Vinzero Pty Ltd

[2023] ATMO 103

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2336347 (32) – VINZERO – in the name of Vinzero Pty Ltd

Delegate:

Louise Tuohy

Representation:

Applicant: Andrew Petale YIP Legal Pty Ltd

Decision:

2023 ATMO 103

Trade Marks Act 1995 (Cth) – ex parte matter pursuant to section 33 – section 41 considered – application rejected

Background

1. This decision is in respect of ex parte proceedings pursuant to s 33 of the Trade Marks Act 1995 (Cth) (‘Act’) at the request of Vinzero Pty Ltd (‘Applicant’) in relation to the following trade mark application (‘Application’):

   Application number:      2336347

   Trade Mark:  VINZERO (‘Trade Mark’)

   Filing Date:  22 February 2023

   Specification:  De-alcoholised wines; Aerated beverages (non-alcoholic); Aperitifs, non-alcoholic; Carbonated non-alcoholic drinks; Cider, non-alcoholic; Cocktails, non-alcoholic; Fruit flavoured non-alcoholic drinks; Fruit nectars, non-alcoholic; Ginger beer (non-alcoholic); Grain based non-alcoholic beverages; Non-alcoholic barley based beverages; Non-alcoholic beer; Non-alcoholic beer-based cocktails; Non-alcoholic beverages; Non-alcoholic beverages being punches; Non-alcoholic cocktail bases; Non-alcoholic cocktails; Non-alcoholic spirits; Beer; Alcohol-free wine; Alcohol-free beer; Alcohol free spirits; Alcohol-free beverages; Alcohol-free cider; Alcohol-free drinks (‘Designated Goods’)

2. The Application was examined as required by s 31 of the Act. The first examination report issued on 15 March 2023 raised a ground for rejection under s 41(4) of the Act as follows:

   My research indicates that VIN is French for wine, and ZERO in relation to non-alcoholic beverages is used to indicate that the goods are alcohol-free. Therefore, the trade mark as a whole indicates that the goods are alcohol-free beverages.

3. On 21 March 2023 the Applicant submitted a response to the first examination report. On 3 April 2023 a second examination report was issued maintaining the ground for rejection. The Applicant did not respond to the second examination report. Instead, the Applicant exercised its right to be heard by way of written submissions.

4. This matter was listed for a hearing before me, a delegate of the Registrar of Trade Marks on 1 June 2023. Andrew Petale of YIP Legal Pty Ltd filed written submissions and a declaration made on 31 May 2023, with Annexure AP-1 on behalf of the Applicant (‘Petale’).

Legislative Background and Reasoning

Section 41

1. Section 41 of the Act provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)  This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   (iii)  any other circumstances.

   (5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

2. Section 41 must be assessed having regard to s 33 of the Act, which embodies a ‘presumption of registrability’. Section 33(3) compels the Registrar to accept a trade mark unless the Registrar is satisfied that grounds exist under the Act for rejecting the application.

3. To determine the merits of the ground for rejection under s 41, the extent of the Trade Mark’s inherent adaptation to distinguish the Designated Goods must be assessed. In Clark Equipment Co v Registrar of Trade Marks, Kitto J stated that this was to be assessed:

   [B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[1]

   [1] [1964] HCA 55, [5].

4. The majority judgement of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’) indicated that the test for distinctiveness under s 41 of the Act involves a two-step process. The first step requires consideration of the ‘ordinary signification’ of the words proposed as a trade mark to any person in Australia concerned with the goods to which the proposed trade mark is to be applied. The second step involves considering whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar goods. ^[2]

[2] [2014] HCA 48, [71], (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).

The Applicant’s submissions

1. The Applicant submits that the Trade Mark should be considered according to its overall impression rather than according to the meaning of its individual elements.

2. The Applicant submits that the Trade Mark is a composite name consisting of the French word VIN and the English word ZERO. The Applicant notes that VIN is not a term which has been incorporated into the English language from the French language (such as croissant or baguette) and is not a defined term in the Macquarie Dictionary (6^th edition) (‘MD’).

3. The Applicant notes that the French word for “zero” is “zero” (accented) which is a subtle but important point of differentiation. If the trade mark applied for were VINZÉRO (accented), the mark as a whole would be more likely to be interpreted as the combination of two French words being VIN and ZÉRO. Since the letter E in the mark is not accented, it is less likely that the mark would be interpreted or perceived as the combination of two French words, but rather as the combination of VIN and the English word ZERO.

4. The Applicant submits that if it is accepted that the Trade Mark is a combination of elements from two or more languages, the case law indicates that a trade mark will almost always be inherently adapted to distinguish.

5. The Applicant submits that the word ZERO in the Trade Mark is a reference to the number ‘0’.  The Applicant notes that the word ZERO is commonly used in trade marks to allude to the absence of an ingredient or element of a product, not necessarily alcohol. For example SPRITE ZERO[3] alludes to the absence of calories, not alcohol.

   [3] Trade mark registration number 1078375.

