Treasury Chateau & Estates v Australian Wine Exporters Pty Ltd

[2019] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by Treasury Chateau & Estates to registration of trade mark application 1785757 (33) – BVJALIE – in the name of Australian Wine Exporters Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented with submissions by Wrays Applicant:  Philips Ormonde Fitzpatrick
Decision:	2019 ATMO 55 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Treasury Chateau & Estates (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Australian Wine Exporters Pty Ltd (‘Applicant’): 

Application Number:	1785757
Filing Date:	26 July 2016
Goods:	Class 33: Wine, Wine Products, Wine Bases Products, Spirits (‘Applicant’s Goods’)
Trade Mark:	BVJALIE	(‘Trade Mark’)

1. Following the advertisement on 15 December 2016 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose registration on 15 February 2017.  The Opponent then filed a Statement of Grounds and Particulars on 15 March 2017 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 16 May 2017.

   Evidence

2. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 22 August 2017.  This evidence consists of a declaration by Andrew Geoffrey Butler, patent and trade marks attorney of the firm Wrays, made on 22 August 2017 with Exhibits AGB-1 to AGB-4 and Confidential Annexure A (‘Butler Declaration’).  The Applicant did not file any Evidence in Answer.

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 31 January 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions upon which they wished to rely.  On 27 February 2018 the Opponent filed its submissions by Wrays (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

4. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

5. The Opponent is an American company based in Napa, California, which is part of the Treasury Wine Estates group of companies (‘TWE’), including Treasury Wine Estates Limited ACN 004 373 862.   

6. The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods
784574	(‘Figurative Mark’)	3 Feb 1999	Class 33: Wines, spirits and liqueurs
1755260	(‘Acronym Mark’)	26 Feb 2016	Class 33: Wine

1. The Butler Declaration contains the following claims/statements:

   ·     TWE is one of the largest listed stand-alone wine companies in the world, with a portfolio of hundreds of brands including Penfolds, Wolf Blass Beaulieu, Beringer, Blossom Hill, Wynns, Lindemans and Rosemount.

   ·     TWE acquired the Opponent on 1 January 2016.  The Opponent is a wholly owned subsidiary of TWE and was formerly known as Diageo Chateau & Estates Company.

   ·     Beaulieu Vineyard was established in 1900 in Napa Valley.  Beaulieu Vineyard operates a website at and has become known as Beaulieu Vineyard, Beaulieu and BV, being its acronym. The letters ‘BV’ are often displayed on its website and on bottles in the form set out in the Figurative Mark or similar form.  Wine bearing the words ‘Beaulieu Vineyard’, ‘Beaulieu’ ‘BV’ and the Opponent’s Trade Marks have been offered for sale for over 100 years and sales are extensive. 

   ·     As a result of the long-time use of the Beaulieu Vineyard, Beaulieu and BV Marks for the sale of the Opponent’s wine since 1900, and the extensive promotion and reputation engaged in, each of these marks, and in particular the BV Mark, is well known in the industry.

   ·     As the Trade Mark comprises the acronym BV and the term JALIE, it is likely that the presence of the acronym BV on the Applicant’s Goods will lead to confusion.

2. I note when reviewing the Butler Declaration that the Opponent does not provide any evidence of sales prior to 2016, which it attributes to TWE only recently having purchased the Opponent.  Furthermore the Butler Declaration does not clarify whether the sales figures quoted are the wine sales of the Opponent or TWE, whether they are sales in Australia or globally, or whether they are sales of wine bearing the Opponent’s Trade Marks or all wine offered by the Opponent/TWE.  The Opponent’s Submissions suggest that the sales figures quoted are sales figures of products bearing the Opponent’s Trade Marks, however as the figures only date since 1 January 2016 and appear to relate to global revenue, not Australian revenue, they are of limited relevance.

3. Furthermore it is apparent from the Butler Declaration that of all the marks used by the Opponent, by far the most frequently used is the Figurative Mark, which appears on the Opponent’s Website, social media pages and on the vast majority of wine displayed in the Butler Declaration.  There does not appear to be any evidence of use of the letters BV , either as plain letters or as the Acronym Mark, separate to the words ‘Beaulieu Vineyard’. 

