United Distillers & Vintners (Aust) Limited v Zakrytoye Aktionernoyne Obschestvo "Moskovskiy Pivo-Bezalkogolnyi Kombinat "Ochakovo"

[2003] ATMO 24

TRADE MARKS ACT 1995

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

Re:Opposition by United Distillers & Vintners (Aust) Limited to registration of trade mark application 816088(32) - a trade mark represented in CYRILLIC SCRIPT - filed in the name of Zakrytoye Aktionernoye Obschestvo "Moskovskiy Pivo-Bezalkogolnyi Kombinat "Ochakovo".

Date of Decision:

23 April 2003

Delegate:

Mary Skivington

Representation:

Opponent: Ms Frances Drummond of Freehills Carter Smith Beadle, Patent and Trade Mark Attorneys

Applicant: Ms Julia Baird of counsel instructed by Griffith Hack, Patent and Trade Mark Attorneys

DECISION:

S52 opposition - s44 not established - registration allowed. Costs awarded to the applicant.

Background

Zakrytoye Aktionernoye Obschestvo "Moskovskiy Pivo-Bezalkogolnyi Kombinat "Ochakovo", ('the applicant'), filed trade mark application number 816088 on 3 December 1999, to register the trade mark shown below, for beers in class 32.

 

The application carries the following endorsement in respect of the trade mark:

The applicant has advised that the Cyrillic characters appearing in the trade mark may be transliterated as STOLICHNOYE which is an adjective derived from the Russian word for CAPITAL and translated as SOMETHING OR SOMEONE WHO COMES FROM THE CAPITAL.

Acceptance of the application was advertised in the Official Journal of Trade Marks on 8 March 2001. United Distillers & Vintners (Aust) Limited, ('the opponent'), filed notice of opposition on 7 June 2001, citing grounds of opposition under sections 41, 42, 43, 44, 58, 60 and 62 of the Trade Marks Act 1995, ('the Act'). In due course evidence in support and in answer was filed and served and then, in accordance with regulation 5.13, the opponent advised it would not rely on evidence in reply. Both parties asked to be heard on the matter which came on before me, as a delegate of the Registrar of Trade Marks, in Sydney, on 12 March 2003. Prior to the hearing the opponent's agent advised that the only grounds of opposition upon which it would rely come under the provisions of section 44 of the Act.

The opponent was represented by Ms Frances Drummond, of Freehills Carter Smith Beadle, Patent and Trade Mark Attorneys.  Ms Julia Baird of Counsel, instructed by Griffith Hack, Patent and Trade Mark Attorneys, represented the applicant.

The evidence

Evidence in support

Declarant	Description	Date Made	Exhibits
Isabelle Schürer	Trade marks professional	4/12/01	Annexure 'A'

Evidence in answer

Declarant	Description	Date Made	Exhibits
Alexey Andreevich Kochetov	President of the applicant	29/8/02	Exhibits A -F

Declaration in support

In her statutory declaration dated 4 December 2001, Ms Schürer reports that the opponent is the owner of six trade mark registrations.  Annexure 'A' consists of status reports, from the Trade Marks Office's database, of particulars of these trade marks.  The relevant particulars are reproduced  in the table below.

Trade Mark No.	Priority Date	Trade Mark	Endorsement	Goods/Services
590305	12/11/92	STOLICHNAYA	Alcoholic beverages including vodka
298660	16/07/76	The word STOLICHNAYA means in English METROPOLITAN.	Russian vodka
590304	12/11/92	STOLI	Alcoholic beverages including vodka
665684	4/07/95	The applicant has advised that the translation of the  Russian word STOLICHNAYA appearing in the trade mark is  SOMETHING OR SOMEBODY THAT COMES FROM THE CAPITAL and has a  meaning such as METROPOLITAN.	Orange flavoured Russian vodka
719317	10/10/96	STOLICHNAYA OHRANJ ORANGE FLAVORED RUSSIAN VODKA	The applicant has advised that the translation of the RUSSIAN words word appearing in the trade mark is METROPOLITAN and ORANGE.	Orange flavoured vodka
762168	14/05/98	STOLICHNAYA BLUE SALYT	Alcoholic beverages including wines, spirits, vodka, pre-mixed alcoholic beverages, blended alcoholic beverages, wine based beverages

Declaration in answer

Alexey Andreevich Kochetov declares, in his declaration dated 29 August 2002, that he has worked for the applicant for twenty-three years and since 1993 he has been the President of the applicant.  He reports that he has worked in the alcohol and brewing industry for thirty-eight years.  He declares that the trade mark may be transliterated as Stolichnoye, a word derived from the Russian word for capital and which can be translated as something or someone who comes from the capital.  Mr Kochetov declares that the trade mark is registered in Russia for goods in class 32, and that the applicant is also the owner of an International Registration in class 32 for beers.  He reports that the applicant's beers, sold under the trade mark, have been distributed throughout Russia and to a number of countries that formerly were part of the USSR, as well as to Israel, Canada, Cuba, Pakistan, the UAE and the USA.  The exhibits include promotional materials and samples of the trade mark in use.

