The Scotch Whisky Association v Bake=?Iso-8859-1?Q?r=92s_doz?=. Pty Ltd

[2024] ATMO 155

TRADE MARKS ACT 1995

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

ReOpposition by The Scotch Whisky Association to registration of the trade mark the subject of application 2268917 (23, 25, 29, 30, 31, 32, 33) – glenpatrick gate – in the name of Baker’s doz. Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: King & Wood Mallesons

Applicant: Self represented

Decision:                   2024 ATMO 155

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 59 considered – Applicant had no intention to use in respect of some goods – registration refused

Background

1. This decision concerns an opposition to registration of the trade mark which is the subject of the application for registration detailed below. The application is in the name of Baker’s doz. Pty Ltd (‘Applicant’). The opposition was brought by The Scotch Whisky Association (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth).

Trade Mark:	glenpatrick gate	(‘Opposed Mark’)
Application Number:	2268917
Filing Date:	1 June 2022
Specification:	Class 23: Woollen thread and yarn; Spun thread and yarn; Linen thread and yarn; Hemp thread and yarn; Darning thread and yarn Class 25: Apparel (clothing, footwear, headgear) Class 29: (including) Food products made from preserved vegetables; cooking oils Class 30: (including) Bread; mixes for the preparation of bread Class 31: Malted barley; Malt grains (unprocessed); Malt germs; Malt for brewing and distilling Class 32: (including) Alcohol free spirits Class 33: (including) Alcoholic beverages (except beer) Malt whisky; Blended whisky; Bourbon whisky; Whisky Full specification appears in the annexure to this decision. (‘Opposed Goods’)

2. Unless otherwise indicated, any references to sections or regulations below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

3. Following publication of the application’s acceptance, the Opponent filed a Notice of Intention to Oppose registration of the Opposed Mark, followed by a Statement of Grounds and Particulars (‘SGP’). The SGP nominated grounds of opposition under ss 42(b), 43, 59, and 62A. The Applicant subsequently filed a Notice of Intention to Defend (‘NID’).

Evidence

4. The Opponent filed Evidence in Support (‘EIS’) of its opposition, being:

• Declaration made on 30 June 2023 by Caitlin O’Donnell, Senior Legal Counsel in the employ of the Opponent, with Annexures CO-1 to CO-33 (‘O’Donnell declaration’); and

• Declaration made on 30 June 2023 by Matthew Swinn, Managing Partner of King & Wood Mallesons, the representative of the Opponent, with Annexures MS-1 to MS-3 (‘Swinn declaration’).

5. The Applicant did not file any evidence in the proceeding.

6. Once the time allowed for filing evidence had ended, the Opponent requested to heard. After the filing of the NID the Applicant took no further part in proceedings. In light of this, the Opponent chose, in the end, to rely on its EIS and written submissions which were filed on 22 May 2024. The Opponent’s submissions were prepared by its representatives, King & Wood Mallesons. 

7. It has fallen to me, as a delegate of the Registrar of Trade Marks, to decide the matter, which I have done on the material discussed above.

The Opponent

8. According to the O’Donnell declaration:

[The Opponent] was incorporated as a company limited by guarantee in terms of the United Kingdom Companies Act 1948 (UK) on 22 April 1960. Upon incorporation, [the Opponent] assumed the function of the formerly unincorporated association known as ‘The Scotch Whisky Association’, which had been in existence since 15 May 1942. …

One of the principal objects of [the Opponent] is the protection of the interests of the Scotch Whisky trade in Scotland and around the world … which includes the following objects:

(1)To protect and promote the interests of the Scotch Whisky trade generally both at home and abroad. …

(3)To prosecute, defend and enter into legal proceedings in any territory in the world in defence of the interests of the Scotch Whisky trade. …

In pursuance of its objects … [the Opponent] frequently opposes trade mark applications and takes legal action in courts throughout the world. …

[The Opponent] has a policy of taking action, including opposing applications, where trade marks are evocative of Scottish or UK origin, the use of which in relation to whisk or whisky based drinks would be likely to mislead or deceive consumers.

