Southcorp Wines Pty Ltd v Kemeny's Food & Liquor Pty Ltd

[2001] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by Southcorp Wines Pty Ltd to the registration of trade mark application number 749793 in the name of Kemeny's Food & Liquor Pty Limited for the trade mark, comprising the words DEVIL'S RIDGE and device, in Class 33.

Background

Application number 749793 was filed on 27 November 1997 in the name of Kemeny's Food & Liquor Pty Limited (the applicant).  The application was to register the trade mark shown below and covered the statement of goods "Wine" in Class 33.

Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 26 March 1998.  On 3 June 1998, Southcorp Wines Pty Ltd (the opponent) filed notice of opposition to the trade mark’s registration.  The respective parties served evidence in support and answer in the matter, and the applicant then requested a hearing to determine the opposition.  It came before me, as a delegate of the Registrar, in Sydney on 14 March 2001.  Representing the opponent at the hearing was Ms Janet Williamson, the opponent's solicitor.  Appearing for the applicant was Mr Brian Elkington of Blake Dawson Waldron.

The notice of opposition listed a wide range of grounds but at the hearing, the opponent's solicitor advised that she would only be relying upon those grounds under ss.44 and 60.

The Evidence
The evidence in support comprises a declaration and exhibits by Matthew Adams, the Senior Brand Manager of the opponent.  Mr Adams gives some information in relation to the opponent company, the history of its adoption of two trade marks which include or comprise the words DEVIL'S LAIR - registration number 542972 and application (subsequently registration) number 796065, details of the use and reputation of those trade marks, and the sales turnover of the opponent's goods since 1995.

Mr Adams attaches various documents as exhibits to his declaration, including an invitation, various wine labels which incorporate the words DEVIL'S LAIR - including its FIFTH LEG label, a product catalogue, various promotional material, all of which include, inter alia, the words DEVIL'S LAIR, a printout of the opponent's Internet web-site, a list of restaurants selling the opponent's wines, copies of extracts from various wine publications, articles and directories, and copies of various certificates of registration.

The applicant's evidence in answer comprises a declaration from Gabor Kemeny.  The declarant gives information on how the present trade mark was adopted and says that there is at least one other brand of wine on the market which contains the word DEVIL'S.  He also says that the applicant has spent a considerable sum designing and preparing labels for bottles which will contain DEVIL'S RIDGE branded wine.

Submissions
Both Ms Williamson, for the opponent, and Mr Elkington, for the applicant, made quite comprehensive submissions in relation to the notice of opposition.  I will not repeat them in detail here.  However I will refer briefly to any points which they made, where I consider it would be relevant in explaining my decision.

Submissions and analysis
As I have already said, Ms Williamson advised at the hearing that she would only be relying upon the grounds which she pursued at the hearing - those under ss.44 and 60.  Consequently, those grounds form the basis of this decision and the reasons for it.

Section 44
Substantially identical or deceptively similar trade marks
The relevant part of s.44 reads as follows:

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.

Ms Williamson's main arguments, in this respect centred around the proposition that the applicant's trade mark DEVIL'S RIDGE and device is substantially identical with, or deceptively similar to, the opponent's prior registered trade mark for the same or similar goods.  The registration relied upon in respect of this ground is trade mark number 542972, for a mark comprising the words DEVIL'S LAIR and an Aboriginal "x-ray art" style representation of a canine type animal, together with what appears to be a spare leg or haunch, and covering the specification of goods: "Wines, brandy and liqueurs".

Clearly, the goods of the respective parties are the same and I will now move on to determine whether the respective trade marks are, as they are claimed by the opponent to be, substantially identical or deceptively similar.

