Team Building Holdings Pty Ltd v Noosa Brewing Company Pty Ltd
[2020] ATMO 167
•26 October 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by Team Building Holdings Pty Ltd to registration of trade mark application number 1883945 (class 25,32,35,40,43) – NOOSA BREWING CO. (Device - in the name of Noosa Brewing Company Pty Ltd
Delegate: M. Cooper Representation: Opponent: JT Gottschall of counsel instructed by NWA Legal Services
Applicant: M Evetts of counsel instructed by Omond & CoDecision: 2020 ATMO 167
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 41, 42(b), 44, 58A, 58, 60 and 62A grounds – no ground established – trade mark to proceed to registration.
Background
This matter concerns an opposition by Team Building Holdings Pty Ltd (‘Opponent’), under s 52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark detailed below in the name of Noosa Brewing Company Pty Ltd (‘Applicant’):
Application Number: 1883945
Trade Mark:
(‘the Trade Mark’)
Filing Date: 1 November 2017
Goods & Services:
Class 25: Apparel (clothing, footwear, headgear); Aprons (clothing); Articles of clothing made from wool; Articles of clothing made of fur; Articles of clothing made of hides; Articles of clothing made of imitation leather; Articles of clothing made of leather; Articles of clothing made of plush; Articles of water-resistant clothing; Articles of waterproof clothing; Articles of weatherproof clothing; Articles of windproof clothing; Athletic clothing; Babies' pants (clothing); Beach clothing; Belts (clothing); Boys' clothing; Cashmere clothing; Casual clothing; Chefs' clothing; Children's clothing; Clothing; Clothing for babies; Clothing for gymnastics; Clothing for sports; Clothing for surfing; Clothing for swimming; Clothing incorporating digital components; Clothing incorporating electronic sensors; Clothing of imitations of leather; Clothing of leather; Clothing of paper; Clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; Cyclists' clothing; Denims (clothing); Drawers (clothing); Girl's clothing; Gloves (clothing); Golf clothing (other than gloves); Headbands (clothing); Hoods (clothing); Infants' clothing; Jackets (clothing); Jerseys (clothing); Jump suits (clothing); Kerchiefs (clothing); Ladies clothing; Leather belts (clothing); Maternity clothing; Men's clothing; Motorists' clothing; Occupational clothing (other than for protection against accident or injury); Pants (clothing); Paper clothing; Ski clothing (other than for protection against injury); Thongs (clothing); Water-resistant clothing; Waterproof clothing; Weather resistant outer clothing; Weatherproof clothing (not specifically adapted for protection against accident or injury); Women's clothing; Woollen clothing
Class 32: Alcohol-free beer; Alcoholic beers; Beer; Beer wort; Beer-based cocktails; Bitter beer; Black beer; Dark Beer; De-alcoholised beer; Extracts of hops for making beer; Fruit beers; Ginger beer; Ginger beer (alcoholic); Ginger beer (non-alcoholic); Home brew kit concentrate of hopped wort for making beer; Low alcohol beer; Malt beer; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Non-alcoholic beers; Non-alcoholic beverages (except non-alcoholic beer); Pilsner beer; Root beer
Class 35: Intermediary business services relating to the commercialising of goods (wholesaling); Wholesaling of goods (by any means); Retailing of goods (by any means); Retailing of goods via a vending machine; Supermarket retailing
Class 40: Brewing of beer; Brewing services; Food and drink preservation; Food and drink processing (for others); Food preservation; Food processing (other than cooking); Food smoking; Preservation of food; Processing of cooked foods; Smoking of foodstuffs
Class 43: Arranging for the provision of food; Arranging of wedding receptions (food and drink); Charitable services, namely providing food and drink catering; Club services for the provision of food and drink; Coffee bar and coffee house services (provision of food and drink); Consultancy services relating to food; Consultation services relating to food; Country club services (provision of food, drink and temporary accommodation); Country clubs (providing food, drink and accommodation); Food and drink catering; Food cooking services; Hospitality services (food and drink); Night club services (provision of food and drink); Preparation of take-away and fast food; Providing food and drink; Provision of carry out foods and beverages; Restaurant services for the provision of fast food; Snack bars (provision of food and drink); Take away food services; Take out food and beverage services; Takeaway food and drink services; Restaurant services; Restaurants
(‘Goods and Services’)
The Trade Mark was examined and advertised as accepted for possible registration on 22 March 2018 in the Australian Official Journal of Trade Marks.
On 14 May 2018, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 12 June 2018, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 41, 42(b), 44, 58A, 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 7 August 2018.
