Vina Concha Y Toro SA v Southcorp Brands Pty Limited

[2012] ATMO 107

TRADE MARKS ACT 1995

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

Re:Opposition by Vina Concha Y Toro SA to registration of trade mark application 1310810(33) - DEL DIABLO LOCO - filed in the name of Southcorp Brands Pty Limited.

Delegate:

Iain Thompson

Representation:

Opponent: Mr Peter Wallis of Counsel instructed by Allens Patent & Trade Mark Attorneys

Applicant: Written submissions by Watermark Patent & Trade Mark Attorneys

Decision:

2012 ATMO 107

s52 opposition to registration: sections 44, 60, 43, 42(b) and 61 argued – trade marks not deceptively similar; reputation of Opponent’s trade mark not established by evidence; no connotation arising from Trade Mark on the basis of it being Spanish words.

Opposition not established.

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Southcorp Brands Pty Limited (‘the Applicant’) details of which appear below:

Application No: 1310819

Priority Date:  22 July 2009

Goods:  Class 33: Wine

Trade Mark:  DEL DIABLO LOCO (‘the Trade Mark’)

1. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 19 November 2012.

2. On 19 February 2010, Vina Concha Y Toro SA, (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice is couched in broad terms and includes the grounds under sections 44, 60, 43, 42(b) and 61 of the Act which were relied upon by the Opponent at a hearing of the matter. For the sake of completeness I find that the grounds other than those relied upon by the Opponent at the hearing have not been established and note that any ground may be relied upon should my decision be appealed to the Court where the matter will be considered de novo.

3. The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 20 September 2012.  The Opponent relied on written submissions by its attorneys, Sean McGuire and Karen Sinclair of Watermark Patent and Trade Mark Attorneys.  Peter Wallis of Counsel, instructed by Allens Patent & Trade Mark Attorneys, appeared for the Applicant.

Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; 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 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Evidence

1. The parties have served and filed evidence in support, evidence in answer and evidence in reply as allowed by the Trade Marks Regulations 1995.  This evidence comprises statutory declarations by:

   Evidence in Support

   Sean McGuire dated 17 February 2011

   Manuel Ramos dated 11 February 2011

   Evidence in Answer

   Owen Malone dated 12 October 2011.

   Evidence in Reply

   Christobal Goycoolea dated 10 April 2012.

2. The Opponent relies on the Australian registration and use of its trade mark CASILLERO DEL DIABLO (‘the Opponent’s trade mark’).  Details of the Opponent’s trade mark registration are:

Registration No:              639017

Priority Date:  26 August 1994

Goods:  All goods included in class 33

Trade Mark:  CASILLERO DEL DIABLO

Endorsements:                The applicant has advised that the English translation of the Spanish words in the mark is DEVIL'S SHELF WITH PIGEON HOLES.

1. Mr McGuire’s declaration exhibits that of Mr Carlos Uxo dated 3 November 2006 which I surmise was made in relation to the Opponent’s opposition to registration of trade mark application 1071134(33) Dos Diablos.[2]  Mr Uxo was at the time of making his declaration an Associate Lecturer teaching Spanish language at LaTrobe University and his Curriculum Vitae is attached as Exhibit 1 of his declaration.

   [2] This application was subsequently withdrawn and the matter was not heard.

2. Mr Uxo states that the English translation of the Spanish words ‘casillero del diablo’ is ‘devil’s cellar’.  I note that this statement conflicts with the endorsement which appears on the Opponent’s registration and that this discrepancy does not affect the outcome of these proceedings.

3. Mr Ramos is the authorised attorney and Sub Manager of Foreign Collect and Trademark Department of the Opponent.  He attests to the Chilean history of the Opponent’s vineyards, the Opponent’s trade mark and to the Opponent’s use of that trade mark in Australia.

4. Concerning the Australian use of the Opponent’s trade mark, Mr Ramos states:

   The [Opponent’s] trade mark was first used in relation to wines in Australia in 1993, and has been used continuously in Australia since that time.

   The first varieties that were exported to Australia in 1993 were Cabernet Sauvignon, Chardonnay, Merlot and Sauvignon Blanc. Today, wines sold in Australia bearing the trade mark also include Carmenere, Malbec, Pinot Noir, Shiraz, Shiraz Rose and Viognier.