In relation to whether the two party's marks can be considered to be substantially identical, Ms Williamson said that there is no statutory definition for the phrase "substantially identical".  She then proceeded to list what she alleged were the similar ideas and visual appearance of the competing marks.  However, in deciding whether or not competing trade marks are substantially identical to each other, the test is conveniently laid out in such cases as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641. and Shell v Esso, supra, where, in the latter case, Windeyer J said, at 414:

(the marks should) be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

I think that, when the marks are looked at together, there are differences which immediately become apparent.  I have reproduced them side by side here for the ease of such a comparison.

applicant's trade mark   opponent's trade mark

The only common element in the marks is the word DEVIL'S with the other word and device in each mark being different.  Given the clear differences which emerge from such a comparison, I can only deduce that the respective marks are not substantially identical and I now move on to determine whether or not they are deceptively similar.

In relation to whether the respective trade marks are deceptively similar to each other, Windeyer J said further in Shell v Esso, supra, at 415:

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 television exhibitions.

Section 10 of the Act defines a trade mark as being deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion.  Consideration should also be given to a normal person's impression based on a recollection of the opponent's marks.  In this regard, Luxmoore, L.J. expounded the test referred to as the doctrine of "imperfect recollection" in Rysta Ltd.'s Appn. (1943) 60 RPC 87.

Ms Williamson made extensive submissions on this point, alleging that the word DEVIL'S, common to both marks in question, would be the major factor in people's remembrance of the marks, especially given its strong connotations in any society.  She said that the other word in both marks, RIDGE in the applicant's, and LAIR, in the opponent's, were of lesser cultural significance.  She asserted that other factors, such as the devices in both trade marks being "similar cave art" devices, the practice of diners ordering from wine lists in restaurants without the bottle label being visible, and customers hurriedly ordering wine in bottle shops and making wrong assumptions that the wine they are buying is part of a family of DEVIL'S LAIR marks, were all important in leading to customers imperfectly remembering the two trade marks.

Mr Elkington, on behalf of the applicant, said that although the word DEVIL'S was indeed common to both parties' trade marks, the other elements present in the marks served to differentiate them, as did the fact that the wine buying public was well used to making a distinction between wine labels which contain the same or similar words.  He added that there were a number of trade marks in Class 33 which had been accepted, or which were already on the Register for a number of different proprietors, containing the word DEVIL or DEVIL'S.

In considering this matter, I have taken into account the word common to both trade marks.  However, as Mr Elkington submitted, the marks also contain a host of other material which cannot be ignored, including the words RIDGE and LAIR, and the distinctively different devices.  I am of the opinion that the word portions of the marks would be remembered as wholes - DEVIL'S RIDGE possibly indicating a place or origin of the wine, while DEVIL'S LAIR perhaps refers to a place where a mythical creature has its hideaway or den.  I do not believe that the average wine buyer would think that one proprietor would have a monopoly on the word DEVIL'S, especially considering the presence on the Register of such marks as DEVILS CORNER with a device, and DEVILS BACKBONE, solus - both of which cover wines and which are owned by separate entities.  I also do not think that it matters whether or not there is an apostrophe in the word DEVIL'S.  I do not believe that it represents a significant factor in any comparison because the eye tends to skip such minor elements - especially where there is other material present.

On top of this, the other word in each mark - in the applicant's case, RIDGE and in the opponent's LAIR - are totally different.  I concede that the word RIDGE is quite common in relation to wine trade marks, appearing some 65 times in the Register.  However, the word LAIR only appears in four wine registrations - three of these being the opponent's.  The appearance and meaning of the two words are both quite different.  In addition, the device portions of the opposing marks are distinctly different.  Ms Williamson has said that both could be cave art.  This may well be.  However, that is where I believe the resemblance ends.  To me, the applicant's device appears to be a European cave drawing of a mythical "devil" creature while, as I have said, the opponent's device is more like an Aboriginal "x-ray art" style representation of a canine type animal.  It is further distinguished because it is accompanied by an animal leg or haunch, acquired with apparent carnivorous intent.  It is interesting to note that the leg appears to be that of a two-toed animal, whereas the dog creature appears to have four toes on each leg.  To my mind, the animal depicted does not look like a Tasmanian devil - if that was to have been the intended connotation - but instead looks more like an extinct Tasmanian tiger, or wolf.