On 28 November 2019, the Applicant requested a hearing. I heard the matter by videoconference on 4 August 2020 as a delegate of the Registrar of Trade Marks. M Evatts of counsel appeared for the Applicant. JT Gottschall of counsel appeared for the Opponent.
Evidence
Evidence in Support was filed by the Opponent on 15 November 2018. It comprised the statutory declaration of David Anthony Rogalsky, the Opponent’s director, dated 12 November 2018 with Exhibits DAR-1 to DAR-27 (‘first Rogalsky declaration’).
The Applicant’s Evidence in Answer was filed on 25 February 2019 comprising the statutory declaration of Craig Ryan Masterton, the Applicant’s director, dated 22 February 2019 with Annexures CM-1 to CM-14 (‘Masterton declaration’).
The Opponent’s Evidence in Reply was filed on 18 July 2019 and comprised a further declaration by David Anthony Rogalsky, dated 18 July 2019 (‘second Rogalsky declaration’).
The Opponent and Applicant filed written submissions on 21 and 28 July 2020, respectively.
Evidence in Support
The Rogalsky declaration outlines the Opponent’s operations as a brewer and supplier of craft beer on a wholesale and retail basis, including in relation to ‘hospitality and related goods and services’. He advises that it has licensed its trade marks 1797454, 1843122 and 1844671 (‘the Opponent’s marks’) to the Noosa Beer & Noosa Brewing Company Pty Ltd (‘NBNBC’), of which he is also a director. Rogalsky also advises that the Opponent commenced construction of its Noosa business premises in June 2017 and started trading from its Noosa premises in January 2018. He states the Opponent has registered various domain names, business names and created and used social media pages incorporating the phrases ‘noosa beer’ or ‘noosa brewing’.
In relation to reputation, Rogalsky asserts that the Opponent’s marks and its common law marks[1] were promoted online through social media and he exhibits various screenshots of social media pages which are said to show they ‘had substantial numbers of people who followed or liked them by the end of October 2017.’ He notes instances of confusion (exhibits DAR-24 and 25) and states that the Applicant ought to have known when it applied to register the Trade Mark that it would infringe the Opponent’s trade mark rights. This awareness was said to be demonstrated by the fact of the Applicant’s rebranding to ‘Heads of Noosa’ (exhibit DAR-27).
[1] See paragraph 52.
Evidence in Answer
The Masterton declaration outlines the Applicant’s history including incorporation of the Noosa Brewing Co Pty Ltd and registration of associated domain names ‘noosabrewingco.com.au’ and ‘noosa.brewingco.com’ in 2014, and of ‘noosabrewingcompany.com.au’ in 2016. He further notes his 2014 application for the word trade mark ‘Noosa Brewing Co’.[2] Masterton describes the Applicant’s activities in establishing its business such as the steps taken to purchase equipment, make the council application and build the brewery and annexes associated documents. Masterton observes that the Opponent did not commence using ‘Noosa Brewing Co’ on its social media until April 2018, having previously used ‘Noosa Beer Co.’ He also notes other trade marks on the Register which incorporate ‘beer’ or ‘brewing’ with a descriptive location.
[2] Trade Mark 1648024 which lapsed on 23 March 2016 following an adverse examination report.
Evidence in Reply
The second Rogalsky declaration makes several legal submissions about the content of the Masterton declaration asserting generally that the Applicant’s evidence does not substantiate Trade Mark use. Relevantly he states he was not aware of the commencement of the Applicant’s business until early 2019 when it commenced operation under its rebrand ‘Heads of Noosa’.
Grounds of Opposition and Onus
The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[3] As noted above, the Opposition grounds claimed in the SGP are those under sections 41, 42(b), 44, 58A, 58, 60 and 62A of the Act.
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6]-[26].
The time at which a ground of opposition must be established is the date of filing of the application for registration[4]. In this case that date is 1 November 2017 (‘the relevant date’, also referred to as the priority date in ss 44 and 60).
Consideration and reasons
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
Section 41
Section 41 relevantly provides as follows:
Trade mark not distinguishing applicant's goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Therefore, the Trade Mark must be rejected if it is not capable of distinguishing the Applicant’s designated Goods and Services from the goods and services of other persons.
In its SGP the Opponent particularised this ground as follows:
The trade mark application no. 1883945 (the Opposed Mark) is to be used in connection with beer to be brewed in the area of Noosa Heads, in Queensland. The Opposed Mark is descriptive and is not inherently adapted to distinguish or is not sufficiently inherently adapted to distinguish the designated goods and services from the goods and services of other persons. The sign of the Opposed Mark had not been used or had not been used in any way that might make it distinctive. The other circumstances relevant to the Opposed Application include the authorised use of the Opponent's Marks and the Opponent's related marks before and after the priority date of the Opposed Mark.
