Trade mark application number 1955965 (Class 30) – Victoria Coffee with device - in the name of Cantarella Bros Pty Ltd.

[2021] ATMO 144

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1955965 (Class 30) – Victoria Coffee with device - in the name of Cantarella Bros Pty Ltd.

Delegate:	Blake Knowles
Representation:	Applicant: Ben Cameron of counsel, instructed by Herbert Smith Freehills.
Decision:	2021 ATMO 144. Trade Marks Act 1995 (Cth) – section 33 proceedings – section 41 – trade mark not capable of distinguishing– trade mark application rejected.

Background

1. This is a decision on examination of trade mark application number 1955965 (‘Application’) by Cantarella Bros Pty Ltd (‘Applicant’) filed on 17 September 2018 (‘Relevant Date’), for the following trade mark and goods:

   (‘Trade Mark’)

   Class 30: Coffee; Coffee beans; Coffee beverages; Chocolate; Chocolate beverages; Tea-based beverages; Biscuits; Cakes

   (‘Goods’).

2. As required by the Trade Marks Act 1995 (Cth)[1] the Trade Mark was examined. The examiner raised grounds for rejection under s 41 on the basis that the Trade Mark was not capable of distinguishing, and s 43 on the basis that the Trade Mark contained a connotation that was likely to deceive or confuse. The Applicant subsequently responded to the examination report and the examiner withdrew the ground for rejection under s 43. However, the examiner maintained the ground for rejection under s 41, on the basis that the Trade Mark indicates the Goods originate from Victoria.  

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (the ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

3. The Applicant requested a hearing and was subsequently heard by a delegate of the Registrar on 5 October 2021. Mr Ben Cameron of counsel appeared by video conference on behalf of the Applicant, instructed by Ms Renee Burgess of Herbert Smith Freehills. The matter has subsequently been allocated to me, another delegate of the Registrar, for decision. I have formed my decision based on the evidence, written submissions, and oral submissions which were recorded at the hearing.

   Evidence

4. The Applicant filed two declarations prior to the hearing, namely:

   -     Declaration by Fadi Fred Audi, Group Financial Controller and Company Secretary of Applicant, made on 29 September 2021, with Exhibits FA-1 to FA-3.        

   -     Declaration of Renee Elizabeth Burgess, solicitor of Herbert Smith Freehills, made on 29 September 2021, with Exhibits REB-1 to REB-6.

5. Mr Audi declares that the Applicant has been trading in coffee and other products under the VITTORIA brand since 1958. Mr Audi states that VITTORIA is the Applicant’s flagship brand and is a leader in the Australian pure coffee market and has been since the 1990s.

6. Mr Audi declares that there has been significant marketing and promotion of VITTORIA coffee in Australia since the date of first use, including a recent “We Know Coffee” campaign featuring Al Pacino.

7. Mr Audi provides an approximate sales volume figure for FYE 2020, which indicates that a significant amount of coffee was sold under the VITTORIA brand in that period.

8. Mr Audi declares that in addition to the widespread use of the VITTORIA word mark, the Applicant has used a number of composite marks, including the following:

   (‘Vittoria Composite Mark’)

9. Mr Audi annexes to the declaration exhibits which he states demonstrate use of the Vittoria Composite Mark over a period of time, including on coffee and coffee pod packaging, coffee cups, coffee stands and vehicles, order here signs, self-service machines, and advertisements.  

10. Ms Burgess declares that she visited several websites on 29 September 2021, namely vittoriacoffee.com, queenvictoriatea.com, and rumcityfoods.com.au. Ms Burgess annexes screenshots and PDF documents that were taken from these websites.  

11. Ms Burgess declares that on 29 September 2021 she conducted a Google search for “Victoria coffee” which instead automatically displayed searches for “vittoria coffee”. Ms Burgess annexes to the declaration a screenshot of the first page of search results.  

    Discussion

12. Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Goods of the Applicant from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Goods, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Goods, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that that it did not in fact distinguish the Goods based on the extent of its use at the Relevant Date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that after considering the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the Relevant Date and/or use or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Goods (s 41(4)).

13. The test to determine whether a trade mark is inherently adapted to distinguish was set out by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’):

    His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested 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 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.[2]

    [2] [1964] HCA 55, [5] (Kitto J).

14. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’), the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[3]

    [3] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

15. It is well established that the names of geographical locations may often lack sufficient inherent adaptation to distinguish to qualify as prima facie registrable trade marks. The ordinary signification of such marks to consumers is often that the goods or services in question originate from, or have some other relevant connection with, the geographical locations in question. In Clark Equipment, the mark under consideration was the name of a major geographical location, namely MICHIGAN. Kitto J said:

    [T]he name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there.[4]

    [4] Clark Equipment, [7].

16. In Blount v Registrar of Trade Marks,[5] Branson J held that the following stylised trade mark was not inherently adapted to distinguish, but had through use become capable of distinguishing for particular goods (being various tools):

    [5] [1998] FCA 440.