   My Company's original distributor in Australia was Impesco Wines Australia Pty Ltd. In about September 2005, my Company entered into an exclusive Australian distribution agreement with Coles Limited (formerly Coles Myer Ltd.) (‘Coles’). The first importation purchase order that Coles placed with my Company was for nine shipping containers each containing approximately 10,800 bottles of wine bearing the [Opponent’s] trade mark. This order was received in approximately December 2005, although some sales of wine bearing the [Opponent’s] trade mark were made by Coles prior to this date.

   Wine bearing the [Opponent’s] trade mark was sold at each of Coles' retail liquor stores across Australia, including Vintage Cellars, 1st Choice Liquor Superstores and Liquorland stores pursuant to a staged roll out successfully through these outlets in accordance with Coles' defined marketing strategy for the product. At the time, this amounted to approximately 700 retail outlets across Australia in every mainland state. My company's wine bearing the [Opponent’s] trade mark continues to be sold through Coles' retail liquor stores and is also available for purchase over the Internet through Vintage Cellars' website for delivery in every state of Australia including Tasmania.

   Wine bearing the [Opponent’s] trade mark is regularly featured in reviews by wine industry writing experts in Australia. Attached as Annex-7 is a quotation from Nick Stock in Australia's Wine Business Magazine in 2006 and extracts from Taste Food & Wine 2007. The Wine Business Magazine is a high quality targeted circulation publication that is direct mailed to over 3,000 wine industry people including winery owners and managers.

5. And concerning the other marketing and promotional activities involving the Opponent’s trade mark, Mr Ramos states:

   Coles has engaged in significant promotion of wine bearing the [Opponent’s] trade mark in Australia. The initial campaign in Christmas 2005 featured a Shiraz wine in the Vintage Cellars Christmas Catalogue. This catalogue was distributed by insertion into 1.8 million national and metropolitan newspapers Australia wide. Wine bearing the [Opponent’s] trade mark featured in the Cellar Press catalogue in March 2006, August 2006, September 2006 and February 2007 by direct mail to approximately 120,000 Australian members of Coles' Wine Club. Advertising of wine bearing the [Opponent’s] trade mark was also undertaken though Coles' seasonal catalogue for Easter 2007 "A Vintage Easter." Promotion of wine bearing the trade mark was also provided to Coles' staff through the team member magazine "Team Spirits." Copies of these catalogues, including the January/February 2009 Vintage Cellars catalogue, are attached as Annex-8.

6. Mr Ramos also provides confidential details about amounts expended by Coles on advertising in relation to the Opponent’s trade mark and volumes of sales.  I note, however, that the expenditure appears to be limited to the placement of the product in Coles free catalogues where the product is one of many which appear in such catalogues each competing for the readers’ attention.

7. In his declaration made in answer, Mr Malone states that he is the Director, Intellectual Property, of Treasury Wine Estates Limited (‘Treasury Wine Estates’) of Southbank, Victoria, and that the Applicant is a wholly owned subsidiary of Treasury Wine Estates.  Mr Malone is responsible for the correct usage and protection of all intellectual property of Treasury Wine Estates which includes all of the trade marks of the Applicant.  Mr Malone states:

   The [Opposed Trade Mark] was developed by the Applicant's marketing team in approximately July 2009 as a master brand for a relatively high-priced boutique range of wines. The theme adopted for marketing the […] concept was a dark, apocalyptic one. The sub-brands developed at the same time were ANGEL OF THE ABYSS, ABANDON ALL HOPE, and HORSEMEN OF THE APOCALYPSE.

   To date, wines bearing the [Opposed Trade Mark] have been offered for sale in New South Wales, Queensland, South Australia, Tasmania, Victoria and Western Australia. The indicative retail price range for DEL DIABLO LOCO wine is between $45 and $55 per bottle and, as such, it is regarded as being in the upper echelon of super premium wine.

8. Mr Malone also addresses the English meaning of the Spanish words that form the Opposed Trade Mark and states:

   I am informed and verily believe that the Spanish words DEL DIABLO LOCO appearing in the mark may be literally translated as 'Of the Crazy Devil' or 'Of the Mad Devil', or more colloquially as 'The Crazy Devil' or 'The Mad Devil'. The concept or idea of both the literal and colloquial translations of the mark is therefore reflective of the state of mind or temperament of the devil.