In submissions, referring to the s 41 ground, the Opponent contended the Trade Mark is not to any extent inherently adapted to distinguish the Goods and Services, doing no more than describing the product and the geographical location. It was said to convey an ordinary signification such that other traders would wish to use it, as reflected by the Opponent’s marks. It submitted that there is no demonstrated use of it before the priority date or any use that might cause the Trade Mark to have become distinctive. Seeking to distinguish the various authorities relied on by the Applicant, it was noted that they all predated the s 41 amendments.
The Applicant submitted that, taken as a whole, the Trade Mark is ‘plainly’ adapted to distinguish and the Opponent’s submissions impermissibly dissect the Trade Mark into individual elements. The Applicant contended that the device is eye catching and a prominent feature of the Trade Mark which has a ‘high level of abstraction and stylization.’ In considering its ordinary signification to persons concerned with the Goods and Services, the Applicant denied that the image would be identified as the Noosa headland. In the alternative, it submitted that s 41(4) applied.
Section 33 of the Act requires that the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it. That is, “a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists”.[5]
[5] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 [16].
As frequently quoted, ‘inherent adaptation to distinguish’ is assessed
By reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of the words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[6]
[6] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 515.
The ongoing relevance of this earlier case law is confirmed by the explanatory memorandum to the legislation which introduced the current section 41 as follows:
The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.[7]
[7] As the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 explained, at page 146.
In relation to Note 1 of s 41, I am not satisfied it applies to the Trade Mark because, as a complex composite mark, it does not consist wholly of a sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of the Goods or Services.
Regarding composite marks, Dodds-Streeton J said inFry Consulting:
As Diamond T establishes, a combination mark should not be dissected into its individual elements in the context of assessing the distinctiveness of the totality, so even a collection of entirely commonplace elements could achieve distinction to the requisite degree… the reasoning did not depend on the novelty of combining the elements selected, but on the distinctive impression created. If that result be accomplished, it is irrelevant that the elements themselves are not distinctive and that it is not novel to combine elements of that kind. [8]
[8] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 [81].
Despite the Opponent’s contention that the Trade Mark includes an obvious representation of the Noosa headland, I do not consider that it is such ‘a clear or obvious depiction’[9] or that the average Australian consumer of the Goods and Services would necessarily make that connection. Its black and white representation is highly stylised and quite abstract and, to the average consumer of the broad-ranging Goods and Services, which would concern most Australian consumers, it has no obvious geographical indication. Although the words are simply descriptive of a brewing company in Noosa, when considered as a whole, I consider the placement of the words on the periphery of the mark, enclosed in the two circles, with the predominant abstract image, ‘create, as a totality, a distinctive impression notwithstanding the descriptive nature of some constituents’[10].
[9] Ibid [82].
[10] Ibid [83].
Given the overall impression created by the combination of features in the Trade Mark, I am not satisfied it possesses ‘the ordinary association and significance to the degree which would deprive it of inherent capacity to distinguish.’[11] Notwithstanding the distinctiveness or otherwise of the individual parts, I am not persuaded that other traders, not activated by improper motives, would wish to use the same combination.
[11] Ibid [83].
In coming to this conclusion, I have been cognisant of the presumption of registrability which is to be applied in favour of the Applicant.[12] The grounds of opposition under s 41 are therefore not established.
[12] See Pfizer Products Inc v Karam (2006) 237 ALR 787 ; 70 IPR 599 ; [2006] FCA 1663 [8].
Section 44
Section 44 of the Act provides:
44. 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.
Note 1: For deceptively similar see section 10.
(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) it 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.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Therefore, in order to establish the section 44 ground of opposition under subsections 44(1) and 44(2), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark issubstantially identicalwith or deceptively similar to at least one of the Opponent’s nominated trade marks; is in respect of similar goods or closely related services (s.44(1)(a)(i)) and/or similar services or closely related goods (s.44(2)(a)(i)), and has a priority date not earlier than that of the other trade marks (s.44(1)(b) and s.44(2)(b)).
