Treasury Wine Estates Vinters Limited v Serafino Maglieri

[2013] ATMO 52

TRADE MARKS ACT 1995

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

Re:Opposition by SERAFINO MAGLIERI to registration of trade mark application 1131636 (33) - STEVE MAGLIERI - filed in the name of TREASURY WINE ESTATES VINTNERS LIMITED.

Delegate:	Heath Wilson
Representation:	Opponent: David Kell of Counsel instructed by Christine Ecob of Johnson Winter & Slattery, Lawyers. Applicant: Ben Fitzpatrick of Counsel instructed by Allens Patent & Trade Mark Attorneys.
Decision:	2013 ATMO 52 Section 52 opposition – sections 42(b), 43, 59 and 62A of the Act pursued – no grounds of opposition established – trade mark to proceed to registration.

Background

1. In 2010 the matter of Foster’s Wine Estates Ltd v Serafino Wines Pty Ltd[1] was heard and a delegate of the Registrar of Trade Marks refused registration of the trade mark Serafino Maglieri (no. 1033609) in the name of Serafino Wines Pty Ltd for wines. That trade mark was refused registration under section 44 of the Trade Marks Act 1995 (‘the Act’) as it was found to be deceptively similar to an earlier trade mark registration for MAGLIERI. Some of the evidence considered by the delegate in that matter has been served in the opposition below, but (as will become evident) the considerations are quite different. During the course of the current proceedings it was noted that the notice of opposition in the previous matter was filed on 25 August 2006, the same day that the currently opposed trade mark application was filed.   

   [1] Foster’s Wine Estates Ltd v Serafino Wines Pty Ltd [2010] ATMO 81

2. On 25 August 2006, Maglieri Wines Pty Ltd applied to register the trade mark subject of the current opposition, namely, STEVE MAGLIERI (‘the Trade Mark’). The trade mark application was made in relation to wines – goods that reside in class 33 of the NICE Classification of Goods and Services. The ownership of the trade mark application was subsequently assigned to Foster’s Wine Estates Limited and later from that company to Make Wine Pty Ltd.

3. The Trade Mark was examined under section 31 of the Act. Objections were raised by the examiner under section 44 of the Act, but one of the citations was refused (the abovementioned Serafino Maglieri: no. 1033609) and the other objections were withdrawn as the remaining trade marks were assigned to Make Wine Pty Ltd.

4. The Trade Mark was advertised as accepted in the Australian Official Journal of Trade Marks on 25 November 2010. On 23 February 2011, Serafino Maglieri (‘the Opponent’) filed a notice of opposition nominating grounds under sections 41, 42, 43, 58, 59, 60, 62 and 62A of the Act.

5. On 23 March 2012, the Trade Mark was assigned from Make Wine Pty Ltd to Treasury Wine Estates Vintners Limited (I will now refer to this company throughout this decision as ‘the Applicant’).

6. The evidence stages for the parties followed the filing of the notice of opposition. On 23 May 2013, the Applicant filed an application for permission to rely on further evidence. I subsequently indicated an intention to allow that evidence into the proceedings after assessing the nature of the material and the reason for its lateness. After inviting written submissions and further oral submissions from the parties at the hearing, I permitted the further evidence to be relied upon. By that time, the Opponent had provided its own evidence in response which I similarly allowed. I have detailed all the evidence below.    

Evidence

Evidence in Support 

• Statutory declaration of Serafino Maglieri dated 17 November 2011 with exhibits SM-1 to SM-15

• Statutory declaration of David Anthony Schultz dated 17 November 2011.

• Statutory declaration of Christine Ecob dated 22 November 2011 with exhibits CLE1 to CLE3.

• Statutory declaration of Martin Clarke Baily dated 16 November 2011.

• Statutory declaration of Terry James Davis dated 10 May 2011.

• Statutory declaration of Carey James Weston dated 21 November 2011.

• Statutory declaration of Patrick Francois Charles Salord dated 21 November 2011.

• Statutory declaration of Paul Geoffrey Turner dated 22 November 2011.

