction that is reasonably necessary for the conduct of the hearing.

As observed by the delegate in the Outrigger v Evangelista case, supra:

The above provisions (and case-law referred to in submissions) make it clear that I am, in considering the issue of the possible suspension of this application from the opposition, to balance and reasonably consider the interests of the parties; the most expeditious way of running the hearing of the substantive issue when it comes on before a Delegate of the Registrar; and the public interests which includes the efficiency of the Courts, the maintenance of the Trade Marks Register and the interests of any third parties.

Prior decisions of the Delegates of the Commissioner of Patents or the Registrar of Trade Marks can provide some guidance, but it is clear that I should primarily consider what direction is reasonable in the particular circumstances of this issue.

The Interests of the parties

Here, the interests of Elders and Southcorp include the authoritative testing of the certainty of their respective trade mark application or registrations, the potential expense to either or both of the parties in running related proceedings, both before the Registrar and the Federal Court, and the avoidance of the potential complexity and expense of compiling two sets of inter-relating evidence for use before the Registrar and the Court, as per the Ayrton Senna v Senna Racing Team case, supra.  Certainly, if it were alleged by Elders that it needed to protect its interests against the activities of a third party, then this is a factor which I would have to weigh.  However, Elders does not suggest or evidence this.  That party has not shown how its interests would otherwise be damaged if the matter were to be suspended from opposition.

The hearing of the Substantive Matter before the Registrar

There is no certainty in the proposition that the Registrar would dispose of the matter before him more expeditiously than would the Federal Court decide the matter before it.  However, if the Registrar did finalise proceedings and issue reasons ahead of the Federal Court decision, it is apparent that the issue would either be appealed or, until the Federal Court issue is finalised, there would be a registration on the Register of Trade Marks which could be argued to be in some doubt.

However, it would appear to be most likely that whatever the outcome of the proceedings in the Federal Court, the unsuccessful party will withdraw from the opposition proceedings before the Registrar and, if they did not, the Registrar could rely on the evidence and reasons of the Court.

The public interest

As Mr Fitzpatrick observed, there is a positive public interest in running both the proceedings before this office and those before the Court in the most simple way possible.  This not only reduces the costs to the parties but also the demands on the public purse.  Further, it is in the public interest that the Register of Trade Marks accurately reflects the market-place verity.  It is that reality which is in dispute between the parties.  The Registrar would be bound to place the trade mark on the Register if the opposition was dismissed and no appeal were filed.  Given this, I believe that it is not in the public interest that the potential exists for such a registration of a trade mark which the Court, soon after, might find is deceptive and confusing.

Decision

Accordingly, having balanced the above factors, I believe that the most reasonable course is to direct that the matter be suspended from opposition until such time that the proceedings between the parties in the Federal Court have been concluded and/or the Court has issued its decision.

Costs

Having been successful, Southcorp is entitled to its costs at scale which I award against Elders.

Ian Forno
Hearing Officer

24 May 2001