6. In Petale, Mr Petale declares that his research identified a number of beverage products in the Australian market which contain the word ZERO as part of their brand name but do not indicate that those products are alcohol free beverages, including COKE ZERO, SUB ZERO HERO OF ZERO and BIO ZERO. Furthermore, Annexure AP-1 to Petale comprises copies of Australian registered trade marks that did not receive grounds for rejection based on s 41, including: FLUORIDE ZERO in class 32; AQUAZERO in classes 3 and 5; SLUSH ZERO in class 32; HOPZERO in classes 31 and 32; and BENZINA ZERO in class 12. Petale also includes an earlier filing by Mr Paul Legaz, a director of the Applicant, for the trade mark VINZERO in class 32 which was accepted and then lapsed due to owner not filing a Notice of Intention to Defend an opposition.

7. The Applicant also submits that the phrase VINZERO is not an expression which other traders would have a legitimate need to use in describing similar goods.

Discussion

1. I will start by addressing the Applicant’s submissions regarding the state of the Register in terms of various other trade marks which contain the word ZERO achieving registration apparently without the need to rely upon evidence of use. As to the Register being a gauge of the kinds of trade marks the Registrar considers registrable, I turn to the reference in Ocean Spray Cranberries Inc v Registrar of Trade Marks wherein Wilcox J disregarded evidence of other registered trade marks, stating:

   That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar at 305:

   “Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word ‘Treat’. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Marks [1996] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence”.[4]

   [4] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; 47 IPR 579, [35] (emphasis in original).

2. His Honour continued that ‘although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not’.[5]

[5] Ibid.

1. In regard to the Applicant’s argument that the word VIN in the Trade Mark is not a word which has been incorporated into the English language from French and that it is not defined in the MD, a search of the word VIN in the MD yields the following list of phrases:[6]           

   ·     au vin – cooked with wine

   ·     coq au vin – a dish of chicken cooked in wine

   ·     vin blanc – a French white wine

   ·     vin blank – white wine

   ·     vin ordinaire – a cheap wine generally for popular consumption

   ·     vin rouge – a French red wine

   ·     vin roush – red wine

These results from the MD show that use of the word VIN as a word element in other phrases adopted from the French language has an agreed meaning in Australia, that is, a reference to ‘wine’. As such, I am satisfied that the French word VIN is likely to be well known or familiar across a broad spectrum of the general community and that consumers seeing the word VIN on wine products would understand its meaning.

[6] Macquarie Dictionary online < 18 July 2023.

1. The meaning of the word ZERO is plain enough. The MD defines it as ‘naught or nothing’.[7] I agree with the Applicant that the word ZERO in the Trade Mark is from the English language and while the Applicant argues that the word ZERO is commonly used in trade marks to allude to the absence of an ingredient or element of a product, not necessarily alcohol, the word ZERO must be considered in the context of the Designated Goods. 

   [7] Macquarie Dictionary online < 18 July 2023.

2. In Australia the non-alcoholic beverages industry is booming, and Australian wine makers have responded to a global acceleration of moderation and abstention of products which contain alcohol by expanding their portfolios to offer consumers the choice of purchasing alcohol free products across wine categories. These new products have given rise to new terminology, in particular the word ZERO, to denote alcohol free products.

3. The Applicant has argued that if it is accepted that a trade mark is a combination of elements from two or more languages, the case law indicates that a trade mark will almost always be inherently adapted to distinguish. The Applicant relies on Smitsvonk N.V’s Application[8] where Lloyd-Jacob J found that persons coming into contact with goods bearing the trade mark SMITSVONK, which is made up of the surname SMITS and the Dutch word VONK meaning SPARK in the English language, would not understand the descriptive meaning advanced without stopping to reflect and ask themselves what meaning the words really possessed. However, I do not find the Applicant’s position persuasive. I have found that the meaning of the French word VIN and the English word ZERO are contextually dependent, and that, in relation to the Designated Goods would be readily understood by Australian consumers as meaning ‘non-alcoholic wine’.[9]

   [8] (1955) 72 RPC 117 (Ch D).

   [9] See Cantarella (n 2) [48], (Hayne, Crennan, Kiefel and Gageler JJ).

4. While I note that the Trade Mark is conjoined, I am satisfied that consumers are likely to read or hear the Trade Mark in two parts with a natural break between the words VIN and ZERO. Therefore, by joining the words together changes nothing in the meaning or creates an unusual and therefore distinctive idea.

5. The French word VIN has an ordinary signification to the relevant class of consumers concerned with the Designated Goods. In addition, members of the public, seeking to purchase wine that does not contain alcohol would know to look for the word ZERO. This is a combination of words which other traders who wish to signify that their products are ‘non alcoholic wine’ are likely in the ordinary course of their business and without any improper motive, to desire to use to indicate that their own similar goods.[10]

   [10] 111 CLR 511, 514.

6. In my view, the Trade Mark is to some extent, but not sufficiently inherently adapted to distinguish the Designated Goods. The Applicant has filed no evidence of use. Therefore, it is not necessary to consider the whether the Trade Mark is likely to distinguish having regard to the criteria set out in s 41(4)(b) of the Act.

Decision

1. I am satisfied that there is a ground for rejecting the Trade Mark under s 41 of the Act. In accordance with s 33(3) of the Act, I reject trade mark application number 2336347.

2. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application should be in accordance with the Court’s order or direction.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

26 July 2023