The Opponent particularised this ground as follows:
The Opposed Mark is substantially identical or deceptively similar to trade mark no's. 1797454, 1843122, and 1844671 (Opponent's Marks) which each have a priority date earlier than the Opposed Mark and are registered in respect of the same, similar or closely related goods and services as are specified for the Opposed Mark. The other circumstances relevant to the Opposed Mark include the authorised use of the Opponent's Marks and the Opponent's related marks before and after the priority date of the Opposed Mark
Each of the Opponent’s marks have an earlier priority date than the Trade Mark, therefore s 44(1)(b) and s 44(2)(b) are satisfied.
In relation to the similarity between the designated goods and services, the Trade Mark’s class 25 Goods clearly encompass the class 25 Goods in the Opponent’s marks 1797454 and 1844671. The Trade Mark’s class 32, 35 and 40 Goods and Services are the same as those in the Opponent’s mark 1843122. The class 43 Services are largely the same or clearly similar[13]. It follows that the Goods and Services of the Trade Mark are in respect of similar goods and services as those of the Opponent’s marks.
[13] See Annexure A.
Substantially identical
The Opponent submitted that the marks are substantially identical, specifically that the Trade Mark’s ‘graphic elements ... are de minimis relative to the dominant words of the marks that are substantially the same.’ It contended that the graphic element merely depicts the Noosa headland and should be discounted in the comparison. The Applicant submitted that there are undeniable and substantial dissimilarities between the Trade Mark and the Opponent’s marks.
In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:
In considering whether marks are substantially identical they should, I think, 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.[14]
[14] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’) (1963) 109 CLR 407, 415.
The Opponent’s marks and the Trade Mark are set out side by side below:
The Trade Mark Opponent marks Classes
TM no. 179745425,32,33,35,40
TM no. 184467125
TM no. 184312232,33,35,40,43
Self-evidently the marks contain the word “Noosa” and a second word referring (either directly or to the manner of making) to “beer”, those words being partially descriptive of the respective businesses. That is, on the evidence, they both sell or brew beer (among several other things) to consumers in Noosa (and elsewhere). In that context the words should be largely discounted when comparing the marks[15]. Therefore, when considered as a whole, on a side by side basis, having somewhat discounted the shared, descriptive words, the differences between the marks are apparent. They are of different shapes; the text is in different fonts/style, differently presented and they have different images. Overall, on a side by side comparison, I consider an impression of dissimilarity emerges such that the compared marks cannot be considered ‘substantially identical’.
[15] Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39 [55]-[57]; Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd [2004] FCAFC 201; (2004) 63 IPR 38 [40]; Scotch Whisky Assn v De Witt (2007) IPR 382; [2007] FCA 1649.
Deceptively similar
Section 10 of the Act defines deceptive similarity as follows:
Section 10 - Definition of deceptively similar
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 assessing trade marks for deceptive similarity, Windeyer J said in Shell:
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 television exhibitions. [16]
[16] Shell, above n 12.
This assessment is to be made by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class/es of goods are sold or services provided.[17] A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.[18] A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods] come from the same source.’[19] The use to be considered is notional use.[20]
[17] Australian Woollen Mills v F S Walton and Co Ltd (‘Australian Woollen Mills’) (1937) 58 CLR 641, 658.
[18] Ibid.; Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) (1999) 93 FCR 365; [1999] FCA 1020 [50].
[19] Ibid (‘Woolworths’).
[20] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353, 362; [1973] HCA 43.
The Trade Mark covers a plethora of Goods and Services which, so far as can be determined on the evidence, will be sold and provided on a wholesale and retail basis in Australia. In the absence of any persuasive evidence to the contrary, notionally, the acquirers of the Goods and Services will be the average Australian consumer who buys or is otherwise concerned with the sale and/or purchase of apparel, beverages, food and associated services. It follows that, having regard to what the Applicant can do if registration is obtained, that is, the use to which the Applicant can properly put its mark, it will be selling products and delivering services bearing the Trade Mark in the same types of stores to the same types of Australian consumers as the Opponent.
In estimating the effect or impression produced on the mind of those potential consumers of the Goods and Services, the Full Federal Court commented as follows:
The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[21]
[21]Starr Partners Pty Ltd v Dev Prem Pty Ltd [2007] FCAFC 42 [22].
Marks 1844671 and 1843122 (‘the Land & Sea marks’)
In relation to the Opponent’s registered marks 1844671 and 1843122, they are obviously significantly different visually and aurally to the Trade Mark. The words ‘LAND & SEA’ and associated images of the mountain and sea, the scales with inverted legs and a palm tree, are prominent and striking. They also contain the words ‘Est. 19 4567’. Trade Mark 1843122 also contains the words ‘No Bad Days’. As noted by the Applicant, the use of ‘Noosa Beer Co’ in these marks is ‘barely discernable’ and it is the visually prominent ‘Land & Sea’ and associated visual elements that operate to denote the origin of the Opponent’s goods and services and would be the most likely point of verbal reference or visual recall. Viewed as wholes, the points of dissimilarity between the LAND & SEA marks and the Trade Mark are many and I am not satisfied that a consumer with an imperfect recollection of the Land & Sea marks is likely to make any connection between them and the Trade Mark.