Evidence in Answer

• Statutory declaration of Sandra Elizabeth Forman dated 23 May 2012 with exhibits SEF-1 and 2.

Further Evidence

• Statutory declaration of Matthew Jordan O’Keefe dated 23 May 2008 with exhibits MJO-1 to MJO-8.

• Statutory declaration of Serafino Maglieri dated 30 May 2013.

The Agreement between the Parties

1. The history of the relationship between the Applicant and Opponent has particular relevance to this opposition. A particular issue of contention was the significance of clauses in an agreement entered into on 25 August 1998 (‘the Agreement’) for the purchase of Maglieri Wines Pty Ltd (‘Maglieri Wines’)[2]

   [2] Exhibit SM-2 to the first Serafino declaration.

2. The purchaser of the property in the Agreement was Mildara Blass Ltd (whose name later changed to Foster’s Wine Estates Limited). As a consequence, the purchaser is the Applicant’s predecessor-in-title. The vendors in the Agreement were Letizia Maglieri, the Opponent and Sepino Nominees Pty Ltd (a company jointly owned by the Opponent and Letizia Maglieri). The Agreement consisted of the sale of the business known as Maglieri Wines, its land, business premises and intellectual property (including certain ‘Maglieri’ trade marks).

3. The Agreement also included a restraint of trade for five years from the completion date whereby the vendors undertook that none of them would:

   [U]se the name “Steve Maglieri” or allow the name “Steve Maglieri” to be used as a brand name or label name on any product used in any business or activity which is the same as or similar to the business of the Company or any material part of it.[3]

   [3] Clause 12.1(b)(iv) of the Agreement.

4. The vendors also agreed that at any time after the completion date none of the vendors would[4]:

   [U]se a logo, symbol or trade mark, trade name or business name substantially identical or deceptively similar to a trade mark or business name owned or currently used by [Maglieri Wines Pty Ltd], provided that this does not prevent Mr Maglieri from being referred to:

   (A) as a wine maker on any product produced by any business after the expiration of 5 years from the Completion Date; or

   (B) in his capacity as a shareholder or director (as the case may be) of a company conducting a business of the nature described in clause 12.1,

   after the expiration of 5 years from the Completion Date.     

   [4] Clause 12.1(c)(ii) of the Agreement.

5. Clause 13.15 of the Agreement also specifically provides:

   At the expiration of the restraint period referred to in clause 12.1, being 5 years from the Completion Date, Mr Maglieri shall grant [Maglieri Wines Pty Ltd] an exclusive licence to use the name “Steve Maglieri” on terms to be negotiated in good faith by the parties.

6. The five year restraint period expired in August 2003. At the expiration of that period no licence to use “Steve Maglieri” was negotiated between the parties.  

7. Upon execution of the Agreement, the Applicant became the owner of the trade marks previously owned by Maglieri Wines and within the restraint period the Applicant sold a number of STEVE MAGLIERI Signature brand wines. The evidence before me indicates that the last vintage of the ‘Steve Maglieri Signature’ range of wines was produced in 1999. However, due to the nature of wine production and cellaring, this does not necessarily mean that 1999 was the last year that ‘STEVE MAGLIERI’ was used in the course of trade by the Applicant.

8. The Applicant is now the the owner of all Australian pending and registered trade marks incorporating the name ‘Maglieri’ in class 33. These trade marks include ‘Maglieri Wines when only the best will do’; ‘MAGLIERI’; ‘MAGLIERI of McLAREN VALE’; ‘MAGLIERI DOLCE BIANCO’, ‘MAGLIERI DOLCE RUSSO’ and, of course, the Trade Mark (STEVE MAGLIERI).

9. While I agree with Mr Kell’s submission that the Agreement does not provide a basis on which the Applicant can claim to be entitled to register the name ‘Steve Maglieri’ (and I accept that it does not include a sale of the name ‘Steve Maglieri’), neither does the Agreement prevent the Applicant from applying to register the Trade Mark. The relevant onus in trade mark opposition matters lies with the Opponent to establish that the Trade Mark should not be registered.