9. Much of the balance of Mr Malone’s declaration might be properly characterised as being submission.

10. Ms Goycoolea is Marketing Director of the Opponent.  The entirety of her declaration, apart from information identifying her and her authority to declare on behalf of the Opponent, is argument which purports to rebut the submissions in the declaration of Mr Malone.

Section 44

1. Section 44 of the Act relevantly provides:

   Identical etc. trade marks

   44.(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) the applicant's trade mark 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).

   Note 3:  For priority date see section 12.

2. As the priority date of the Opponent’s registration is earlier than that of the opposed application, and the goods are similar goods, and it is not argued by the Opponent that the trade marks are substantially identical, it falls to be decided whether the trade marks of the parties are deceptively similar.

3. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at Windeyer J said at [13]:

   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 television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. 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" (1937) 58 CLR, at p 658

4. The comparison is to take place in the context of the marketplace for the particular goods: In Re Application by Pianotist Company (1906) 1A IPR 379 at 380; 23 RPC 774 at 777 Parker J said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

5. The process of assessing whether trade mark are deceptively similar to each other is informed by the factors discussed in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 by French J at [50]:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) 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.

   (iii) 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.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

6. The Opponent’s submissions tend to focus very closely on the word ‘diablo’ and words ‘del diablo’ which both trade marks share.  The Opponent submits:

   […] that the Opponent’s evidence establishes that the impression or recollection which is carried away and retained by potential consumers of the Opponent’s wine is DEL DIABLO, or the idea of the ‘Devil’. We submit that Australian consumers are unlikely to recall or gain an impression of the CASILLERO element of the Opponent’s mark, but are very likely to recall DEL DIABLO, the “Chilean Devil wine” or something along these lines. This conclusion is supported by the evidence, given that there is so much discrepancy as to the meaning and pronunciation of CASILLERO. Indeed, some consumers may simply think that CASILLERO means ‘Chilean’ in Spanish.

   In this regard we note the comments of Luxmore LJ in Rysta Limited’s Application (1943) 60 RPC 87 at 108:

   It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution... The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

   The Opponent’s evidence establishes that CASILLERO is an unrecognisable word in English speaking countries, and therefore the average Australian wine consumer is unlikely to refer to it when requesting the Opponent’s wine. Taking into consideration imperfect recollection, but in particular that Australian consumers are unlikely to recall CASILLERO at all, we submit that DEL DIABLO LOCO so nearly resembles CASILLERO DEL DIABLO that it is likely to cause confusion. Moreover, as the respective goods are identical (ie. wine) we submit that it is much more likely that similarities in the respective marks will prove deceptive

7. I am unable to locate in the evidence the declarations from Australian consumers as to their recollections of the Opponent’s trade mark to which the above submission refers and there is no official record of this evidence being served and filed.  Nor am I certain why consumers might conclude that the Opponent’s wines are from Chile rather than, for example, Spain based on an appreciation of the language of Opponent’s trade mark alone.  The Opponent’s evidence does not provide the number of unlicensed South American restaurants in Australia but my sense tells me that if instances of confusion were to occur on the basis suggested in the above submission (which I do not consider they would) they would be a frequency so low as to not render any confusion which might arise a ‘likelihood’.  Further, I do not consider that the evidence establishes that the word ‘casillero’ is ‘unrecognisable’ to most Australian consumers than might otherwise be, for instance, an invented word.  However, for example, the Arabic word for cellar (سرداب) might fit into the category which the Opponent apparently invokes.  I thus consider that the Opponent’s submission may be otherwise taken as putting it to me that the word ‘diablo’ is submitted to be an essential feature of the Opponent’s trade mark and as such the Trade Mark is likely to be misremembered for it.

1. Additionally, while the Opponent places emphasis on the notion that the word ‘casillero’ in the Opponent’s trade mark is somehow entirely invisible, if the logic of the submission is valid, it follows that as the word ‘loco’ within the Opposed trade mark is at least as well-known to English speakers as is the word ‘diablo’, and consequently much more recognisable than is the word ‘casillero’, the Opposed trade mark should be readily distinguishable on this basis from the Opponent’s trade mark.

2. Concerning the public’s imperfect collection of a trade mark, in Rysta Ltd’s Application (1943) 60 RPC 87, Luxmoore LJ said in full (at 108-109):

   ‘The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistance ministering to that person’s wants.’