The Applicant

9. There is nothing before me from the Applicant from which I might provide a background of the Applicant; however, according the Swinn declaration, ‘Research I have caused to be conducted indicates that the Applicant trades as Wimmera Hills winery’.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 59, and 62A. In its submissions, the Opponent did not press the s 62A ground. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 1 June 2022, being the filing date of the application (‘Relevant Date’).[3]

Consideration of Grounds of Opposition

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

Section 59 – Applicant not intending to use trade mark

1. The s 59 ground of opposition was particularised in the SGP as follows:

   Registration should be refused under section 59 of the Act in respect of ‘Malt whisky; Blended whisky; Bourbon whisky; Whisky’.

   The Opposed Goods include:

   Malt whisky; Blended whisky; Bourbon whisky; Whisky

   The Applicant has not demonstrated the requisite intention to use the Opposed Mark with respect to whisky or whisky-based drinks. Now, and as at the Priority Date, the Applicant:

   (a)has only used the Opposed Mark in respect of “Cordials” in class 32; and

   (b)was not engaged in the business of distilling whisky or whisky-based goods, and does not, and did not at the Priority Date, hold any sufficiently definite intention or capacity to do so.

2. It is apparent from the particulars above, and the Opponent’s submissions, that this ground of opposition is pressed only in respect of malt whisky; blended whisky; bourbon whisky; whisky and whisky based drinks (‘Whisky Goods’). The aforementioned italicised goods appear in Class 33 of the Opposed Goods, and ‘whisky based drinks’ are encompassed by goods in Class 33 such as the broad claim for alcoholic beverages (except beer). This ground of opposition will be considered only in respect of the Whisky Goods.

3. Section 59 of the Act is reproduced below:

   Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)   to use, or authorise the use of, the trade mark in Australia, or

   (b)   to assign the trade mark to a body corporate for use by the body Corporate in Australia;

   in relation to the goods and/or services specified in the application.

4. There is a presumption of intention to use which arises from an applicant’s act of filing an application for registration.[4] The onus of establishing this ground remains with an opponent unless, or until, it has established a prima facie case of the applicant’s lack of intention, at which point the onus moves to the applicant for rebuttal.[5] The intention to use a trade mark must exist at the date of application;[6] consequently, it is incumbent upon an opponent to establish that the applicant did not intend to use the trade mark at the time of filing. The relevant intention requires that an applicant must have ‘a real intention to use, not a mere problematic intention, not an uncertain or indeterminate possibility, but it means a resolve or settled purpose which has been reached at the time when the mark is to be registered’.[7] There must be ‘a real and definite intention’ to use the mark publicly as a trade mark in connection with the services applied for.[8]

   [4] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, 401 (Fullagar J) (‘Aston’).

   [5] Ibid [163].

   [6] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74] (Keane CJ, Stone and Jagot JJ).

   [7] Re Ducker’s Trade Mark (1928) 45 RPC 397, 402.

   [8] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [158] (Jacobson J).

5. Where the specification of goods and services in an application extends well beyond the goods or services in respect of which the applicant has previously used the mark, and the applicant has come nowhere near to launching the mark in relation to such goods or services, that is

   indicative of an approach to registration that is not aligned with genuine intention, but rather to a desire to cover a field beyond the range of expected or intended use. Such an approach diminishes the benefit of any imputation arising from the fact of registration itself in the sense contemplated in Aston.[9]

   [9] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [152] (Burley J) (‘Goodman Fielder’).

6. The Opponent submitted that it has ‘a clear prima facie case sufficient to shift the onus to the Applicant to establish an intention to use’. The Opponent referred to the following:

   (a)on 9 December 2022, under threat of opposition, the Opponent questioned whether Applicant had any intention to use the trade mark in relation to ‘whisky or whisky-based drinks’, inviting the Applicant to respond. The Applicant has failed to provide any response;

   (b)the legal manufacture and/or sale of whisky in Australia is not a minor undertaking. For example:

   (i)unlike gin, which the Applicant does sell using other trade marks, s 77FI of the Excise Act 1901 (Cth) requires that all whisky manufactured in Australia must be matured by storage in wood for at least 2 years. One would expect some evidence of preparations made to meet this requirement if the Applicant had a real and definite intention to use the Opposed Mark in relation to whisky-based drinks at the Filing Date; and

   (ii)in evidence the Opponent has raised the prospect that the Applicant might not possess the necessary excise manufacturer licence to lawfully use the Opposed Mark on ‘alcohol such as brandy, gin, rum, vodka and whisky’. The Applicant elected to provide no response.