   The Applicant

4. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

   Grounds of Opposition, Onus and Standard of Proof

5. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

6. 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 26 July 2016 (‘relevant date’), being the filing date of the application in Australia.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

7. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)it 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).

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

8. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

9. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. However, as the applicant has not filed any evidence in this matter, there is no basis to apply ss 44(3) and 44(4) of the Act in this proceeding.

10. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Both of the Opponent’s Trade Marks have a priority date that is earlier than the priority date of the Trade Mark.  I consider that at least some of the goods for which both the Opponent’s Trade Marks are registered are similar to some of the Applicant’s Goods, as both marks are registered for wine and related products.  The first and third requirements are satisfied in respect of the Opponent’s Trade Marks. 

    Substantially identical and/or deceptively similar

11. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Marks.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

    [4] (1963) 109 CLR 407, [12].

12. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks, however for this proceeding it is only necessary to consider the Acronym Mark. The Figurative Mark contains additional elements that further distinguishes that mark from the Trade Mark and is registered for goods that are not significantly different that the goods for which the Acronym Mark is registered. Were I to find that the s 44 ground is not established by the Acronym Mark, I would necessarily reach the same conclusion when considering the Figurative Mark.

13. The Trade Mark and the Acronym Mark are set out below:

    BVJALIE           
      

14. On a side by side comparison there is a clear difference between the respective trade marks, in that the Trade Mark consists of a distinct word that includes, as its first two letters, the letter BV, along with the letters ‘JALIE’, while the Acronym Mark is simply the letters BV in fancy script.  The differences between the respective trade marks are sufficient for me to conclude that they are not substantially identical.  I move then to consider whether the Trade Mark and Acronym Mark are deceptively similar.

15. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    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 [trade mark].[5]

    [5] Ibid [13].

16. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

    Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

    [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

    [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

    [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

    [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

    [10] [2012] FCA 1022, [38]-[46].

17. On balance, I do not consider the marks to be deceptively similar.  Aurally the marks are quite distinct from each other.  The Acronym Mark is pronounced as ‘bee vee’.  It is not clear how the Trade Mark is to be pronounced but taking the Opponent’s case at its highest and assuming the mark is pronounced as ‘bee vee ja lie’ the presence of the additional and highly unusual and distinctive syllables results in a significant aural difference.  Visually, while they share the first two letters ‘bv’, and I note the relevance of the fact that ‘bv’ is the first two letters of the Trade Mark, I consider it likely that the Trade Mark, when considered as a whole, will be viewed as one very distinct and unique word that is quite visually different to the Acronym Mark.  Conceptually, there is no obvious meaning of the Trade Mark, while the Acronym Mark either has no meaning or refers to the Opponent’s Beaulieu Vineyard.  Given the absence of any obvious meaning of ‘jalie’ I think it is unlikely that consumers would view the Trade Mark and consider that it made some reference to ‘jalie’ produced by or at the Beaulieu Vineyard.  Given the matters contemplated above I consider that the overall difference between the marks is such that when considered as a whole, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Acronym Mark.

18. I find that the Opponent has failed to establish the ground of opposition under s 44.

    Section 60

19. Section 60 of the Act is reproduced below:

    Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

20. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[11]

    [11] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

21. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[12]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[13]

    [12] [2000] FCA 1335, [81].

    [13] (1992) 33 FCR 302, 343.

1. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[14]

   [14] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

2. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[15] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[16]

   [15] (2000) 50 IPR 1.

   [16] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

3. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[17]

   [17] Qantas Airways Limited v Edwards [2016] FCA 729 at [142].

4. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The opposed trade mark is similar to one or more prior trade marks including the Opponent’s trade marks which are the subject of registrations Nos. 784574 and 1755260 which, as a result of extensive prior use in relation to the registered goods, have acquired a reputation in Australia.