3. In Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9; (2010) 269 ALR 17; (2010) 86 IPR 437; [2010] AIPC 92-383 at [91] the Full Bench reaffirmed:

   The approach to the comparison to be made between marks that are said to be deceptively similar was summarised by this Court in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1:

   [73]               First, as the primary judge pointed out, the question of deceptive similarity of marks, unlike substantial identity, is not to be judged by a side-by-side comparison...

   [75]               Second, the question of deceptive similarity involves factual issues in respect of which similarities of sound may be important...

   [76]               Third, it is necessary to show a tangible danger of deception or confusion, although it is enough if an ordinary person entertains a reasonable doubt...

   [77]               Fourth ... the court must make allowance for the imperfect recollection a person may have of the registered trade mark in determining whether another mark so nearly resembles the registered mark that it is likely to deceive or cause confusion...

   [79]               Fifth, the authorities also recognise that the concept of imperfect recollection may be applied to trade marks other than those consisting simply of an invented word (as in Aristoc v Rysta and Berlei v Bali[3]). 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 well infringe the registered trade mark. The other mark may also infringe if there is a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of the words constituting an essential feature of the registered mark.

   [3] Berlei Hestia Industries Ltd v Bali Co. Inc [1973] HCA 43; (1973) 129 CLR 353

4. In Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [57] Greenwood J said of imperfect recollection:

   The question of imperfect recollection therefore is likely to be informed by, in part at least, the extent to which phonetic similarities arise and whether some part of the registered trade mark reflects an essential feature adopted by the applicant for the new mark. Two things inform imperfect recollection in transactions in which goods are bought and sold in oral transactions apart from broader contextual considerations. First, the degree of phonetic similarity is important. For example, in Berlei, the phonetic similarity was very significant as the phonetic pronunciation of the two marks exhibited the sounds Burley and Barley and in Rysta Ltd’s Application, the similarity was between Rysta and Aristocrat, with Viscount Maugham accepting Luxmoore LJ’s view of a tendency in speech to slur a word beginning with “a” resulting in a phonetic similarity of Rysta and Ristoc. Secondly, a part of the registered trade mark may be shown to be such an essential feature that it dominates the immediacy of recollection and may give rise to confusion.

5. Is the word ‘diablo’ an essential feature of the Opponent’s trade mark?  The answer to this question is, I consider, ‘probably’.  However, I do not consider the word ‘diablo’ is any more of an essential feature of the Opponent’s trade mark than are the other elements appearing within it because the word ‘diablo’ is not the first word within the Opponent’s trade mark; the first element within a trade mark is where stress usually lies as was stated in In the Matter of London Lubricants (1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264 at 279, by Sargant LJ:

   But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

6. Thus, whatever the English understanding of the word ‘casillero’ might be, it is a prominent feature of the Opponent’s trade mark and must be taken to be an essential feature of it.

7. Further, it is a mistake, I consider, to focus on only what are claimed to be the essential features of an opponent’s trade mark and ignore those within an opposed trade mark.  The word ‘loco’ in the Trade Mark is one well known to English speakers.  The word ‘loco’ has several ordinary English meanings, including one which will, within the context of the Spanish words with which it appears, be taken to mean ‘mad’ as it does in English.  The Oxford Dictionary defines the word ‘loco’ as meaning:

   A train engine, a locomotive.

   A member of supporter of the Loco-foco party; a Democrat.

   Any of several leguminous plants of either of the closely related genera Astragalus and Oxytropis (both of the subfamily Faboideae) found in the western and south-western United States, which produce loco disease when eaten by livestock (see sense 2). Also with distinguishing word.

   More fully loco disease. The disease of livestock caused by the ingestion of loco plants, typically characterized by neurological symptoms including incoordination, hypersensitivity to stimuli, and agitation, usually accompanied by weight loss.

   Mad, insane, crazy; off one's head. Freq. in to go loco.

   Etymology:  < Spanish loco mad, insane, crazy (13th cent.; implied earlier by locura madness (12th cent.)), related to Portuguese louco in the same meaning (13th cent.); further etymology uncertain and disputed.

8. Thus, I consider that it is probable that the ordinary person’s understanding of the Opponent’s trade mark will be that it is something to do with the devil.  However, it is equally as probable that the ordinary person will immediately understand the Trade Mark as specifically meaning ‘of the mad devil’ or referring to ‘the mad devil’ and distinguish between the trade marks on this basis.