17. Other geographical names that were considered by the courts to not be sufficiently inherently adapted to distinguish include COLORADO (for goods such as bags)[6] and OXFORD (for printed publications).[7]

    [6] Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184 (Gyles, Kenny, and Allsop JJ).

    [7] Re Chancellor, Masters and Scholars of the University of Oxford T/A Oxford University Press v the Registrar of Trade Marks [1990] FCA 175 (Lockhart, Jenkinson, and Gummow JJ).

18. The Applicant cites Bavaria NV v Bayerischer Brauerbund eV (‘Bavaria’),[8] where Bennett J held that the following composite trade mark was sufficiently inherently adapted to distinguish beer, when considered as a whole, notwithstanding that Bavaria is a well-known beer producing region in Germany:

    [8] [2009] FCA 428.

19. In determining that the trade mark in Bavaria was inherently adapted to distinguish, Bennett J said:

    The use of the word “Bavaria” by a number of breweries suggests that the word alone is not intended to be used to distinguish the goods or services of any particular brewery. Rather, other traders who wish to use the word “Bavaria” would rely on differentiating features, such as other words, devices and symbols, to distinguish their goods. The features of the trade mark other than BAVARIA cannot simply be dismissed as “window-dressing”.

    This case is not about whether Bavaria NV can register a trade mark for the word “Bavaria”. It is whether the trade mark, which contains BAVARIA, is capable of distinguishing Bavaria NV’s goods from those of other traders, including traders who sell beer from Bavaria. On the assumption that traders of beer from Bavaria may wish to use “Bavaria” on their labels or in their trade marks, the way to distinguish their goods is to create a distinctive trade mark or label by the use of other words and devices. Bavaria NV has utilised the Swinkels family crest and other devices, repeated references to “Holland” and the prominent placing of HOLLAND below BAVARIA to draw attention to the fact that BAVARIA HOLLAND BEER is a specific product, the source of which is Lieshout, Holland.[9]

    [9] Bavaria (n 8), [73]-[74].

20. The Applicant also refers to other well-known authorities that confirm that a trade mark be considered as a whole, including Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2), where Dodds-Streeton J held that the following trade mark was inherently adapted to distinguish:

    Justice Dodds-Streeton stated:

    It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive. When assessing whether a combination trade mark such as the Fry trade mark is adapted to distinguish, it is necessary to consider the combination as a total composition, rather than the individual constituent elements in isolation.[10]

    [10] [2012] FCA 81, [61].

21. The Applicant cites several other examples of registered trade marks that contain descriptive words combined with device elements that were deemed to be inherently adapted to distinguish by the Registrar or courts, including:

    [11] [12] [13]

    [14]  [15]

    [11] Precedent Productions Pty Ltd v Interested in Business Pty Ltd [2018] ATMO 112.

    [12] Johnson & Johnson Pte Ltd v Michael Rich [2019] ATMO 119.

    [13] Philip Morris Products SA v British American Tobacco (Brands Ltd) [2019] ATMO 95.

    [14] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808 (Burley J).

    [15] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406 (Davies J).

22. The Applicant also refers to the following trade marks containing the word VICTORIA that were deemed to be prima facie registrable by the Registrar:

Trade Mark Number	Trade Mark	Relevant Goods/Services
70995	VICTORIA BITTER	Class 32: Ale
1350176	Class 39: Supply of electricity
1446455	Class 41: Golf tuition; provision of golfing facilities
1557781	Class 41: Production of films

1. The Applicant does not argue that the words ‘Victoria coffee’ which form an essential feature of the Trade Mark are themselves sufficiently inherently adapted to distinguish to be prima facie registrable. Rather, the Applicant argues that the Trade Mark is sufficiently inherently adapted to distinguish, or alternatively should be considered registrable having regard to ‘other circumstances’ under the provisions of s 41(4), based on a combination of factors, including:

   -     the Trade Mark being a European café themed composite mark consisting of the words Victoria Coffee in a highly stylised format, combined with a rectangular device separated by white space (noting that the white space should also be given weight as a feature of the Trade Mark). Determining registrability of the Trade Mark by reference only to the word elements misconstrues the Trade Mark as a whole.

   -     Victoria, Australia is not a suitable area for growing coffee beans, and it has no association with the growing of coffee beans. There is also no evidence of a region called Victoria anywhere else suitable for growing coffee beans.

   -     the Trade Mark was registered without objection in New Zealand for the same goods (New Zealand trade mark number 1102762).

   -     the extensive use of the Vittoria word mark and similar Vittoria Composite Mark since at least 2005, and registration by the Applicant of the Victoria Composite Mark (trade mark number 1995149) in 2019 and other similar Vittoria marks over the years.

   -     The registration by the Applicant of the trade mark QUEEN VICTORIA (trade mark number 1123171) for similar goods in 2006. 