Mark 1797454 (‘the 454 mark’)
The Trade Mark and the 454 mark also share the common element “Noosa”. The other words, ‘Brewery Co’ and ‘Beer Company’, are similar but essentially descriptive words (given the nature of the respective goods and services) that can be discounted in comparing the whole marks[22]. I have had regard to the Opponent’s reference to the comments in Re Application by Woodland (‘Woodland’) as follows:
Ordering a beer over a bar or in a bottle shop where one does not alight from the car, the beer is invariably requested by reference to the word or words that form part of a trade mark- not by reference to the device components that may be part of the trade mark. Thus in relation to goods or services ordered in this manner, the words within a trade mark are of primary importance in assessing whether trade marks are similar or not.[23]
[22] See above n 13.
[23] (1999) 47 IPR 365 [371].
I accept this may be correct in the particular circumstance, however, in assessing the notional use of the marks, there is nothing in the evidence that indicates or demonstrates the products will only be ordered verbally. On the contrary, the Goods and Services include apparel, wholesale sales, supermarket retailing, restaurant services, home brewing, coffee house and restaurant services, and many others which, notionally considered, involve a multitude of situations which will not involve verbally ordering a beer. Even if notional use considerations are confined to beer, it also is purchased without any verbal request, for example, by a customer choosing it from display in a supermarket bottle shop or liquor store, or online. In a wholesale environment the goods ordered are likely to be the subject of some sort of written or electronically recorded arrangement. In such situations the visual effect takes on greater significance in assessing a consumer’s recollection.
In addition, in Woodland, both the marks contained images of a blue heeler and a glass of beer, leading the delegate to find that ‘[t]he visual elements in common go to reinforcing the similarity of the trade marks.’ [24] Those significant visual similarities are not present in this opposition. The Trade Mark is presented in two circles, the 454 mark is square. ‘NOOSA BEER” is prominent in the 454 mark as are the beach umbrella and deck chair. The overall impression left with the consumer appears to be that of relaxing in a shaded deck chair on the beach with a beer. In contrast, the Trade Mark, is highly stylised and more abstract and subtle in its visual presentation. As noted above, the evidence does not support the inference that Australian consumers and traders would recognise it as ‘merely an outline of the Noosa coastline’. The image constituents are not so recorded in the Register. In assessing the nature of the consumer’s ‘imperfect recollection’ I therefore give considerable weight to the significant points of visual dissimilarity between the 454 mark and the Trade Mark.[25] Aside from the common word ‘Noosa’ which is but one of many prominent elements and very differently presented visually, nothing in the Trade Mark coincides visually or conceptually with the 454 mark and I consider it unlikely that any Australian consumer, on encountering the Trade Mark and having an imperfect recollection of the 454 mark, would be deceived or confused as to a connection between the two.
[24] Ibid [371]-[372].
[25] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Limited [2004] FCAFC 196 [102].
I note however that evidence of actual cases of deception or confusion should be given ‘considerable’ weight.[26] The Opponent exhibited three examples. One is an email dated 12 June 2018 with the subject line ‘your name is a little confusing’ and in the body of the email ‘I took a picture of the tank out front that says Noosa Beer Co when looking for that on Trip advisor it came up as another company which is opening soon apparently..’. I note that this query does not indicate which ‘other company’ was retrieved. Further the Applicant does not use ‘Noosa Beer Company’ and it had already opened at that date, so I am not persuaded that this comment demonstrates confusion between use of the Trade Mark and the Opponent’s marks. Further Facebook comments state ‘What…? I am so confused! Would the real Noosa brewing company please stand up’ and ‘Hey guys. To save me the confusion, which one are you?’ Below this comment are 6 trade marks, three of which belong to the Opponent, one is the Trade Mark the other two appear to be other Noosa beer producers. In this context I note the comments of Stephen J who said of a plaintiff’s claim to exclusive rights in the descriptive phrase “Building Information Centre”:
The use by the [plaintiff] of the three descriptive words was no doubt convenient. It thereby acquired a name which at the same time very clearly described its activities. ...
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public...
The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[27]
[26] Australian Woollen Mills, 658.
[27] Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216, 229. Although a case concerning alleged misleading or deceptive conduct and passing off, the comments are relevant in this context.
