Tequila Cuervo, S.A. De C.V. v Fabrica De Aguardientes De Agave La Mexicana S.A.de C.V

[2012] ATMO 111

TRADE MARKS ACT 1995

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

Re:Opposition by Tequila Cuervo, S.A. DE C.V. to registration of trade mark application 1362007(33)  - TEQUILA SAN JOSE DE LA PAZ & DEVICE  -  in the name of Fabrica de Aguardientes de Agave la Mexicana S.A.de C.V.

Delegate:

Debrett Lyons

Representation:

Opponent: Mr James Maxwell of Peter Maxwell & Associates, Patent & Trade Mark Attorneys

Applicant: Not present nor represented

Decision:

2012 ATMO 111

Section 52 opposition to registration: section 44 established; trade marks deceptively similar; opposition successful.

Costs awarded against Applicant.

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Fabrica de Aguardientes de Agave la Mexicana S.A. de C.V.  (‘the Applicant’) details of which appear below:

Application No: 1362007

Priority Date:  18 May 2010

Goods:  Class 33: Tequila

Trade Mark:  

(‘the Trade Mark’)

Endorsement:Registration shall give no right to the exclusive use of the    word TEQUILA.

1. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 16 September 2010. 

2. On 16 December 2010, Tequila Cuervo, S.A. DE C.V., (‘the Opponent’) filed Notice of Opposition to the registration of the Trade Mark.  The Opponent later filed and served Evidence-in-Support of the Opposition which consists of an Affidavit by Lawrence E. Abelman, sworn 7 September 2011, together with Exhibits LEA-1 to LEA-3.  The Applicant has not filed any Evidence-in-Answer.

3. The Opponent asked to be heard and, acting as a delegate of the Registrar of Trade Marks in Sydney on 17 August 2012, I took oral and written submissions from James Maxwell of Peter Maxwell & Associates, Patent & Trade Mark Attorneys.  There was no appearance by or on behalf of the Applicant, nor any written representations made on its behalf.

Grounds of opposition and Onus

1. The Notice is couched in broad terms but it was only those grounds dependent on sections 44 and 60 which were pressed by the Opponent at the hearing. For the sake of completeness I find that the remaining grounds listed in the Notice have not been established.

2. The Opponent bears the onus of establishing one or other ground of opposition on the balance of probabilities.[1]

Reasoning

[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Section 44

1. Section 44 of the Act relevantly provides:

   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.

2. The Opponent relies in its submissions upon two of its registrations, nos. 636506 for the word trade mark JOSE with a priority date of 1 August 1994 and registered in class 33 for “Alcoholic beverages, excluding wines and alcoholic beverages containing wines”, and 1240728 with a priority date of 15 May 2008, for goods including “Alcoholic beverages; alcoholic cocktail mixes; tequila”, for the following trade mark:-

1. As the priority date of those registrations is earlier than that of the opposed application, and the goods are identical, and it is not argued by the Opponent that the compared trade marks are substantially identical, it falls to be decided whether the trade marks of the parties are deceptively similar.

2. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 Windeyer J said at [13]:

   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. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "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" (1937) 58 CLR, at p 658.

3. The comparison is to take place in the context of the marketplace for the particular goods.  In the case of In Re Application by Pianotist Company (1906) 1A IPR 379 at 380; 23 RPC 774 at 777 Parker J said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

4. The process of assessing whether trade marks are deceptively similar to each other is informed by the factors discussed in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 by French J at [50]:

   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] HCA 43; (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.”

5. Concerning the public’s imperfect collection of a trade mark, in Rysta Ltd’s Application (1943) 60 RPC 87, Luxmoore LJ said in full (at 108-109):

   ‘The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.’

6. In Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [57] Greenwood J said of imperfect recollection:

   The question of imperfect recollection therefore is likely to be informed by, in part at least, the extent to which phonetic similarities arise and whether some part of the registered trade mark reflects an essential feature adopted by the applicant for the new mark. Two things inform imperfect recollection in transactions in which goods are bought and sold in oral transactions apart from broader contextual considerations. First, the degree of phonetic similarity is important. For example, in Berlei, the phonetic similarity was very significant as the phonetic pronunciation of the two marks exhibited the sounds Burley and Barley and in Rysta Ltd’s Application, the similarity was between Rysta and Aristocrat, with Viscount Maugham accepting Luxmoore LJ’s view of a tendency in speech to slur a word beginning with “a” resulting in a phonetic similarity of Rysta and Ristoc. Secondly, a part of the registered trade mark may be shown to be such an essential feature that it dominates the immediacy of recollection and may give rise to confusion.

7. The Opponent’s written submissions included the following:

   Registration No. 636,506 is simply for the mark JOSE.  The Opponent submits that a person having an imperfect recollection of that mark, on encountering the Applicant’s trade mark would entertain a reasonable doubt that that product came from the same source as the Opponent’s products. … In considering the Applicant’s trade mark in light of the Opponent’s registration for JOSE, we submit that JOSE remains a memorable and essential feature of the Applicant’s trade mark.  The additional material is not sufficient to detract from this similarity, especially when considering the doctrine of imperfect recollection.