9. Further, I note that the Opponent’s trade mark is not the only one on the Australian register of trade marks which includes the word ‘diablo’ and is registered in respect of, inter alia, ‘wine’.  There is one other such registration and it is owned by Cointreau:

Registration No:              912305

Priority Date:  9 May 2002

Goods:  Class 33: Alcoholic beverages (except beers)

Trade Mark:  

1. Accordingly, the word ‘diablo’ is not uniquely associated with the Opponent’s goods - at least on the register of trade marks.  I further note that word portion of the above trade mark consists of a foreign word of indeterminate meaning (‘passoä’) followed by the more prominent Spanish word DIABLO.

2. Taking the above factors into account, I consider that whilst it is possible that there might be confusion between the trade marks of the parties, I do not consider that the Opponent has established that it is likely that there will be confusion between the trade marks.

3. The Opponent has not established its ground under section 44 of the Act.

Section 60

1. Section 60 of the Act provides:

   60Trade 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.

   Note:For priority date see section 12.

2. In order to establish its ground under section 60 an opponent must establish that the trade mark on which it relies has a reputation before the priority date of the opposed application and because of that reputation the use of the opposed trade mark would be likely to deceive or cause confusion.

3. The relevant date for the consideration of this reputation is thus 22 July 2009.

4. In McCormick & Company Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, Kenny J said, at [81]-[82]:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   Does the evidence establish that in Australia before 9 March 1992 the  McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

5. The Opponent’s evidence which it submits establishes this reputation lies within the declaration of Mr Ramos which I have discussed above.  The claim for reputation must be assessed in the context of the marketplace for the Opponent’s goods which are wines.

6. As noted by the Full Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; [2001] ATPR 41-793; [2000] AIPC 91-640; (2000) 52 IPR 42 (‘Henschke’) at [4] the market for wines is a crowded one and there were at the time of that decision some 1000 wine producers in Australia who sold wine under more than 16,000 brands.

7. Against this market background, the evidence establishes that the Opponent’s trade mark has been used in Australia since 1993 and that the volume of sales under that trade mark was in general low until 2006 when goods bearing the Opponent’s trade mark began to be sold by Coles liquor outlets of which there were some 700 around Australia at the priority date.  The volume of sales under the Opponent’s trade mark in the three years between 2006 until the priority date are comparatively more substantial than before 2006 and Mr Ramos’s declaration exhibits catalogues in which its wines appear and two copies of Australian newspaper or magazine articles in which the Opponent wines are discussed.

8. The catalogues in which the Opponent’s wines appear are ‘free’ and distributed as newspaper inserts and each has several different brands of wine on each page.  In this environment, each brand struggles for attention.  For example, having examined each of these catalogues closely, I cannot remember any particular one of the brands other than the one I was corroborating actually appeared in those catalogues.

9. In those catalogues, typically, the price of each brand of wine is emblazoned on the page in typeface which is considerably larger than that of the trade mark under which the wines are sold.  This bears out the comments in Henschke that the bulk of wines are more typically sold at a price point and to ‘uninvolved’ consumers than they are by reference to a trade mark.  As I understand these observations, the effect of this dynamic is that premium wines – which are sold at a higher price point and to ‘informed’ consumers – are the ones whose trade marks tend to develop reputations more rapidly than do the trade marks of those which are sold at a lower price point.

10. The Opponent’s wine was sold at the lower price point and thus its trade mark might be inferred to develop a reputation more slowly than it would if it was a premium wine.

11. Moreover, while the Opponent provides the number of bottles of wine which bear its trade mark sold by retailers who stock its goods during the year ending 31 January 2007, and this amount looks very impressive at first glance, in fact the total represents about 200 bottles per retail outlet over that year or about 4 bottles per retail outlet a week.  As many hundreds of customers might be inferred to purchase wines from each Coles retail outlet every week, I am forced to the conclusion that Opponent’s trade mark is not, on this basis, to any extent ‘recognised by the public generally’.

12. Mr Ramos also discusses the very extensive promotion and sales of the Opponent’s trade mark elsewhere in the world from which an overseas reputation might be inferred to have arisen.  However, there is no evidence before me that any of this overseas reputation might have carried to Australia in the manner referred to in ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302; 106 ALR 465; (1992) 23 IPR 193; [1992] AIPC 90-892.