   (c)the Applicant has never used the Opposed Mark … in relation to [the Whisky Goods]. The Applicant has only used the trade mark GLENPATRICK (without GATE) in relation to a winery, fortified wine and cordials, and searches conducted on the internet detected no use by the Applicant of the trade mark GLENPATRICK or GLENPATRICK GATE on whisky, or any other [Whisky Goods].

   (d)the Opposed Mark is a speculative application. The Applicant has applied for the very diverse array of goods [which comprise the Opposed Goods]—such as ‘woollen thread and yarn’ in class 23; then commencing with ‘artichoke hearts’, continuing through ‘pickled pigs feet’ … in class 29. In Class 33, the goods include every conceivable form of alcoholic beverage. Given the commercial realities involved in the manufacture and production of this diversity of goods, the Applicant could not possibly have had the ‘sufficiently definite’ intention at [the Relevant Date] to use the Opposed Mark in relation to all the goods specified. The range and breadth of the Opposed Goods certainly ‘diminishes any imputation arising from the fact of registration’, and is instead ‘a desire to cover a field beyond the range of expected or intended use’; and

   (e)despite being on notice of its absence, and being simply and readily able to produce such material, the Applicant has not produced any evidence of past, current or future intention, manufacturing capacity, or legal authorisation to distil or sell whisky.

7. The Opponent’s submissions have significant merit. I am satisfied that the Opponent has established a prima facie case of the Applicant’s lack of intention to use the Opposed Trade Mark in respect of the Whisky Goods. Accordingly, the onus shifted to the Applicant to establish its intention. The Applicant, having filed no evidence or submissions, has not met its onus. The Opponent has therefore established that the Applicant had no intention, at the Relevant Date, to use, or authorise the use of, the Opposed Trade Mark in Australia in respect of the Whisky Goods.

Section 42(b)

1. The particulars in the SGP for the s 42(b) ground of opposition concluded with:

   By reason of these matters, consumers are likely to be deceived or confused if the Opposed Mark is used on or in relation to whisky or whisky based drinks which have not been produced in Scotland; or are not Scotch Whisky or Scotch Whisky-based drinks produced in Scotland.

2. It is clear from the SGP that this ground of opposition applies only to the Whisky Goods, or at the most, a subset of the Whisky Goods. As the ground of opposition under s 59 was established in respect of the Whisky Goods, it is not necessary to consider the s 42(b) ground further.

Section 43

1. This particulars in the SGP for the s 43 ground of opposition concluded with:

   Consumers are therefore likely to be deceived or confused if the Opposed Mark is used on or in relation to whisky or whisky-based drinks that are not Scotch Whisky or Scotch Whisky-based drinks produced in Scotland.

2. It is apparent that this ground, too, applies only in respect of the Whisky Goods, or at best a subset of those goods. As the ground of opposition under s 59 was established in respect of the Whisky Goods, it is not necessary to consider the s 43 ground further.

Applicant given opportunity to amend specification.

1. Following the hearing, the Applicant was given an opportunity to request an amendment of the Opposed Goods to delete the Whisky Goods. The Applicant did not request the amendment. Accordingly, registration of the Opposed Trade Mark is refused in its entirety.

Decision

1. Section 55 relevantly provides:

   (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.

2. I have found the Opponent established the ground of opposition it raised pursuant to s 59 in respect of the Whisky Goods. As a delegate of the Registrar, I accordingly refuse to register the Opposed Mark.