I consider these findings apposite to the circumstances of this opposition. ‘Noosa Brewing Company’ is apt for normal description of a business which sells or brews beer in or from Noosa. Any confusion that has arisen is not because of the Trade Mark’s deceptive similarity to the Opponent’s marks but because the Opponent has later chosen to adopt the same or similar, descriptive trade name. Therefore, I am not satisfied that any deception or confusion that might arise would be because of any deceptive similarity between the Trade Mark and the Opponent’s marks but would be due to the adoption of ‘an eloquently descriptive trade name’.[28]
[28] Ibid.
Taking into account the striking visual differences between the Trade Mark and the Opponent’s marks, the (minor) aural differences, and the context and character of the likely purchasers of the goods and services, I do not consider that the Trade Mark ‘so nearly’ resembles any of the Opponent’s marks in any material way such that it would be ‘likely to deceive or cause confusion’ among ‘persons of ordinary intelligence and memory’, even allowing for imperfect recollection. For these reasons I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s marks as listed above within the meaning of s.44 (1) and (2).
It follows that the Opponent has failed to establish this ground of opposition under s.44. Given this finding, it is unnecessary to address s 58A.
Section 58
Section 58 of the Act provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Having regard to s 58, the Full Federal Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd identified the relevant principles.[29] To succeed on this opposition ground, an opponent needs to establish that there is another mark that is identical or substantially identical to the applicant’s mark, that this mark has been used in respect of goods and services that are ‘the same kind of thing’ as the trade mark and that another person/entity has the earlier claim to ownership based on its use of its mark/s before the filing of an applicant’s mark or any use of it by the applicant as a trade mark.
[29] (2017) 251 FCR 379, 390-1 [50] (‘Pham Global’).
As previously noted, I am not satisfied that the Trade Mark is substantially identical to the Opponent’s marks. The Opponent also claimed in the SGP that ‘NBNBC has also used related marks, being the signs NOOSA BEER, NOOSA BEER CO., THE NOOSA BEER COMPANY, NOOSA BREWING COMPANY, and NOOSA BEER & NOOSA BREWING COMPANY in connection with these goods and services’. In submissions the Opponent clarified that it relied on the Opponent’s use of the words NOOSA BREWING COMPANY since early October 2016 as an unregistered trade mark to establish its claim to prior ownership of the Trade Mark. Whatever of the Opponent’s word combinations is considered, the appropriate comparison in assessing whether trade marks are substantially identical is a side by side comparison. Given the striking abstract stylisation of the Trade Mark, I am not satisfied that it is substantially identical to any of the Opponent’s word combinations, despite the similarity in the descriptive words. Given this, it is unnecessary to consider the other elements of s 58.
It follows that I am not satisfied the Opponent has demonstrated prior use of the Trade Mark (or a mark substantially identical to the Trade Mark) such as to defeat the Applicant’s claim to ownership of the Trade Mark. The s 58 opposition ground is not established.
Section 60
Section 60 provides as follows:
Trade mark similar to trade mark that has acquired a reputation in Australia
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.
To establish the s 60 ground of opposition, an opponent must demonstrate that, at the relevant date, there was another trade mark that had acquired a reputation in Australia and because of that reputation, use of the trade mark sought to be registered would be likely to deceive or cause confusion.
In its SGP the Opponent claimed in relation to s 60:
By reason of the matters set out in respect of section 58, the Opponent had acquired valuable reputation and goodwill in the Opponent's Marks and the cited signs before the priority date and since the priority date and the use of the Opposed Mark would be likely to deceive or cause confusion
Reputation
Kenny J’s remarks in McCormick & Co Inc v McCormick[30] in relation to s 60 and the measurement of reputation are relevant in this respect:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.
[30] (2000) 51 IPR 102; [2000] AIPC 91-637; [2000] FCA 1335 [127].
In addition, the reputation required to be demonstrated must be one of which a considerable number of people in the relevant market would be aware.[31]
[31] Renaud Cointreau v Cordon Bleu International Ltd [2001] FCA 1170 [75].
The Opponent asserted reputation in its registered trade marks and common law ‘brand names’ NOOSA BEER, NOOSA BREWING COMPANY, THE NOOSA BEER COMPANY, NOOSABEER and NOOSA BEER CO. It was submitted that ‘the dominant textual elements’ NOOSA BEER and NOOSA BREWING had become recognisable to people in relation to the Goods and Services, particularly in the Noosa area. It relied almost entirely on website and social media use to demonstrate its reputation in its marks. Sales figures were also provided.