Despite Ms Williamson's concerns about wines being purchased with labels unseen on wine lists, or in a hurry at bottle shops, I do not think that there would be a great deal of confusion between the marks here because of the common word in them.  I believe that ordinary Australian wine drinkers are becoming increasingly knowledgable and sophisticated in their drinking habits and take more care with their selection than Ms Williamson believes they do.

Given all of the above considerations, I believe that the applicant's trade mark is not substantially identical with, nor is it deceptively similar to the mark already registered by the opponent.

Accordingly, I find the opponent is not successful on this ground of its opposition.

Section 60
Trade mark similar to trade mark that has acquired a reputation in Australia
This section reads:

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.

There is no change in the law from the Trade Marks Act 1955 that there is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation for its mark in Australia - re Heerey J., when referring to s.28 of that Act, in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501. The opponent would need to establish that that reputation was sufficient amongst a substantial number of persons, as at the critical date of the filing of the present application - as per Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, so that deception or confusion was bound to occur amongst a substantial number of people, likely to be concerned in the purchasing of the particular goods, because of the use of the applicant's mark - The Kendall Company v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

Ms Williamson pointed to the fact that the opponent has been selling wines under its DEVIL’S LAIR trade mark since 1990, albeit not supported by revenue details from that year.  She also referred to the literature in the evidence concerning that mark and the FIFTH LEG label which additionally contains the words DEVIL’S LAIR.  Mr Elkington said in answer that, while he conceded that the opponent's mark might have "accumulated respectable notoriety", it did not have the broad recognition enjoyed by other better-known Australian wines.  He said that even if it did, it was still up to the opponent to show that deception or confusion would occur from the applicant's use of its mark.  This, he said, it had not done.

I think it is the case here that the evidence shows that the opponent has a reasonable reputation in relation to its DEVIL’S LAIR trade mark, although, as also noted by the Registrar's delegate, Mr Thompson, in relation to a similar case involving the same opponent, 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.  Additionally, sales figures provided in the evidence here are only from 1995.  Again, the only complete year's revenue given is that from 1998 to 1999 - which is outside the relevant time to establish a reputation in relation to a s.60 ground of opposition.  However, like Mr Thompson, having reviewed the opponent's evidence, I am prepared to accept that the DEVIL’S LAIR trade mark is moderately well-known among wine drinkers in Australia.

However, that reputation is not, in my opinion, of the kind which would lead to a "real tangible danger of deception or confusion occurring", as set out in the tests laid down in Southern Cross, supra, at 495. The test for deception or confusion was more recently dealt with in the judgment of Justice French in Registrar of Trade Marks v Woolworths Limited 45 IPR 411 (the WOOLWORTHS METRO case) at 426, where he said, in considering the phrase "likely to deceive or cause confusion":

The use of the word "likely" in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5 per Kitto J.

Notwithstanding the foregoing, I have already said that I do not consider that the applicant's trade mark is either substantially identical with, or deceptively similar to the opponent's mark.  Therefore, any discussion regarding the existence, or not, of a significant reputation for the applicant's trade marks which might lead to a "real tangible danger of (deception or confusion) occurring" would appear to be redundant.

Accordingly, I find that the opponent has also failed on this leg of its opposition.

Conclusion
I have found, as the Registrar's delegate, that the opponent has not been successful on either of the grounds on which it relied at the hearing.  Accordingly, I dismiss the opposition in total.  I direct that trade mark application number 749793 may proceed to registration, providing all of the appropriate fees have been paid.

Costs
There is no reason that the costs here should not follow the cause.  Consequently, I also direct that the opponent is to pay the applicant its costs in accordance with schedule 8 of the Trade Marks Regulations.  If required, as per the provisions of reg. 21.13, a Trade Marks officer appointed by the Registrar, will tax and certify those costs.

Ian Forno
Hearing Officer

16 July 2001