   Whilst the Applicant’s mark is indeed stylised, the main identifying element of it is the word JOSE.  Whilst the Applicant’s trade mark contains additional word elements, those words are descriptive and carry little weight in distinguishing the trade mark.

   The word TEQUILA is descriptive whilst the word SAN is a non distinctive word meaning Saint.  The other word elements namely, DE LA PAZ, are very small and hardly recognisable.  We therefore submit that the Opponent’s Registration No. 636,506 for JOSE is contained in full in the Applicant’s trade mark and retains its meaning and identity within that cited mark … When the notion of imperfect recollection is also considered, we submit that confusion is likely to occur in the marketplace regarding the goods provided under these trade marks. 

   There is a real and tangible danger that members of the general public who had an imperfect recollection of JOSE on encountering a bottle of tequila bearing SAN JOSE would be confused into believing that there is some connection between the trade origin of the two products.

   …

   Additionally, The Opponent also submits that the Applicant’s trade mark is deceptively similar to its prior Registration No. 1,240,728.

   Whilst we submit that the side by side comparison is not appropriate in assessing deceptive similarity, the respective trade marks are set out below:

   
       

   Again, we submit that a consumer having an imperfect recollection of the trade mark which is the subject of Registration No. 1,240,728 on encountering a tequila bottle bearing the Applicant’s trade mark, would be confused or deceived into believing there is a connection between the trade origin of the respective goods. … Both trade marks contain:-

   
   

   (I)       a representation of agave plants from which tequila is derived;

   
   

   (II)      an oval inset which contains a representation of an old building;

   
   

   (III)     wording in the form of a banner beneath the oval device   containing the building;

   
   

   (IV)     words in very similar fonts;         

   
   

   (V)      a border with a line surrounding a label around it;

   
   

   (VI)     JOSE featuring prominently;

   
   

   (VII)    the descriptive word TEQUILA above SAN JOSE or JOSE                  CUERVO respectively;

   
   

   (VIII)   the words DE LA; and

   
   

   (IX)     representations of workers

   Therefore, there are numerous overall similar elements and concepts.   A consumer having an imperfect recollection of these elements in the Opponent’s Registration No. 1,240,728, on encountering the Applicant’s trade mark featuring similar elements, and particularly the prominent use of JOSE, will be confused into believing that the respective products came from the same trade source and we therefore submit the trade marks are deceptively similar.  

   The tests for deceptive similarity clearly establish that all surrounding circumstances need to be taken into account. … a consumer looking to purchase a bottle of tequila will not generally take much care in selecting a product and would make only a cursory glance of the label.  Consumers having an imperfect recollection of the Opponent’s trade marks and its labels, on encountering a product bearing the Applicant’s trade mark could possibly take merely a cursory glance and purchase it assuming that it is somehow connected with the Opponent and its products due to the commonality of the JOSE element in the trade mark. 

1. I do not accept every one of those submissions, nor necessarily the argument for imperfect recollection based on what I would regard as a side-by-side comparison of the logo marks.  Nevertheless, there remains much to be said for the argument that, in spite of what at a glance might seem quite different trade marks, there is a significant risk of confusion.  The goods are identical.  Registration 636,506 is for the plain word mark JOSE.  The verbally distinctive part of the Trade Mark is the words SAN JOSE.  In my assessment, most ordinary Australian consumers of the relevant goods would know the word “san” to mean “saint” in Spanish, would know “Jose” to be a given name, and would probably know it to be the equivalent to the name “Joseph”.  Taking these essential features, the comparison is then SAN JOSE with JOSE, or SAINT JOSEPH with JOSEPH.

2. Moreover, at a perhaps more obvious level, the comparison is between a geographical placename best known in California, San Jose, and a word which may or may not be understood to be a geographical name. Given there is nothing else in the word mark JOSE to identify it as either a geographical name or a person’s name, there may be a risk of confusion based on imperfect recollection.

3. Additionally, I agree with the Opponent that the embellishments of the Trade Mark are largely non-distinctive and consist of either disclaimed material or of images directly connected with the goods.

4. Finally, I must take account of the surrounding circumstances in which the goods might be bought or sold. In that regard I find that there is every chance that the Applicants goods would be referred to as “San Jose” tequila or even “Jose” tequila were they referred to verbally and, if they are self-selected from the shelves of a liquor store, the Trade Mark would appear on a bottle and the Opponent is free to use the trade mark JOSE in any fair and normal way on a tequila bottle.

5. The Opponent has shown to my satisfaction that there is a significant risk of confusion and that the Trade Mark and the registered mark JOSE are deceptively similar. For these reasons the Opponent has established its ground under section 44 of the Act.

Decision

1. Subsection 55(1) of the Act provides:

   55Decision

   (1)Unless the proceedings are discontinued or dismissed, 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.

   Note:For limitations see section 6.

2. The Opponent has established a ground of opposition.

Costs

1. The Opponent has requested its costs. It is usual for costs to follow the event and as the Opponent has succeeded in establishing a ground of opposition, I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful Applicant.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

14 November 2012