2. The Applicant correctly observes that a presumption of registrability applies when assessing the Trade Mark under s 41. I am also not bound by the examiner’s decision. I must decide the matter based on my own consideration of the authorities and relevant circumstances of the case.

3. A decision whether a trade mark is inherently adapted to distinguish, particularly where the mark is a composite containing descriptive words with other elements, is one where reasonable minds may differ. As such, prior decisions of the Registrar and the courts assessing different trade marks, while illustrative and guiding me as to how the law should be applied, are not determinative of the registrability of the Trade Mark under consideration.   

4. I agree with the Applicant that it is not appropriate to divide the Trade Mark into its respective components, and that the Trade Mark must be considered as a whole. I also consider that other traders do not need to use the same Trade Mark in the precise composite form applied for. However, the test in Clark Equipment requires me to consider whether another trader would wish to use the same mark, or some mark nearly resembling it (including some mark that would infringe the trade mark under consideration if registration were granted). The court in Cantarella also referred to the requirement to examine a trade mark from ‘the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business’.[16]  The potential impairment of the rights of honest traders must be assessed in the context of relatively broad tests for infringement of a registered trade mark, which take into account the effect of trade marks on ordinary consumers relying on imperfect recollection, with particular weight given to the essential features of the trade marks under consideration.

   [16] Cantarella, [44] (French CJ, Hayne, Crennan and Kiefel JJ).

5. When I consider the Trade Mark as a whole, I consider it signifies coffee related goods that originate from Victoria, Australia. While it is possible that some consumers may view the term ‘Victoria’ as referring to a female given name, I think the more likely perception by Australian consumers would be coffee from Australia’s second most populous state, which contains significant agricultural regions. While I acknowledge that Victoria is not a region particularly suitable for growing coffee beans, that is not to say varieties of coffee bean could not be grown in specific regions of Victoria in future. Further, while the growing of the coffee beans on a commercial scale may not presently take place in Victoria, I must also consider other aspects of commercial coffee production, such as roasting. It is entirely possible that coffee beans may be roasted in Victoria, or processed coffee goods may otherwise originate from Victoria. I note recently that McDonalds in advertising their coffee specifically mentions that the beans are roasted in Melbourne. This advertisement illustrates that some traders may find it desirable, for whatever reason, to associate their coffee related goods with Victoria, or parts of Victoria.[17]

   [17] McCafé®. Coffee fit for an Aussie (

6. Having determined the ordinary signification of the Trade Mark, I am also satisfied that other traders would need to use a trade mark so nearly resembling it in relation to the Goods. While the presence of a stylised font and a rectangular device does create a visual point of difference when compared to the plain words VICTORIA COFFEE, the use of those plain words would pose an appreciable risk of infringing the Trade Mark if registration were granted. The stylised font and rectangle are not particularly distinctive elements, and even combined I am satisfied they do not overcome the pure descriptiveness and prominence of the word elements. As such, the registration of the Trade Mark would potentially impair the rights of other traders to honestly use what is a highly descriptive term in relation to coffee products, goods that may contain or be flavoured with coffee (such as cakes, chocolates, and biscuits), or goods that are sold through similar channels for a similar purpose, such as tea and drinking chocolate.

7. I am satisfied that the Trade Mark is not sufficiently inherently adapted to distinguish to be considered prima facie registrable. However, I agree with the examiner that the Trade Mark does have some level of inherent adaptation to distinguish, and I must therefore consider the matters set out in s 41(4), including any relevant ‘other circumstances’.

8. The Applicant did not rely on any evidence of use or intended use of the Trade Mark. However, the Applicant did rely on evidence of use of the Vittoria Composite Mark as a relevant factor to be considered.

9. I am satisfied that the Applicant has a reputation in the Vittoria Composite Mark. In addition to evidence provided by the Applicant, I have personally seen the Vittoria Composite Mark on many occasions. However, reputation in the Vittoria Composite Mark is not a sufficiently compelling circumstance to permit registration of the Trade Mark. While I consider that some consumers would recognise the stylisation of the Trade Mark as being the same as that of the Vittoria Composite Mark, and as resembling other getup used by the Applicant throughout its business, I do not consider this outweighs the descriptive significance of the Trade Mark and its potential to impair the legitimate rights of other traders to use the descriptive words VICTORIA COFFEE either in plain text or in some stylised manner that may infringe the Trade Mark. Simply representing a Trade Mark in the same stylised manner as another trade mark owned by the Applicant (particularly where that other trade mark is differentiated by a highly distinctive word element) does not suffice to render capable of distinguishing or likely to become capable of distinguishing an otherwise highly descriptive mark.

1. For the reasons given above, I am satisfied that there is a ground for rejecting the Trade Mark under s 41. 

   Decision

2. Under s 33(3)(b), if I am satisfied that there is a ground for rejection and the Applicant has been given an opportunity to be heard, then I must reject the Application.

3. Therefore, I reject the Application for all of the Goods.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   25 November 2021