10. However, I also agree with Mr Fitzpatrick’s submission that the Applicant is not just any unrelated third party seeking trade mark registration of the name STEVE MAGLIERI. To find otherwise would be to ignore the Agreement, the other ‘Maglieri’ trade marks now owned by the Applicant and the fact that the Applicant’s predecessor in title used the Trade Mark around 1999 on the Signature brand STEVE MAGLIERI wines.  

The Hearing and the Onus of Proof

1. The matter was set down for hearing on 5 June 2012 in Canberra and I heard the parties on that day in my capacity as a delegate of the Registrar of Trade Marks. David Kell of Counsel appeared for the Opponent instructed by Christine Ecob of Johnson Winter Slattery, lawyers and Ben Fitzpatrick of Counsel made submissions on the Applicant’s behalf instructed by Allens Patent and Trade Mark Attorneys. 

2. As I mentioned above, the Opponent bears the onus of establishing a ground of opposition and it must do so on the civil standard of the balance of probabilities.[5] At the hearing, the Opponent pressed grounds of opposition under sections 42, 43, 59 and 62A of the Act. I will firstly address section 43 being the primary ground argued by Mr Kell.

   [5] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.

Reasons

1. Section 43 of the Act provides:

Section 43: Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. An inherent connotation that may exist within a trade mark must be likely to deceive or cause confusion for a ground of opposition under section 43 of the Act to be established. A ‘connotation’ in a trade mark, as Justice Gyles in Pfizer Products Inc v Karam[6] explained, is:

   [A] secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks (TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000) 100 FCR 358 at [43]; McCorquodale v Masterson at [25]–[26]).

   [6] Pfizer Products Inc v Karam (2006) 70 IPR 599 at [53].

2. In the current opposition, Mr Kell argued that the Trade Mark is the name of the Opponent who enjoys a personal reputation in the Australian wine industry. That being so, there would be an inherent connotation that the Trade Mark used in relation to wine has an association with, or endorsement of, the Opponent. The argument is that deception or confusion in the Australian marketplace would be likely to occur where no such association with the Opponent exists.

3. Decisions from delegates of the Registrar concerning purported connotations with well-known people are not uncommon.[7] The Trade Marks Office Manual of Practice and Procedure (‘the Manual’) also recognises that (at Part 29.4.4):

   [I]f an application is filed for the same name as that of a well-known person, and the goods or services are clearly likely to be perceived by consumers as connected with or having the endorsement of the well known person, or that he or she is involved in the production of the goods of the supply of the services, the provisions of section 43 may be triggered.

   [7] Marc Chagall Committee v Elite Wines & Spirits (2007) 73 IPR 552 (‘MARC CHAGALL’); White v Dupain (2007) 73 IPR 578; [2007] ATMO 52 (‘DUPAIN’; ‘MAX DUPAIN’); De Bortoli Wines Pty Ltd v Donald Edward Brown, Glenda Maureen Brown, Susanne Jayne Schreier, David Robert Brown and Andrew Donald Brown trading as Donald Brown & Co (SA) [2002] ATMO 98 (‘MELBA’); Also see Charles Kidd & Co’s Application (1959) 29 AOJP 1988 (‘SABRINA’).

4. There is a requirement for the person to be either generally well-known in Australia or well-known in relation to the specific goods/services for a connotation to exist. The ubiquitous position that should be established before a connotation in a trade mark can be said to deceive or cause confusion was discussed in Hasbro Inc v Imagination Holdings Pty Ltd[8], where the Delegate found:

   It is apparent that a sign contained within a trade mark might contain a deceptive or confusing connotation if it resembles or signifies a particular sign which is so ubiquitous, of longstanding [sic], or notorious that it has entered Australian parlance or is shown to have become accepted generally in Australia as connoting a particular person, entity or event or connoting a particular meaning (whether or not that particular sign has trade mark significance).

   [8] Hasbro Inc v Imagination Holdings Pty Ltd [2005] ATMO 43 at [45]; See also LD&D Foods Pty Ltd v Fantasyonice Limited. [2012] ATMO 105 at [40].