Opponent's submissions

Ms Drummond said that for the purposes of the section 44 grounds of opposition, the opponent relied on its registered trade marks numbered 590305, 298660, 665684, 719317 and 762168. She submitted that the applicant's evidence does not show any use or reputation of the trade mark in Australia. She observed that the word formed from the Cyrillic characters, CTOЛИЧHOE, may be transliterated as STOLICHNOYE which, she claimed, is deceptively similar to STOLICHNAYA and has the same meaning. Ms Drummond referred to the tests set down in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd, 109 CLR 407, for determining deceptive similarity. She said that the comparison is between:

(a) the impression based on recollection of the opponent's marks that persons of ordinary intelligence and memory would have; and

(b) the impression that such persons would get from the applicant's mark.

In comparing the marks, she said, the effect of each mark as a whole should be considered, not only visually but orally. She claimed that the CTOЛИЧHOE trade mark and the STOLICHNAYA trade marks are for alcoholic beverages which are predominantly purchased upon verbal demand.  She noted that per Dixon and McTiernan JJ in Australian Woollen Mills Limited v F S Walton & Co Limited, 58 CLR 641:

The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. 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.

Ms Drummond placed considerable emphasis on the aural significance of the trade mark and in support of her submissions referred to Companhia Souza Industria E Comercio v Rothmans of Pall Mall (Australia) Ltd, 41 IPR 497, Aristoc Limited v Rysta Limited, 62 RPC 65 and London Lubricants (1920) Appn, (1925) 42 RPC 264. She said that Australian consumers are not familiar with Cyrillic characters and would need to be educated as to the pronunciation. It is likely, Ms Drummond submitted, that when consumers request goods by the trade name, in a place of high ambient nose, such as a bar, there will be confusion because of the similarity in pronunciation of STOLICHNAYA and CTOЛИЧHOE (STOLICHNOYE). She submitted that because the trade marks share a number of key verbal elements, because there is a general tendency for Australians to slur their speech and to lack skill in pronouncing foreign words, and because the goods are likely to be sold in places of entertainment where there may be considerable ambient noise and in circumstances where clarity of speech may be challenged, the potential for confusion is high.

Ms Drummond submitted that the tests for determining if goods are of the same description were defined in Jellinek's Application (1946) 63 RPC 59. The factors to be considered, she said, are the nature of the goods, the uses of the goods and the trade channels employed. In respect of the natures of the goods she noted that trade marks 590304, 590305 and 762168 cover alcoholic beverages and trade marks 298660, 665684 and 719317 are for vodka. The subject application is for beers. All of these beverages are alcoholic. Beers and other alcoholic beverages, she said, are sold in liquor stores, bars, hotels, clubs and other such venues, so that the trade channels are identical. Finally Ms Drummond asserted that Australians tend to order alcoholic beverages by their trade names only, without referring to the type of beverage and this behaviour, she claimed, supports the notion that beer is of the same description as other alcoholic beverages.

Applicant's submissions

Ms Baird said that the opponent's evidence in support consists only of a recitation of details of the opponent's six registered trade marks along with annexed status reports.  She submitted that it provides no evidence of use, no evidence of the trade channels through which the goods are traded and no evidence demonstrating an appreciation of what consumers may or may not do in relation to the opponent's goods or in relation to the applicant's goods, to which the respective  trade marks will be applied.

Ms Baird noted that the opponent accepts that Australian customers will need to be taught how to transliterate and pronounce the trade mark.  However, she said, this ignores the fact that the trade mark has visual impact and can be seen as a device.  She suggested that a Roman character approximation of the Cyrillic characters, CTOЛИЧHOE, is CTOANYHOE.  This, she said, is visually and phonetically different, being CTO-ANY-HOE, from any of the trade marks cited by the opponent.  She submitted that it was a misconception that Australian consumers would first of all recognise that the characters are Cyrillic characters, transliterate them and then correctly pronounce them as STOLICHNOYE.  Ms Baird said there is no evidence that the characters will be understood by a significant number of Australian purchasers, nor is there any evidence that the trade mark conveys a known meaning and idea to purchasers, that is also likely to be conveyed, by any of the trade marks cited by the opponent.

Ms Baird submitted that in determining whether or not trade marks are substantially identical or deceptively similar, the tests set down in Shell, supra, should be considered, noting that at 416 Windeyer J added:

[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances.

She then referred to the criteria for determining deceptive similarity as set out in Australian Woollen Mills Ltd v. F S Walton & Co. Ltd, (1937) 58 CLR 641, per Dixon and McTiernan JJ. and by Parker J, in Pianotist Co's Application,  (1906) 23 RPC 774, and reiterated by the High Court in Cooper Engineering Pty Limited v Sigmund Pumps Limited, (1952) 86 CLR.