The Applicant denied the Opponent had established any reputation in NOOSA BEER or NOOSA BREWING as trade marks, nor the ‘textual and graphical elements’ of any mark. It further noted that the Opponent’s evidence in this regard is confined to domain name registrations and 3 Facebook pages which show ‘miniscule’ numbers of likes and followers.
As correctly submitted by the Applicant, reputation is assessed in relation to specific marks, not their ‘textual elements’. In addition, I make the following observations regarding the Opponent’s evidence in this regard:
· The Opponent’s Facebook and Instagram followers, and ‘likes’ received, are relatively low in the context of the notionally large Australian market for the Goods and Services (see paragraph 42). [32]
· Several screen prints post-date the relevant date.
· The Rogalsky declaration states that the Opponent (through its licensee) did not commence commercial beer brewing and sales until September 2017. Its licence to sell meals and liquor was granted in December 2017 and its retail supply of beer commenced in January 2018, i.e. after the relevant date.[33]
· The evidence indicates that the Opponent’s goods were mainly promoted on the ‘Land & Sea Brewery’ Facebook pages. The beer cans and other merchandise display ‘Land & Sea’ marks.
· A Facebook comment dated 4 November 2017 stated ‘Any chance you could get the Noosaville Dan Murphy’s to stock it? I asked today and got confused looks from employees who have never heard of it’[34]
· The very modest beer sales listed between September and December 2017 do not demonstrate under or by reference to which trade marks they were made.
[32] None of the various social media pages exhibited for ‘Noosa Beer’ ‘Noosa Brewing Co.’ ‘Noosa Brewing Company’ ‘Noosa Beer Co’, indicated likes and/or followers of more than 500 people. The ‘noosabeer’ Instagram page had 1080 followers. Other exhibits post-date the relevant date.
[33] Rogalsky declaration, paragraphs 29-31.
[34] Rogalsky declaration, Exhibit DAR-12, p107.
Overall, the Opponent’s evidence indicated low sales and relatively low social media recognition of the Opponent’s registered and common law trade marks. The Opponent may have had a modest reputation with Australian consumers in Noosa in respect of its ‘Land & Sea’ branded beer at the priority date, however this is insufficient in the context of this opposition to enliven s.60. Consequently I am not satisfied the evidence establishes or enables an inference to be drawn that, at the relevant date, the Opponent’s marks (or its common law marks) had acquired a reputation among actual or potential Australian consumers of the opposed Goods and Services for the purposes of s.60(a). In the circumstances it is unnecessary to consider s.60(b).
It follows that the Opponent has not established the s.60 ground of opposition.
Section 42
Section 42(b) is reproduced below:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
The onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[35]
[35] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
The s 42 ground was particularised in the SGP as follows:
By reason of the matters set out in respect of section 60, the use of the Opposed Mark would amount to conduct that is likely to mislead or deceive in contravention of the Australian Consumer Law (section 18 of Schedule 2 of the Competition and Consumer Act 2010) and/or constitute the tort of passing off.
The Opponent has failed to establish a ground of opposition under s 60. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is more stringent than that for deception or confusion under s 60,[36] the Opponent has also failed to establish that the use of the Trade Mark would be contrary to s 18 of the ACL.[37] Where trade mark use does not contravene 18 of the ACL, it will not constitute passing off.[38]
[36] See, eg: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
[37] The submissions also alleged a contravention of s 29(1)(g) of the ACL however this was not particularised in the SGP and, absent any submissions relating to its admission, it is not appropriate to consider it.
[38] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 [40].
For these reasons I am not satisfied that use of the Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish the s 42 ground of opposition.
Section 62A
The Opponent’s SGP particularises this ground as follows:
NBNBC conducted business and the Applicant proposes to conduct business in the Noosa Heads area of Queensland. By reason of the matters set out in respect of sections 58, 60 and 42, it was evident at the priority date that the use of the Opposed Mark would be likely to be misleading or cause confusion and/or harm the Opponents goodwill or reputation.
Section 62A was considered in Fry Consulting where Dodds-Streeton J relevantly said:
It is clear that bad faith for the purposes of s 62A must be at the time of the application in this case (22 December 2006) and must relate to the making of the subject of that application… Further, the onus of proving bad faith rests on the Opponents. While the seriousness of an allegation of bad faith that ‘impugns the character of an individual or collective character of a business...’ requires correspondingly cogent evidence … the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.[39]
[39]Above, n 7, [165]–[167].
And after examining the various UK and Australian authorities Dodds-Streeton J concluded:
The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[40]
[40] Ibid.