5. A common thread throughout discussions of section 43 is that the connotation within the trade mark should be immediate and direct and that there must be a real and tangible danger of confusion resulting from the inherent connotation. In other words, the probability of deception or confusion in the Australian marketplace must be finite and non-trivial.[9]

   [9] French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020 at [43].

6. In the matter before me, the denotation within the Applicant’s Trade Mark is immediate and direct, being the name of a person named Steve Maglieri. However, that fact is not sufficient by itself for section 43 to be established. Without sufficient evidence that Steve Maglieri is well-known as a winemaker in Australia, there will be no connotation that would be likely to deceive or confuse Australian consumers. I must therefore determine whether Steve Maglieri the vigneron (as opposed to the use of his name as a badge of origin) is well-known to the extent that deception or confusion would result from the mistaken belief that the Trade Mark is associated with him.

7. The Opponent bears the onus of demonstrating that knowledge exists in the Australian marketplace. Having said that, the Opponent’s personal reputation is not the sole consideration of whether deception or confusion will occur. In McCorquodale v Masterton[10] Kenny J made it clear that:

   Plainly enough, however, whether a mark or part of it connotes the sponsorship or approval of a person, entity or institution will depend on all the surrounding circumstances. In each case, it will be a question of fact and degree.

   [10] McCorquodale v Masterton [2004] FCA 1247 at [53] (‘DIANA’S LEGACY IN ROSES [and device]’).

‘Steve Maglieri’

1. Born in Italy, Serafino Maglieri arrived in Australia in 1966. Shortly after arriving he began to use the adopted first name ‘Steve’ and he continues to be referred to as ‘Steve Maglieri’ to this day. In 1972 he established ‘Gully Wines’ in the McLaren Vale of South Australia. Gully Wines was later renamed Maglieri Wines.

2. In 1979 and 1992 the Opponent was crowned the McLaren Vale ‘Bushing King’ for the best red wine from that region. In 1997, Maglieri Wines won the best Shiraz at both the Great Australian Wine Challenge and the London International Wine Challenge. At one point in the 1990s Maglieri Wines became the largest seller of a particular red wine variety in Australia. 

3. With regard to the Opponent personally, he received the National Australia Bank Ethnic Business Award for South Australia and Northern Territory in 1995 and was nominated for the South Australian Italian of the Year in 1996. The Opponent was awarded the rank of ‘Cavaliere’ (equivalent of a knighthood in England) by the Italian Government in 2002, and in 2010, he was awarded the higher rank of ‘Ufficiale’. Both awards use Mr Maglieri’s birth name, Serafino Maglieri.

4. While acting as a director of various companies, the Opponent has been active in the Italian/Australian community, particularly in Adelaide. He has been a guest speaker on the subject of wines at South Australian Rotary Clubs, various Lions Clubs and has represented South Australia in Italy for global conferences. He was also a member of the committee for Carnevale and became an Ambassador for the South Australian Business Ambassadors Network in 2006. 

5. When Maglieri Wines was sold in 1998, the restraint period for the Agreement ran from August 1998 until August 2003. As mentioned previously, the clauses in the Agreement prevented the Opponent from using ‘Steve Maglieri’ as a brand or label name. According to the Agreement, the Opponent was also restrained from making direct or indirect references to the name ‘Maglieri’ or to any person associated with that name. However, the Agreement did not prevent the Opponent from disclosing his capacity as a shareholder or Director.

6. After the sale, the Opponent established and became a director of Serafino Wines Pty Ltd in 2000 later producing around 30,000 cases of wine per year. The Opponent’s evidence annexes extracts from the Serafino Wines website which mention the name ‘Steve Maglieri’ providing a brief history of his involvement in the Australian wine industry. Mr Maglieri could also be referred to as a winemaker on products produced after the completion of the restraint period. However, the Opponent makes it clear[11] that he did not in fact use his name as a winemaker on any product in either 2003 or 2004. 

   [11] Second statutory declaration of Serafino Maglieri, paragraph 7.