Costs

1. The Opponent sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition in the manner it sought, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
29 August 2024

Annexure

The Opposed Goods

Class 23: Woollen thread and yarn; Spun thread and yarn; Linen thread and yarn; Hemp thread and yarn; Darning thread and yarn

Class 25: Apparel (clothing, footwear, headgear)

Class 29: artichoke hearts; Flowers and leaves, being dried, cooked or preserved foodstuffs; Artichokes, preserved; Beans, preserved; Berries, preserved; Fish, preserved; Food products made from preserved fruits; Food products made from preserved nuts; Food products made from preserved vegetables; Fruit preserved in alcohol; Fruit preserves; Olives, preserved; Fruit, preserved; Fruits, preserved; Garlic (preserved); Garlic preserves; Laver, preserved; Lentils, preserved; Meat preserves; Meat, preserved; Mushrooms, preserved; Onions, preserved; Oranges (preserved); Peas, preserved; Pork preserves; Preserved beans; Preserved beetroot; Preserved chilli peppers; Preserved fish; Preserved fruits; Preserved garlic; Preserved ginger; Preserved meats; Preserved mushrooms; Preserved peas; Preserved peppers; Preserved poultry; Preserved prepared meat; Preserved sausages; Preserved soya beans; Preserved tomatoes; Preserved vegetables; Preserves made from meat; Preserves made from vegetables; Root vegetables (preserved); Smolt (preserved); Soya (preserved); Soya beans, preserved, for food; Spinach (preserved); Squash (plants, preserved); Squid (preserved); Strawberries being preserved; Sweet corn (preserved); Tangerines (preserved); Tomato preserves; Vegetables, preserved; Vegetable preserves; Turkey (preserved); Truffles, preserved; Tropical fruits (preserved); Tomatoes (preserved); Fruit jams; Ginger jam; Jams; Low sugar jams; Raspberry jam; Sweet spreads (jams); Mixed pickles; Pickle relish; Pickled cucumbers; Pickled eggs; Pickled fish; Pickled fruit; Pickled gherkins; Pickled ginger; Pickled onions; Pickled peppers; Pickled pigs feet; Pickled vegetables; Pickles; Relish (pickle); Sweet pickle (pickled fruit or vegetables); Edible oils for use in basting foodstuffs; Edible oils for use in cooking foodstuffs; Blended vegetable oils; Blends of edible oils and fats; Bone oil for food; Butter oil; Cooking oils; Corn oil for food; Cotton seed oil; Edible almond oil; Edible bone oil; Edible fish oil for culinary purposes; Edible oils for use in frying; Edible oils for use in grilling; Edible oils for use in roasting; Edible vegetable oils; Extra virgin olive oil for food; Fish in olive oil; Flaxseed oil for food; Food spreads being a blend of edible oils and edible fats; Food spreads consisting principally of edible oils; Grapeseed oil; Groundnut oil; Linseed oil for food; Linseed oils (edible); Maize oil for food; Non-stick vegetable oil sprays for use in cooking; Nut oils; Oil-based fondue; Oils for food; Olive oil; Olive oil dip; Olive oil for food; Palm kernel oil for food; Palm oil for food; Pine kernel oil; Rape oil for food; Rapeseed oil for culinary purposes; Sesame oil for food; Soya based edible oils; Shortenings being mixtures of edible oils and edible fats; Soya bean oil for culinary purposes; Soya bean oil for food; Soya oil for culinary purposes; Spreads made from vegetable oils; Sunflower oil for food; Vegetable oil for culinary purposes; Vegetable oils (edible); Fat-containing mixtures for bread slices; Baked beans; Edible oils for use in baking

Class 30: bread; Baking preparations containing insects; Baking soda (bicarbonate of soda for cooking purposes); Bicarbonate of soda for cooking purposes (baking soda); Flour for baking; Flour mixtures for use in baking; Flour ready for baking; Foods produced from baked cereals; Pre-baked pizza crusts; Pre-mixes ready for baking; Ready-made baking mixtures; Ready-to-bake dough products; Baking powder; Bread biscuits; Bread buns; Bread casings filled with fruit; Bread concentrates; Pre-baked bread; Semi-baked bread; Bread mixes; Bread rolls; Burgers contained in bread rolls; Danish bread; Danish bread rolls; Filled bread products; Filled bread rolls; Fresh bread; Garlic bread; Ginger bread; Gluten-free bread; Malt bread; Malted bread mix; Mixes for the preparation of bread; Pitta bread; Rye bread; Snack foods consisting principally of bread; Soft rolls (bread); Stuffed bread; Toasted bread; Toasted bread products; Unfermented bread; Unleavened bread; Wholemeal bread; Wholemeal bread mixes; Natural honey

