The Lord Howe Island Brewery Holdings Pty Ltd v Lord Howe Island Brewing Co. Pty Ltd
[2025] ATMO 60
•19 March 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Lord Howe Island Holdings Pty Ltd to registration of trade mark application number 2143310 (classes 32, 33, 35, 40, 41 and 43) – Lord Howe Island Brewing Co. & Bird in shield device- in the name of Lord Howe Island Brewing Co. Pty Ltd
Delegate:
Anne Makrigiorgos
Representation:
Opponent: Gilbert Tsang of counsel instructed by By George Legal
Applicant: Sonia Stewart of counsel instructed by F B Rice Pty Ltd
Decision:
2025 ATMO 60
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 43 and 61 pursued – ground of opposition established under s 42(b) – registration of trade mark refused
Background
This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by The Lord Howe Island Holdings Pty Ltd (‘Opponent’) to registration of the following trade mark:
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).
Trade mark number: 2143310 (‘Application’)
Trade mark: (‘Trade Mark’)
Applicant: Lord Howe Island Brewing Co. Pty Ltd (‘Applicant’)
Filing Date: 15 December 2020 (‘Relevant Date’)
Specification: Class 32: Alcohol-free beer; Barley wine (beer); Beer; Beer-based cocktails; Extracts of hops for making beer; Ginger beer; Ginger beer (alcoholic); Homebrew kit concentrate of hopped wort for making beer; Low alcohol beer; Malt-containing beverages (beers); Non-alcoholic spirits; Cider, non-alcoholic; Seltzers (beverages); Alcohol-free wine; Non-alcoholic beverages
Class 33: Alcoholic beverages (except beer); Carbonated beverages (alcoholic, except beers); Spirits (beverages); Digesters (liqueurs and spirits); Low alcohol spirits; Perry; Hard seltzer (alcoholic); Wine; Drinks containing wine (wine predominating); Sparkling cider (alcoholic)
Class 35: Retailing of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Advertising; Sales promotion services; Organisation and management of customer loyalty programmes; The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods
Class 40: Brewing of beer; Preservation of drink; Food and drink processing (for others)
Class 41: Education services; Training; Entertainment; Hospitality services (entertainment)
Class 43: Hospitality services (accommodation); Hospitality services (food and drink); Providing food and drink; Provision of information relating to the preparation of food and drink
(‘Applicant’s Goods and/or Services’)
Endorsement: It is a condition of registration that the trade mark will only be used in respect of goods produced in or originating from LORD HOWE ISLAND (‘Endorsement’)
The Trade Mark was examined and advertised as accepted for possible registration on 21 March 2023.
On 10 May 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 8 June 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 3 August 2023.
The Opponent filed Evidence in Support (‘EIS’) on 13 November 2023. The Applicant filed Evidence in Answer (‘EIA’) on 15 February 2024. The Opponent filed Evidence in Reply (‘EIR’) on 22 April 2024.
The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. I heard this matter as a delegate of the Registrar of Trade Marks via video conference on 5 February 2025. Prior to the hearing, both parties filed a written summary of their submissions. At the hearing, Gilbert Tsang of counsel instructed by By George Legal (observed by Timmy Maxwell and Alastair Gillespie of the Opponent) appeared on behalf of the Opponent and Sonia Stewart of counsel (observed by Christian Young and Anthony Riddle of the Applicant) appeared on the Applicant’s behalf. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written and oral submissions of the parties.
Grounds and onus
The SGP nominates grounds of opposition under ss. 42(b), 43, 58, 60, 61 and 62A. However, the Opponent advised in its request to attend a hearing and confirmed in its written submissions that it was not pressing the ss 58, 60 or 62A grounds of opposition. I therefore treat these grounds as abandoned.
The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).
Evidence
The parties filed the following evidence in this matter[5]:
[5] The evidence was filed both in respect of the Application and application number 2143311 for the trade mark Lord Howe Island Distilling Co. & Leaf in shield device in the name of the Applicant which was also opposed by the Opponent. The opposition to application number 2143311 was subsequently withdrawn and that application is now registered. In terms of the evidence, for the sake of brevity and relevance and for the purposes of deciding this matter, I need not summarise all the evidence or their annexures. I have therefore only summarised evidence which refers to or is relevant to the Trade Mark and the ss 42(b), 43 and 61 grounds of opposition.