7. The effect of the restraint of trade is evident in the fact that numerous awards the Opponent has subsequently won invariably refer to the ‘Serafino’ brand of wines rather than any reference to ‘Maglieri’ or ‘Steve Maglieri’. Despite this fact, the name Steve Maglieri is briefly mentioned in the 2007, 2008 and 2010 editions of the ‘James Halliday Australian Wine Companion’ as one of the winemakers behind the production of Serafino Wines.

8. It appears that any reference to ‘Maglieri’ or ‘Steve Maglieri’ in the Opponent’s evidence was severely curtailed for five years following the Agreement and that use of the name after the completion date has also been minimal. The emphasis during the restraint period has instead been on Mr Maglieri’s actual first name, that is, in ‘Serafino Wines’.  I find that these events have had an adverse effect on consumer knowledge of the name ‘Steve Maglieri’ in Australia. This is not to say that the Opponent was not being referred to as Steve Maglieri during this time, but it is the knowledge of Australian wine consumers that I must consider.

‘Likely to deceive or cause confusion’

1. In the first place I note that the name ‘Steve Maglieri’ as a whole is an uncommon name. Secondly, there is no doubt that the goods claimed in the specification of the Trade Mark (wine) are the relevant goods the Opponent is known to trade in.[12]

   [12] Baron Philippe de Rothschild SA, Societe Civile de Chateau De Lafite Rothschild, and Groupement Foncier Agricole Des Vignobles De La Baronne Philippine De Rothschild v DCI International Pty Ltd [2011] ATMO 2 (‘NATHAN ROTHSCHILD’) is an example of a decision where the nature of the goods (cutlery rather than wine) precluded a finding of deception or confusion under section 43.

1. In relation to consumer knowledge, the Opponent has supplied a number of statutory declarations from third parties attesting to the likelihood of confusion arising from a connotation within the Trade Mark. Martin Baily is a member of the Board of Directors of Sevenhill Cellars in the Clare Valley, South Australia. He has over 30 years experience in the retailing of wine in Australia. His opinion on the likelihood of confusion is this:[13]

   There is a broad range of levels of knowledge of wine amongst consumers purchasing products at liquor stores. Of those consumers who purchase bottled wine I would estimate that about half of them would have a reasonable knowledge of wine and winemakers. If a new wine were to be launched under the label “STEVE MAGLIERI” I would expect the more knowledgeable wine consumers would assume that that wine would be made by, or come from a winery owned by, Mr Steve Maglieri.

   [13] Baily declaration, paragraph 8.

2. Or, to put it another way, around fifty per cent of customers who walk into a bottle shop to purchase bottled wine have a reasonable knowledge of wine and wine makers but an even smaller proportion of that group (i.e. those who are more “more knowledgeable”) would realize the connection with the Opponent and are likely to make incorrect assumptions on that basis.

3. Mr Fitzpatrick submits that it is just as likely that wine consumers would understand that the use of a person’s name on the label of a wine bottle is no guarantee of that person being involved in its manufacture. In his submissions Mr Fitzpatrick provided some examples from the Australian wine industry where trade marks containing or consisting of the names of winemakers have been sold to large companies.

4. Carey Weston is the General Manager of Shingleback Wine Pty Ltd in the McLaren Vale. He has over 20 years experience in marketing and selling wines in Australia and has been aware of the Opponent since 1987. Mr Weston is also aware of the Opponent’s sale of Maglieri Wines. He states:[14]

   Wine consumers vary a great deal in wine knowledge. However, from my knowledge of Australian wine consumers, I have no doubt that the more informed wine consumers would recognise the name “STEVE MAGLIERI” and associate it with high quality wines from Steve Maglieri in the McLaren Vale in South Australia.

   [14] Weston declaration, paragraph 3.

5. He asserts that the use of a person’s full name on a wine label (as opposed to just the surname) reinforces a personal involvement of the winemaker in the winery. While consumers unfamiliar with individual winemakers may associate a wine bearing a label STEVE MAGLIERI with some individual of that name, those consumers are unlikely to know who Mr Maglieri is. Without the requisite knowledge of who the person is, confusion cannot be said to occur as a result of the connotation it may present by appearing on a wine label.