The Opponent contends that the Applicant’s rebranding demonstrates its consciousness that the Trade Mark would infringe the Opponent’s marks and enables an inference that it deliberately pursued a course it knew to be legally wrong when it applied for Trade Mark registration. Such conduct is said to demonstrate a falling short of acceptable standards and to constitute bad faith. The Applicant submits that the Opponent’s contentions in this regard are untenable in face of the evidence demonstrating the Applicant first coined and used the Trade Mark and its ongoing and continuous steps preparatory to its use.
The Masterton declaration establishes that the Applicant was incorporated on 18 September 2014 and its domain names ‘noosabrewingco.com.au’ and ‘noosabrewingco.com’ were registered on 14 May 2014. As previously noted, (paragraph 11), Masterton applied for the word trade mark ‘Noosa Brewing Company’ on 19 September 2014. Various other annexures demonstrate the Applicant’s ongoing activities since then to commence its business under the Noosa Brewing name, before any evidence of the Opponent’s adoption of its Noosa Beer branding. In this context, the Applicant’s later application to register the words it had been using in its business since 2014 with additional branding elements (i.e. the Trade Mark) cannot reasonably be characterised as constituting a ‘falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons’ or of an ‘unscrupulous, underhand or unconscientious character’.[41]
[41] Ibid.
There is no cogent evidence before me which establishes that the Applicant’s conduct in applying to register the Trade Mark might be said to satisfy s 62A. It follows that the s 62A ground of opposition has not been established.
Decision
Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, 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.
The Opponent has failed to establish any of the grounds of opposition nominated in the SGP.
The Trade Mark may accordingly proceed to registration after 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 either the appeal is withdrawn or a court so orders.
Costs
Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.
M. Cooper
Hearing Officer
Delegate of the Registrar of Trade Marks
26 October 2020ANNEXURE A
Opponent’s Trade Marks Goods and Services 1797454 Class 25: Apparel (clothing, footwear, headgear)
Class 32: Alcohol free beer; Alcoholic beers; Beer; Beer wort; Beer-based cocktails; Bitter beer; Black beer; Dark Beer; De-alcoholised beer; Extracts of hops for making beer; Fruit beers; Ginger beer; Ginger beer (alcoholic); Malt beer; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Non-alcoholic beers; Non-alcoholic beverages (except non-alcoholic beer); Pilsner beer; Root beer
Class 33: Alcoholic beverages (except beer); Alcoholic beverages (except beer) containing more than 1.15% of alcohol by volume; Alcoholic drinks (except beer) containing more than 1.15% of alcohol by volume; Carbonated beverages (alcoholic, except beers); Pre-mixed alcoholic beverages, other than beer-based; Fermented liquors; Liquors (alcoholic beverages)
Class 35: Intermediary business services relating to the commercialising of goods (wholesaling); Wholesaling of goods (by any means); Convenience store retailing; Hypermarket retailing; Retailing of goods (by any means); Supermarket retailing
Class 40: Brewing of beer; Brewing services; Winemaking services1843122 Class 32: Alcohol-free beer; Alcohol-free beverages; Alcoholic beers; De-alcoholised beer; Ginger beer (alcoholic); Ginger beer (non-alcoholic); Low alcohol beer; Non-alcoholic beers; Non-alcoholic beverages (except non-alcoholic beer); Beer; Beer wort; Beer-based cocktails; Bitter beer; Black beer; Dark Beer; Extracts of hops for making beer; Fruit beers; Ginger beer; Malt beer; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Pilsner beer; Root beer
Class 33: Alcohol for drinking; Alcoholic beverages (except beer); Alcoholic mixed drinks; Carbonated beverages (alcoholic, except beers); Distilled alcoholic beverages; Liquors (alcoholic beverages); Alcoholic beverages containing fruit; Alcoholic beverages containing wine; Fermented liquors
Class 35:Intermediary business services relating to the commercialising of goods (wholesaling); Wholesaling of goods (by any means); Convenience store retailing; Hypermarket retailing; Retailing of goods (by any means); Supermarket retailing; the foregoing apply to all types of alcoholic and non-alcoholic beverages
Class 40: Brewing of beer; Brewing services
Class 43: Arranging for the provision of drink; Consultancy, advisory and information services in relation to the provision of food and drink; Hospitality services (food and drink); Providing food and drink; Hotel services; Restaurant services; Restaurants; Cafes; Bar services; Inn keeping (bar, restaurant and accommodation); Wine bar services1844671 Class 25: Apparel (clothing, footwear, headgear)
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