Regarding the matter of whether or not beer is a good of the same description as the various alcoholic beverages in the cited trade mark registrations, Ms Baird submitted that this should be assessed in terms of the well known tests defined in Jellinek's Application supra and expanded upon in Beck, Koller & Company's Application 64 RPC 76 and summarised in McCormick & Co v McCormick 51 IPR 102. While acknowledging that no single matter is decisive, she observed that goods are not necessarily similar, simply because the are sold for human consumption in common trade channels. She submitted that beer and vodka are manufactured by different processes; beer is not sold as a pre-mixed or flavoured drink but vodka may be; and wines are different from beers because they are produced from grapes grown in vineyards dedicated to the purpose.

The law and discussion

Section 44 of the Act provides that a trade mark must be rejected if the applied-for trade mark is substantially identical with or deceptively similar to a trade mark which has an earlier priority date, and which is in respect of similar goods. In this case it is not disputed that the trade marks cited by the opponent have earlier priority dates.

In respect of the term 'substantially identical' Windeyer J said, in Shell, supra:

(the two marks) 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.

In a side by side comparison the visual differences between the applicant's trade mark and all of the cited trade marks are considerable. The applicant's trade mark begins with the letters CTO and ends with the letters HOE whereas the opponent's trade marks begin with the letters STOLI, and with the exception of trade mark 590304, end in the letters NAYA.  All of the cited trade marks, with the exception of trade marks 590305 and 590304, contain additional materials which further serve to differentiate the trade marks.  There is an overall impression of dissimilarity between the subject mark and the cited marks so that the applicant's trade mark is clearly not substantially identical with any of the opponent's trade marks.

On the matter of deceptive similarity, Dixon and McTiernan JJ, in Australian Woollen mills v F S Walton & Co Ltd, supra, said:

[...] in deciding this question, the marks ought not, of course, to be compared side by side.  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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part.  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 observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

I think the impression or recollection which is carried away and retained, of the applicant's trade mark, is that it is a Russian word mark.  While some Australian customers may make an effort to learn how to pronounce it, I think it is as likely as not, that they would request the goods by reference to it as the 'Russian beer', or by pointing to the wanted product, or, as Ms Baird has suggested, they would try to anglicise the word and pronounce it to accord with the anglicisation.  Given the Australian penchant for abbreviating words, it is possible that purchasers might refer to the beer by the easily recognized, (in English) and pronounceable final syllable, HOE. 

Even those who learn how to pronounce the word correctly, will not, I believe, be deceived or confused into thinking the goods originate from the same source as the opponent's goods.  I have been provided with no evidence to support the proposition that consumers are likely to transliterate and/or translate foreign language trade marks.  Nor have I any evidence that consumers are likely to conclude that goods carrying a foreign word trade mark emanate from the same source, as other goods carrying an English word mark, on the basis that the foreign word has the same meaning as the English word.  Customers will not, in my opinion, disregard the visual differences in the trade marks.  In Cooper Engineering Co Pty Ltd  v Sigmund Pumps Ltd, 86 CLR 536, Dixon, Williams and Kitto JJ said:

But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea ...  To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all the words conveying the same idea as his trademark.  The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.

While some Australian customers may have a sufficient knowledge of the Russian language to recognise that CTOЛИЧHOE transliterates as STOLICHNOYE, a word that is to some extent similar in appearance and sound to STOLICHNAYA and that these words are similar in meaning, I do not believe that this will lead to deception or confusion. It is generally acknowledged that most Australians are not well versed in the Russian language, and because of this, such customers will, I think, qualify in some way a request for CTOЛИЧHOE beer, to ensure that CTOЛИЧHOE brand beer is the one they will receive.

In Registrar of Trade Marks v. Woolworths Ltd, (1999) 45 IPR 411, at paragraph 45, French J said:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

at paragraph 46, His Honour continued:

The question for the Registrar and the Court is not whether consumers might be confused (in the sense of wondering about common origin or connection) but whether there is a reasonable likelihood that they will be confused.

On the basis of the material before me I am not satisfied that there is a reasonable likelihood of deception or confusion between the applicant's trade mark and the opponent's registered trade marks and as a consequence, this ground of opposition has not been established. Given that I am satisfied that the subject application is not substantially identical with or deceptively similar to any of the trade marks cited by the opponent, I have no need to consider the question of whether or not beers are goods of the same description as vodka, or any other of the alcoholic beverages,  for which the opponent's various trade marks are registered.

Decision

Because I have found that the subject trade mark is neither substantially identical with nor deceptively similar to any of the opponent's trade marks the opposition fails.  I direct that trade mark application number 816088, for the trade mark CTOЛИЧHOE, may proceed to registration 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 the appeal has been decided or discontinued.

Costs

Both parties have sought costs. However, it is usual for costs to follow the event, and I see no reason here to deviate from that course. I direct that the opponent pay the applicant's costs in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Mary Skivington

Hearing Officer

Trade Marks Hearings

23 April 2003