6. Finally, Patrick Salord is the sommelier of Fraser’s Restaurant in Perth, Western Australia having held that position for approximately 16 years. He also has over 20 years of experience in selling wine. He offers his own opinion:[15]

   On average I find that customers in the four restaurants tend to be quite well informed about wines. I think that the majority of them would recognise Steve Maglieri’s name and associate him with Serafino Wines. In my view, if restaurant patrons in our restaurants saw Steve Maglieri’s name on a wine that was not produced by Serafino Wines they would be confused and not understand why Steve Maglieri’s name was being used on that wine.   

   [15] Salord declaration, paragraph 3.

7. A commonality between the opinions from these wine experts is that for any association with the Opponent to occur, the relevant Australian wine consumer needs to be (at the very least) knowledgeable or well-informed. If, for example, an Australian consumer is aware of the reputation in the Serafino wine brand and the Opponent, that consumer would also need to understand that the Opponent and Steve Maglieri is the same person.   

8. For the Applicant, Mr Fitzpatrick argues that there is a connotation in the Trade Mark but the connotation is that a consumer would assume the Trade Mark belongs to the entity controlling the other MAGLIERI trade marks appearing on bottles in their local liquor store. This is an external consideration arising from the reputation of other trade marks and is not an appropriate issue for section 43. In Big Country Developments Pty Ltd v TGI Friday's Inc[16]:

   The case on deception and confusion sought to be made by Big Country and Friday’s Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s43.

   [16] Big Country Developments Pty Ltd v TGI Friday's Inc (2000) 48 IPR 513.

9. While I am not convinced by Mr Fitzpatrick’s argument of the alternative connotation, any belief that a ‘Steve Maglieri’ wine would be seen as belonging to the owner of other Maglieri trade marks would lessen the likelihood that a connotation with the Opponent would confuse or deceive those particular consumers.

10. While I have no doubt that the name ‘Steve Maglieri’ is known amongst the more knowledgeable wine consumers across Australia and perhaps also within the South Australian community, I am not convinced that the name has gained a currency in Australia in general or more specifically amongst consumers of wine such that deception or confusion would be the result.

11. After consideration of all the evidence I find that a connotation does not exist in the Trade Mark which would be likely to deceive or cause confusion under section 43 of the Act. If there is any danger of confusion as a result of a signification inherent in the Trade Mark I am not satisfied it is real and tangible and section 43 of the Act has not been established.

Section 42(b): Trade mark use contrary to law

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

    (b)  its use would be contrary to law.

1. Under subsection 42(b) of the Act, the Opponent must establish that the use of the Trade Mark “would”, not “could”, be contrary to law.[17] The Opponent argued that the use of the Trade Mark would be contrary to law as it would constitute misleading or deceptive conduct under section 18(1) of the Australian Consumer Law.[18] Despite this argument, the Australian Consumer Law did not come into force until 1 January 2011, which is after August 2006, the filing date of the Trade Mark.

   [17] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at 32 [28].

   [18] Competition and Consumer Act 2010 (Cth), Schedule 2: Section 18.

2. I will, however, consider Mr Kell’s submissions with reference to the equivalent (and almost identical) section of the now repealed Trade Practices Act 1974 (‘the TPA’). It provides:

   Section 52. (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive.

3. After setting out the trade practices cases relevant to the current matter, Mr Kell highlighted what he described as “Steve Maglieri’s long standing reputation and association with quality winemaking” and argued that use of the Trade Mark by the Applicant would therefore be likely to mislead or deceive a significant number of consumers. The comments within the Weston, Baily and Salord declarations mentioned under the consideration under section 43 of the Act were referred to as evidence supporting that conclusion. I have already addressed the contents of these declarations earlier in my decision and the likelihood of deception or confusion arising from the use of the Trade Mark.

4. The Applicant owning a “family” of Maglieri trade marks is an important factor here. The use of the Trade Mark would likely be seen as a reasonable extension of trade marks it already owns. As use of a trade mark which may “deceive or confuse” under section 43 is a broader test than use which is likely to “mislead or deceive” under section 52 of the TPA, I am also not satisfied that the reputation of the Opponent himself reaches the requisite level for this ground to be established. On the evidence before me, I am not satisfied that use of the Trade Mark “would” as opposed to “could” be contrary to law. Section 42(b) has not been made out.