Declarant and Position
Date
Annexures or Exhibits
EIS
Timothy Maxwell, director of the Opponent (‘Maxwell 1’)
13 November 2023
TM-1 to TM-22 including Confidential TM-9
EIA
Anthony Riddle, co-founder of the Applicant (‘Riddle’)
15 February 2024
AR-1 to AR-38 including Confidential AR-27
EIR
Timothy Maxwell, (‘Maxwell 2’)
22 April 2024
TM-23 to TM-29
Matthew Jon Kirkegaard, corporate communications manager of Maranoa Regional Council (‘Kirkegaard’)
22 April 2024
Alistair Michael Gillespie, head brewer of the Opponent (‘Gillespie’)
22 April 2024
The Opponent
The Opponent was incorporated in 2019 and owns and operates the Lord Howe Island Brewery (‘Brewery’), a microbrewery on Lord Howe Island (‘Island’).
The Applicant
The Applicant is a brewing and distilling company established in May 2019 which is operated by Anthony Riddle and his business partner Christian Young. The Applicant’s range of beers from the period 2019 – 2021 are:
[6] and ,and,[7] and in 2023 include [8] (together ‘Applicant’s Beer’).
[6] Riddle [57] AR-19.
[7] Riddle [60] AR-21.
[8] Riddle [59] AR-20.
Summary of EIS
Maxwell 1 provides details of the lengthy process involved from 2014 to obtain consent to develop the Brewery and the challenges faced in fitting out and operating the Brewery. Permits, licenses and consents were required from, inter alia, the Crown as owner of the land on the Island, and the Lord Howe Island Board (‘Board’), which is charged with the care, control, and management of the Island and the affairs and trade of the Island. The Brewery opened on 28 February 2022.
Maxwell 1 provides information regarding the Applicant and its activities claiming that the Applicant does not brew beer on the Island providing an undated screenshot of the Applicant’s website at (‘Applicant’s Website’) of the Applicant’s beer:
.[9]
[9] Riddle [64].
Maxwell 1 states that a person cannot sell or distribute liquor on the Island other than in accordance with the approval of the Board and that the Board also owns and operates the Island’s liquor store (‘Board’s Liquor Store’).
Summary of EIA
Riddle describes the steps leading up the brewing of the Applicant’s Beer which included:
· delivering a business presentation in 2019 to the Board annexing a confidential redacted copy of a presentation where I note the Trade Mark appears on first page of presentation and under the heading ‘Product Launch’ it states ‘Brew Mainland’ and under ‘Business Strategy’ it refers to positioning the beer as the Island’s own.
· obtaining a business licence from the Board in September 2019 initially to forage native and endemic flowers and seeds on the Island for scientific research and produce off Island beverages namely beer for importation to the Island and then to:
Ø produce on Island beverages but not sell such beverages from the Island site.
Ø collect native and endemic flowers and seeds on the Island for human consumption.
Ø onsite sampling and tasting in conjunction with distilling demonstrations/how to-tours.
Ø allow mobile trading on the Island for guided talks to introduce guests to the Applicant’s products in remote locations on the island and the ability to sell those products in those locations but all liquor sold or distributed is to be purchased from the Board’s Liquor Store.
Riddle declares that the Applicant uses a number of mainland NSW breweries to contract brew the Applicant’s Beer and states that all of the Applicant’s Beer contain or are finished with botanicals which are endemic and or native to the Island and the branding of the Applicant’s Beer uses names of particular species of flora and fauna which are or were endemic to the Island, such as ‘Phasmid’ pale ale (native insect), ‘Double Header’ IPA (native fish), ‘Golden Whistler’ lager (native bird), ‘Redtail Tropicbird’ Guava Sour XPA (native bird) and ‘Horned Turtle’ New England IPA (native turtle). Riddle also states that all research and development for the Applicant’s Beer is undertaken on the Island. Extracts exhibited from the Applicant’s Website include:
2021:
2023:
and
2024:
and .
Riddel also exhibits screenshots of the Applicant’s Beer packaging in 2024 where I note the following:
. Also exhibited are screenshots of the Applicant’s 2024 packaging for its vodka and gin products, where I note the following:
.
Riddle attests that the Applicant has well advanced plans to commence small-scale brewing on the Island and states that the Applicant has received all of its brewing equipment on the Island and it anticipated that its on-Island brewing operations will commence in April 2024. No supporting evidence is provided for this claim.