Class 31: Malted barley; Malt grains (unprocessed); Malt germs; Malt for brewing and distilling

Class 32: alcohol free spirits; Beer; Beer hampers; Beer wort; Beer-based cocktails; Bitter beer; Black beer; Dark Beer; De-alcoholised beer; Extracts of hops for making beer; Ginger beer; Home beer brewing ingredient kits (preparations for making beer); Home brew kit concentrate of hopped wort for making beer; Homebrew kit concentrate of hopped wort for making beer; Homebrewing ingredient kits (preparations for making beer); Pilsner beer; Root beer; Bitter lemon; Lemon barley water; Lemon juice (beverage); Lemon squash; Cordials; Lime juice cordial; Barley wine (beer); De-alcoholised wines; Flavoured water beverages; Fruit flavoured squashes; Mixtures of fruit flavoured drinks; Alcohol-free beer; Alcoholic beers; Ginger beer (alcoholic); Ginger beer (non-alcoholic); Low alcohol beer; Non-alcoholic beers; Non-alcoholic beverages (except non-alcoholic beer); Alcohol-free wine; Fruit flavoured non-alcoholic drinks; Non-alcoholic beverages flavoured with coffee; Non-alcoholic beverages flavoured with tea; Ades [non-alcoholic fruit-based drinks]; Ades [non-alcoholic sweetened drinks of diluted fruit juices]; Aerated beverages (non-alcoholic); Aerated drinks (non-alcoholic); Alcohol free spirits; Alcohol-free beverages; Alcohol-free cider; Alcohol-free drinks; Aperitifs, non-alcoholic; Carbonated non-alcoholic drinks; Cider, non-alcoholic; Cocktails, non-alcoholic; Grain based non-alcoholic beverages; Non-alcoholic barley based beverages; Non-alcoholic beverages; Non-alcoholic beverages being punches; Non-alcoholic beverages flavored with coffee; Non-alcoholic beverages flavored with tea; Non-alcoholic carbonated drinks; Non-alcoholic cocktail bases; Non-alcoholic cocktails; Non-alcoholic essences for making beverages; Non-alcoholic fruit extracts; Non-alcoholic fruit juice beverages; Non-alcoholic honey-based beverages; Non-alcoholic punches; Non-alcoholic spirits; Preparations for making non-alcoholic beverages; Vegetable extracts for use in the preparation of non-alcoholic drinks; Squashes (non-alcoholic beverages); Natural water (not for medical purposes); Home brew kits namely concentrate of malt, hops and hopped wort for making beer; Malt beer; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Malt wort

Class 33: alcoholic beverages (except beer); Alcoholic beverages containing wine; Beverages containing wine (wine predominating); Blended wine; Dessert wine; Drinks containing wine (wine predominating); Dry fortified wine; Dry red wine; Dry sparkling wines; Dry white wine; Dry wine; Fortified wines; Ginger Wine; Low alcohol wine; Mulled wines; Non-sparkling wines; Red wine; Sparkling fruit wines; Sparkling wines; Still wines; Sweet fortified wine; Sweet red wine; Sweet sparkling wine; Sweet white wine; Sweet wine; Vintage wines; White wine; Wine; Wine-based beverages; Curacao; Gin; Anise (liqueur); Anisette (liqueur); Brandy based liqueurs; Coffee based liqueurs; Cooking liqueurs; Digestifs [liqueurs and spirits]; Liqueurs; Mint flavoured liqueurs; Orange liqueurs; Peppermint liqueurs; Still liqueurs; Cream liqueurs; Malt whisky; Blended whisky; Bourbon whisky; Whisky; Vermouth