5. With regard to the remaining grounds of opposition pursued by the Opponent, it is convenient to address sections 59 and 62A of the Act concurrently. The Opponent’s submissions for both of these grounds are based around the same argument.

Section 59: 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.

Note:  For applicant see section 6.

Section 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.

1. In support of both of the above grounds of opposition, Mr Kell pointed to the fact that the application for the Trade Mark was filed on the same day that the notice of opposition was filed against trade mark application no. 1033609. The inference, he argues, is that the Applicant only filed this trade mark application on a “tit for tat” basis.

2. In relation to the section 59 ground of opposition, the Applicant enjoys a prima facie assumption arising from the act of filing that it intends to use the Trade Mark[19], but that assumption may be rebutted by slight evidence from the Opponent.[20]

   [19] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605.

   [20] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1966] HCA 51; (1967) 116 CLR 254.

3. Mr Kell submits that as the Trade Mark was filed for strategic reasons, the Applicant does not intend to use it and critically did not intend to use it as at the time of filing.[21]  Mr Kell argues that because of the circumstances surrounding the date of filing, the onus has shifted to the Applicant to demonstrate an intention to use the Trade Mark. He subsequently highlights the failure of the Applicant to respond to the challenged intention to use the Trade Mark.

   [21] See Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437 at [67-68].

4. The purported challenge to the Applicant’s intention to use is (in my view) not well-defined in the evidence. The statutory declaration of Christine Ecob simply annexes a copy of the history for trade mark application no. 1033609 and notes that the notice of opposition to that trade mark was filed on the same day as the Trade Mark was filed. It was only when the written submissions were filed that the significance of this evidence in relation to a section 59 ground would have crystallised.

5. In his own submissions, Mr Fitzpatrick offers the alternative explanation that the Applicant, having realized the Opponent was intent on registering trade marks incorporating ‘Maglieri’, took legitimate steps to protect its existing rights in the ‘Maglieri’ name.

6. The Applicant has not provided any recent instances of use of the Trade Mark but if the onus does not shift from the Opponent I do not believe that it needs to do so. In addition, as Dodds-Streeton J found in Suyen Corporation v Americana International Limited[22]:

   There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.

   [22] Suyen Corporation v Americana International Limited [2010] FCA 638 (21 June 2010) at [207].

7. Without more, mere non-use of a trade mark does not shift the onus to the Applicant and neither does the onus shift because the date of a previous opposition and the current application coincide. As the onus has not shifted to the Applicant to answer the allegation, I find that the ground of opposition under section 59 of the Act has not been established.

8. Section 62A of the Act was introduced via item 35 of the Trade Marks Amendment Act 2006 which received Royal Assent on 23 October 2006. Part 36 of the Amendment Act contained application provisions for section 62A of the Act. It reads:

   The amendment made by item 35 applies to:

   (a)applications for registration of trade marks made after the commencement of this item; and

   (b)applications for registration of trade marks pending but not accepted at that commencement.

9. The Trade Mark was filed on 25 August 2006, but was not accepted until November 2010 and section 62A of the Act is therefore applicable and a valid ground of opposition.

10. However, in arguing that the Trade Mark was filed in bad faith, Mr Kell again points to the timing of the filing of the trade mark application. For the reasons given under the section 59 discussion, and since it has been generally accepted that a finding of bad faith should not be made lightly,[23] I am similarly not convinced that a finding of bad faith can be reached on the facts and evidence in this matter. The ground of opposition under section 62A of the Act has not been established.

    [23] Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited [2009] ATMO 26.

Decision

Section 55 (1) of the Act 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.

1. The Opponent has not established a ground of opposition under the Act. As a result, the Opponent is unsuccessful. I accordingly direct that trade mark application no. 131636 may proceed to registration after one month from the date of this decision.

2. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.  

Costs

1. As the Applicant has been successful in this matter, it is entitled to costs, which I award against the Opponent as per the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson
Hearing Officer
Trade Marks Hearings
8 July 2013