Summary of EIR
Maxwell 2
Maxwell 2 annexes the results of a survey of 23 visitors to the Opponent’s brewery on the Island over the period 24 March 2024 – 18 April 2024 asking questions with tick the box answers yes, no or unsure or room for answers such as:
·If you saw a canned beer branded ‘Lord Howe Island’ would you have any thoughts about where it was brewed?
·If yes, what would you think?
·Have you ever bought a can from this producer ?
Gillespie
Gillespie provides commentary on the claims made in Riddle concerning the Applicant’s awards.
Kirkegaard
In Kirkegaard, Mr Kirkegaard provides his personal opinion that a normal beer consumer in Australia saw a product labelled with the Trade Mark would assume that the beer was made on the Island and associate the product with many of the attributes of the Island and that the Applicant stating on the Applicant’s Beer ‘brewed at various locations in NSW’ would not be sufficient to prevent the majority of Australian beer consumers from being misled or confused as to the origin of the beer inside the can.
Discussion and Reasons
Section 42(b)
Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.
The SGP simply states ‘Competition and Consumer Act 2010; Tort of passing off’. In the Opponent’s submissions, the Opponent refers to contravention of s 18 of the Australian Consumer Law (‘ACL’) (applied under Part XI, Division 2, Subdivision A of the Competition and Consumer Act 2010 (Cth)), which prohibits misleading and deceptive conduct or conduct that is likely to mislead or deceive and s 29(1)(k) which prohibits a person from making false or misleading representations concerning the place of origin of goods or services.
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in the context of deceptive similarity under s 44, stated:
‘deceive[d]’ implies the creation of an incorrect belief or mental impression; whereas ‘caus[ing] confusion’ may merely involve perplexing or mixing up the minds of potential customers.[10]
[10] [2023] HCA 8, [30] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).
In ACCC v TPG Internet Pty Ltd,[11] the Full Court stated that the central question is whether the impugned conduct, viewed as a whole, has a sufficient tendency to lead a person exposed to the conduct into error (that is, to form an erroneous assumption or conclusion about some fact or matter including the making of a false or misleading representation concerning the place of origin of goods). The Court also referred to the following principles directed to this central question namely:
·conduct is likely to mislead or deceive if there is a real or not remote chance or possibility of it doing so.
·it is not necessary to prove an intention to mislead or deceive.
·it is unnecessary to prove that the conduct in question actually deceived or misled anyone.
·the question whether conduct is misleading or deceptive is objective and the Court must determine the question for itself.
·it is not sufficient if the conduct merely causes confusion.
·where the impugned conduct is directed to the public generally or a section of the public, the question whether the conduct is likely to mislead or deceive has to be approached at a level of abstraction where the Court must consider the likely characteristics of the persons who comprise the relevant class to whom the conduct is directed and consider the likely effect of the conduct on ordinary or reasonable members of the class, disregarding reactions that might be regarded as extreme or fanciful.
[11] [2020] FCAFC 130, [22] (Wigney, O’Bryan and Jackson JJ).
If a representation is capable of having more than one meaning, the question whether it is misleading or deceptive is to be tested against each meaning which is reasonably open.[12]
[12] Tobacco Institute of Australia Ltd v Australian Federation of Consumer Organisations Inc (1992) 38 FCR 1, 50 (Hill J).
For the purposes of ss 18 and 29(1)(k) of the ACL, I must consider the likely characteristics of the persons who comprise the relevant class of persons to whom the conduct is directed and consider the likely effect of the conduct on ordinary or reasonable members of the class. Here the relevant class of customers is beer sellers, buyers and drinkers which would make up a very high percentage of the Australian population over the age of 18. This class of customers would include the astute and the gullible, the intelligent and not so intelligent, the well-educated and the poorly educated.
In respect of the Endorsement, I add that this Endorsement has no effect on the identity of the Trade Mark to the ordinary reasonable consumer and nor is it something of which the ordinary reasonable consumer would be aware. As such, the Endorsement has no effect on what connotation or representation the Trade Mark has nor whether the use of the Trade Mark would be likely to deceive or cause confusion or be a false representation.
The Opponent submits that:
· the Trade Mark is displayed prominently on the outside and upper portion of the Applicant’s Beer. Consumers viewing the Applicant’s Beer would understand the larger words LORD HOWE ISLAND convey information about the commercial origin of the goods whereas the words PHASMID, GOLDEN WHISTLER and DOUBLE HEADER convey the beer variant/product name.