13. The Opponent has not established to my satisfaction that its trade mark had a reputation in Australia at the priority date and consequently cannot establish the ground under section 60.

Section 43

1. Section 43 of the Act provides:

   43Trade 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.

2. The Opponent here argues that there is a connotation which arises from the use of Spanish words within the Trade Mark.  The Opponent submits:

   […] that DEL DIABLO LOCO clearly has a connotation of the ‘devil’, as well as a connotation that wine bearing the trade mark originates in a Spanish speaking country.

   From the Applicant’s evidence, it appears that wine bearing the opposed mark will originate in Australia. This is likely to cause confusion given that the opposed mark is not in English. An Australian consumer wishing to quickly purchase a $10 bottle of wine of Chilean origin for dinner at a South American restaurant may see wine bearing the mark DEL DIABLO LOCO and mistakenly believe it is of Chilean origin, just like the Opponent’s wine.

   The Applicant says that wine bearing the opposed mark will be in a different price category to the Applicant’s wine. However, there is no restriction on how either the Opponent’s or the Applicant’s trade mark may be used, and there is no such condition on the use of either of the trade marks. Presumably, each trade mark could be used on wine in the same price category side-by-side in the $10 bin next to the counter of a drive-through liquor store. To the extent this occurs, the opposed mark is likely to cause confusion because only one of these wines originates in Chile – a wine region that has a significant reputation for quality wine due in part to the Opponent’s marketing. It is the notional use of these marks, not the actual use, which is relevant.

   Further, the Malone Declaration notes that DEL DIABLO LOCO can be translated as ‘Of the Crazy Devil’ or ‘Of the Mad Devil’ or colloquially as ‘The Crazy Devil’ or ‘The Mad Devil’ - all of which include DEVIL. However, there is no translation on the Register, despite even the Applicant being unsure of the translation. Regulation 4.3(5) provides that if a representation of a trade mark includes words of a language other than English, the Applicant must file in support of the application a translation of the words into English if requested to do so. The Trade Marks Examiner’s Manual Part 10.4 states that an example of when a translation would be necessary is where the English meaning is likely to impact on whether or not a ground for rejection will be raised. In view of the uncertainly as to the meaning, the examiner ought to have requested a translation of the mark, given the clear connotation of the DEVIL.

3. Section 43 of the Act requires not only that the connotation of the Trade Mark be established but also that, because of the connotation, the use of the Trade Mark in relation to the goods will be likely to deceive or cause confusion: Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428; (2009) 177 FCR 300; (2009) 81 IPR 279; [2009] AIPC 92-342 [86]. The likelihood of deception or confusion must flow from a secondary meaning inherent in the Trade Mark itself: Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 237 ALR 787 at [53] per Gyles J.

4. Accordingly, there are two questions for me to address for the purposes of section 43 of the Act:

   1.Do the Spanish words in the Trade Mark connote that the goods originate in a Spanish speaking country? And, if so,

   2.Because of this connotation, would the ordinary consumer be confused or deceived?

5. The connotation is said to arise because of the Spanish language of the words within the Trade Mark rather than from the meaning of the words.

6. The answer to the first question, above, is in my consideration a matter of plain common sense and it is ‘no’.  Australia is a land largely peopled by migrants from many different countries of the world in which many different languages are spoken.  Spanish speaking countries (where the language is either de jure or official) include Spain, Colombia, Peru, Venezuela, Ecuador, Guatemala, Cuba, Bolivia, Honduras, Paraguay, El Salvador, Costa Rica, Panama, Equatorial Guinea, Mexico, Argentina, Chile, Dominican Republic, Nicaragua and Uruguay.  It is not obvious to me why the Opponent should believe that the Trade Mark connotes that the goods originate in Chile rather than any of the above mentioned Spanish-speaking countries which also produce wine.  If it is because of the commonality of the word ‘diablo’ to the trade marks, this argument is akin to the genus of comparative process of the kind proscribed in Big Country Developments Pty Ltd v TGI Friday's Inc [2000] FCA 720; (2000) 100 FCR 358; 173 ALR 127; (2000) 48 IPR 513 where the Court stated at [43]:

   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.