5. I am satisfied on the evidence before me that the Figurative Mark had, before the relevant date, acquired a very limited reputation in Australia for wine, sufficient for the requirements under s 60(a) of the Act, given the length of time the Opponent and its predecessors in title have sold wine in Australia under the Figurative Mark and the considerable esteem in which the Figurative Mark is held. As discussed in paragraph 10 above, in the absence of any significant evidence of use of any of the other marks referred to in the SGP separate from the Figurative Mark, I do not make a similar finding in respect of any of those additional marks.

6. It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   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 usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[18]

   [18] (1937) 58 CLR 641, 658.

7. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

   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.

   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.[19]

   [19] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

8. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[20]

   [20] [2012] ATMO 124 at [40].

9. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[21]

   [21] [2016] FCA 729 at [142].

10. Furthermore, when considering the manner in which a trade mark is to be used I am to consider the notional use (that is, the fair and normal use) of the trade marks in question.  The Opponent’s Submissions (repeated in respect of various grounds of opposition) that the Trade Mark could confuse if reproduced in identical font and identical size to the Figurative Mark, are, in the absence of any evidence, entirely speculative.

11. In the present case, while the Applicant’s Goods and the Opponent’s Goods are similar there are significant differences between the Figurative Mark and the Trade Mark, with the Figurative Mark containing the very prominent words ‘Beaulieu Vineyard’ and the ‘BV’ device.  Conversely the Trade Mark, while it contains the letters ‘bv’ does so as part of the distinct and unusual word ‘bvjalie’.  Given the Figurative Mark’s limited reputation in Australia, and the considerable differences between the Figurative Mark and the Trade Mark I consider it unlikely that because of the reputation of the Figurative Mark, the use of the Trade Mark would be likely to deceive or cause confusion.

12. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

    Section 42

13. Section 42 of the Act is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    (a) the trade mark contains or consists of scandalous matter; or

    (b) its use would be contrary to law.

14. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[22]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[23]

    [22] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [23] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

15. The Opponent has particularised the ground of opposition in the SGP as follows: 

    In view of the reputation in one or more prior marks including the Opponent’s trade marks which are the subject of registration nos. 784574 and 1755260, any use of the opposed trade mark would be contrary to law, including a breach of the Australian Consumer Law (for example, sections 18 and 29), and/or constitute passing off.

16. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[24] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [24] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

17. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[25], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered — in connection with the superseded Trade Practices Act1974 (‘TPA’) — that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[26] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[27]

    [25] [2014] ATMO 65, [50].

    [26] [2003] FCA 104, [107].

    [27] [1989] FCA 506, [40] (citations omitted).

18. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Section 62A

19. Section 62A of the Act is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

20. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

21. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[28]:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[29]

    [28] [2004] EWCA Civ 1028; [2005] FSR 10.

    [29] [2012] FCA 81, [147].

22. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[30]

    [30] Ibid [165]-[166].

23. The Opponent has particularised this ground of opposition in the SGP as follows:

    The opposed trade mark contains the unusual prefix BV, which is an element common to a number of the Opponent’s prior trade marks, and the construction of the opposed trade mark is similar to the Opponent’s prior BEAULIEU trade mark.  The opposed trade mark can notionally be used in a manner which resembles the manner of use of the Opponent’s prior trade marks including those which are the subject of registration nos. 784574 and 1755260.  The Opponent considers that the Applicant adopted the opposed trade mark with the intention of gaining some benefit from the reputation subsisting in the Opponent’s trade marks.  Such conduct falls short of commercially acceptable behaviour.

24. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[31] Given the absence of any evidence of reputation in any of the marks referred to by the Opponent other than the Figurative Mark, and the considerable dissimilarities, both visual, aural and conceptual between the Trade Mark and the Opponent’s Trade Marks, I cannot conclude that the decision of the Applicant to adopt and seek to register a mark containing the acronym ‘BV’ along with the very distinctive term ‘JALIE’ in respect of wine, was a decision made to take advantage of the reputation of any of the Opponent’s Trade Marks. In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

    [31] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

    Decision

25. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1785757 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings
    9 April 2019