· the larger words LORD HOWE ISLAND represent to the ordinary consumer in the relevant class that the Applicant’s Beer is manufactured in or produced on the Island. This submission is supported by Kirkegaard[13], an Instagram post made by IGA St Ives stating that the Applicant’s Beers are ‘[d]irect from Lord Howe Island’[14] and the survey evidence.[15]
· the representation that the Applicant’s Beer is manufactured in or produced the Island is false. The Applicant does not have and has never had a brewery on the Island and nor has the Applicant had an intention to brew commercial quantities of beer on the Island. Therefore, the Applicant’s Beer is not manufactured or produced on the Island and the use of the Trade Mark by the Applicant is likely to lead ordinary consumers into error so as to contravene ss 18 and 29(1)(k) of the ACL.
[13] Kirkegaard [40].
[14].Riddle AR-31.
[15] Maxwell 2 TM-28.
The Applicant submits that:
· the representation made by the presence of the words LORD HOWE ISLAND on the packaging of the Applicant’s Beer is not that the beer can was manufactured or produced on the Island.
· one representation made by the Trade Mark is consistent with the Endorsement and that the Endorsement using the words ‘originating from’ as distinct from ‘produced in’ is a powerful indicator that the words ‘originating from’ are more nuanced and are an alternative to ‘producing in’. Therefore, the Applicant’s Beer originates from the Island on the basis that the Applicant and the Applicant’s Beer has a strong and ongoing connection and origin with the Island.
· if there was genuine confusion amongst consumers or traders, the Applicant’s reputation is sufficient that there would not be complaints about it, given that the Applicant has now been trading since mid-2019.
The Applicant’s submissions also comment on the Opponent’s survey evidence stating that it is apt to confuse, inherently unreliable and of limited probative value. The Applicant refers to the Federal Court of Australia’s Survey Evidence Practice Note (GPN-SURV)[16] and submits that there is no evidence as to the design, methodology and execution of the survey, including who was surveyed and how they were selected and who was excluded, the circumstances in which the survey was administered such as what introductory statements or instructions were given to participants and the questions themselves are leading and ambiguous. While the Registrar is not bound by the rules of evidence, I agree with the Applicant that the survey evidence is unreliable and of limited probative value and I accord it little, if any. weight.
[16] >
In essence, the Applicant’s submissions are that as the Applicant’s Beer has strong and enduring connections to the Island, describing the Applicant’s Beer as ‘originating from’ the Island is accurate and is not misleading or deceptive or a false representation as to origin. I find there is a problem with this reasoning as the Applicant’s evidence consistently shows that the Applicant’s Beer is not produced on the Island, the Applicant does not have and has never had a brewery on the Island and nor has the Applicant had an intention to brew commercial quantities of beer on the Island. I therefore do not agree that the Applicant’s Beer ‘originates from’ the Island.
While I note the following definitions are useful in ascertaining the meaning of ‘originating from’:
· Macquarie Dictionary online:
Ø originate as 1.‘to take its origin or rise; spring’ and 2. ‘to give origin or rise to; initiate; invent’
Ø origin as 1. ‘that from which anything arises or is derived; the source’ and 2. ‘rise or derivation from a particular source’
· Australian Oxford Dictionary 2nd edition online:
Ø originate as 1.‘ beginning or starting point; a derivation; a source’
Ø origin as 1. ‘cause to begin; initiate’ and 2. ‘have as an origin’,
I do not need the help of any dictionary to understand the meaning of the words ‘originating from’ to the ordinary reasonable consumer nor how the words would be understood by the ordinary reasonable consumer in respect of any goods and services, including those of the Applicant. From my own knowledge, I understand the meaning of the words ‘originating from’ to mean ‘coming or emanating from’ or ‘made or created in’ and I consider this meaning would be well known to the general Australian population including those that buy, sell and drink beer. In effect, the meaning of the words ‘originating from’ is not materially different to ‘produced in’.
I consider that having strong and enduring connections to the Island, which include having flavourings in the Applicant’s Beer which come from the Island, are insufficient to describe the Applicant’s Beer or any of the other Applicant’s Goods and Services as ‘originating from’ the Island. If the Applicant’s Beer originates from the Island, the beer needs to be produced, brewed and manufactured on the Island. As the Applicant does not produce, brew or manufacture the Applicant’s Beer on the Island, I am satisfied that the Applicant’s Beer does not originate from the Island.