7. In Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41; 95 CLR 190; [1956] ALR 854; 1A IPR 470 Dixon CJ observed at p194:

   The fallacy of asking what is the meaning of the phrase lies in the basal assumption that the words are intended to convey some definite meaning and perhaps the further assumption that the meaning has reference to the garments or the cottons. The assumption is fallacious because it overlooks the fact that language is not always used to convey an idea. Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude. This is true of much advertising, which common experience shows to be full of meaningless but emotive expressions supposedly capable of inducing a generally favourable inclination in the almost subconscious thought of the passing auditor or hasty reader. Words put forward as trade marks are very likely indeed to be chosen in the same way.

1. The above statement, with suitable adjustments, appears to apply to potential connotations (from the particular language only) of most foreign language trade marks (with the obvious proviso where applicable that the foreign expressions therein are otherwise registrable under the Act).

2. Most foreign language trade marks are not taken to indicate an origin for the goods or services in relation to which they are used only because of the language of such trade marks.  Many migrants to Australia from countries such as those listed above devise trade marks in their native language to indicate their personal connection with the country rather than as an indication of the origins of their goods or services.  Further, many Australian traders, whether recent migrants or not, coin trade marks which contain or consist of foreign words to evoke in the potential purchaser only an emotion, feeling, mental attitude, memory or perception connected with a foreign country rather than to connote an origin for the goods or services.  Thus a person can sit down to a slice of Danish and a Brazilian coffee in a Michel’s®[4] patisserie without being confused either as to the origins of the cake and coffee or the facts that the cakes do not originate in France or that the owner of the particular franchise (or of the trade mark itself) might not actually be French.  Such a trade mark is only evocative of French cafes and the person who thought otherwise might be regarded as being exceptionally careless or stupid.[5]  Perhaps a more pertinent example from the hundreds available on the Australian register of trade marks is Australian trade mark registration 944555(30, 32, 33) LA MAISON DU THÉ (which translates as ‘house of tea’) and which is registered for a broad range of goods including tea, coffee and chocolate, none of which is actually commonly grown in France, some of which is not ‘tea’, and which trade mark is also registered in respect of wine but has an Australian owner.  Other examples of apparently foreign language trade marks which are Australian owned and which are commonly encountered on the shelves of supermarkets or bottle-shops include 353118(30) VITTORIA (coffee), and 7078(33) CHATEAU TANUNDA (brandy).

   [4] See, for example, Australian trade mark registration 958256.

   [5] Australian Woollen Mills Limited v F.S. Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, per Dixon and McTiernan JJ at p 658: ‘On the other hand, exceptional carelessness or stupidity may be disregarded.’

3. On the above view, the connotation does not arise.

4. However, if the language of the Trade Mark does indeed give rise to a connotation it is not one which is likely to confuse or deceive.  I consider that most ordinary Australians when seeing the trade mark DEL DIABLO LOCO on a bottle of wine are not likely to assume that it was made either in a Spanish speaking country or in any particular Spanish speaking country because, as follows from the discussion above, Australians are accustomed to seeing a number of foreign language trade marks which are used only in an evocative manner, which do not connote a country of origin, and consequently Australians are not likely to be confused or deceived when they encounter such trade marks.

5. As the opposed trade mark does not connote that the goods originate in a Spanish speaking country, the Opponent has not established its grounds under section 43.

Sections 42(b) and 61

1. These grounds were argued by the Opponent in terms similar to those under section 43 – that is, that the language of the Trade Mark indicates a geographical origin for the goods. The grounds are not established for the reasons that I have stated under my discussion of the section 43 ground.

Other

1. The Opponent’s argument which has not been discussed is that which addresses the lack of a language endorsement on the opposed application. As discussed in relation to the ground under section 44, the meaning of the opposed trade mark is relatively clear and an endorsement is not required. Additionally, the lack of the endorsement is not, in itself, a ground for opposition.

Decision

1. Subsection 55(1) of the Act provides:

   55Decision

   (1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. The Opponent has not to any extent established a ground of opposition.

3. The Trade Mark may then 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 and the disposition of the application be in accordance with the Court’s order or direction.

Costs

1. Having been successful in these proceedings, the Applicant is entitled to its costs which I order against the Opponent at the Official Scale.

Iain Thompson

Hearing Officer

Trade Marks Hearings

14 November 2012