I am also satisfied that an ordinary reasonable consumer viewing the Trade Mark will remember the most prominent words LORD HOWE ISLAND and because of these words, would consider that the Trade Mark is conveying a representation that all, or at least a significant proportion, of the Applicant’s Beer is made, produced or brewed on the Island. Even if the ordinary reasonable consumer also remembered the additional words BREWING CO, this would not dispel the representation but rather, is more likely to reinforce the representation that the Applicant is brewing its beer on the Island. I also consider that the other element in the mark being the Bird in shield device does not have any effect in dispelling the representation.
On the Applicant’s submission that the Applicant has accrued a sufficient reputation that consumers have come to know the Trade Mark as a Trade Mark of the Applicant such that the Trade Mark does not convey any message about the Applicant’s Beer originating from or being manufactured on the Island, this submission fails as at the Relevant Date, I am not satisfied that the use of the Trade Mark by the Applicant supports a claim that the Trade Mark had a reputation sufficient to dispel any message about the Applicant’s Beer originating from or being manufactured on the Island. The Applicant’s evidence shows both minimal sales of the Applicant’s Beer[17] and minimal evidence of marketing and advertising expenditure[18] at the Relevant Date.
[17] Riddle [71].
[18] Riddle [83].
I am satisfied that the representation contained in the Trade Mark that the Applicant’s Beer is made, produced or brewed on the Island is misleading and deceptive and a false representation as to the origin of the Applicant’s Goods and Services and offends both ss 18 and 29(1)(k) of the ACL and is therefore contrary to law.
While I find that the s 42(b) ground of opposition established, and it is unnecessary that the remaining grounds be considered, I add one point concerning the s 43 ground. Section 43 is directed to an inherent connotation within a trade mark which, because of this connotation, the use of a trade mark would be likely to deceive or cause confusion.
For similar reasons referred to above, I consider that the Trade Mark bears the inescapable inherent connotation that the Applicant’s Services are provided on the Island. The Applicant’s Services are broad and include the services of retailing, brewing, education and providing food and drink. Each of these services can be provided on the Island. Section 43 remains an issue in respect of the Applicant’s Services as the Endorsement provided by the Applicant does not refer to the Applicant’s Services.
Resolution of Opposition
In Apple Inc. v Registrar of Trade Marks (‘Apple’) Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[19]
[19] [2014] FCA 1304, [232].
The Applicant submits that the Opponent had nothing to say about the Applicant’s Goods and Services other than beer and therefore even if the Opponent was correct in its submission that the use of contract-brewing service providers somehow disqualifies the Applicant’s Beer as originating from the Island, this success could not affect the registrability of the Trade Mark in respect of any of the other Applicant’s Goods and Services.
In the Opponent’s oral submissions, the Opponent submitted that:
· it relied on the Apple case that if the Application fails in one respect, it fails as a whole and therefore the Opponent only needs to succeed on one ground in respect of one good.
· the Applicant had not suggested a possible amendment to the Applicant’s Goods and Services.
· the Applicant’s evidence only shows use of the Trade Mark in respect of beer.
· the Applicant’s Services are broad enough to include services provided in relation to beer and where s 43 arises in respect of beer, it follows that it also arises in respect of services provided in relation to beer.
In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services, the Registrar may proceed to reject the application in its entirety, under the principles outlined in Apple, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established. I note in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:
I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[20]
[20] [2014] FCA 373, [231].
Neither the Opponent or Applicant has provided any basis for the Application to proceed with an amended claim to the Applicant’s Goods and Services. Given that the s 42(b) ground is one where misleading and deceptive conduct and false or misleading representations are at issue, and given my comments regarding s 43 above in relation to the Applicant’s Services, I consider it more likely than not that deception and confusion could arise from the use of the Trade Mark in respect of all the Applicant’s Goods and Services.
In light of the above, this is not a case where an amendment is appropriate since the nature of the Applicant’s Goods and Services are goods and services to which the s 42(b) ground can apply and as such, I have no sound basis upon which I can offer the Applicant the opportunity to limit the Applicant’s Goods and Services to allow the Application to proceed.
Decision
Section 55 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.
Note: For limitations see section 6.
The Opponent has established on the balance of probabilities the ground of opposition under s 42(b). I accordingly refuse to register the Trade Mark. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.
Costs
The Opponent has sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Anne Makrigiorgos
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
19 March 2025
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