Willunga Hundred Pty Limited - [2023] ATMO 168

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2232221 (33) – WILLUNGA 100 and device – in the name of Willunga Hundred Pty Limited

Delegate:

Louise Tuohy

Representation:

Applicant: David Stewart of Bennett Litigation and Commercial Law

Decision:

2023 ATMO 168

Trade Marks Act 1995 (Cth) – section 33 proceedings – s 43 considered – trade mark likely to device or cause confusion – trade mark application rejected

Background

This decision follows from an ex parte hearing at the request of Willunga Hundred Pty Ltd (‘Applicant’) pursuant to s 33 of the Trade Marks Act 1995 (Cth)[1] (‘Act’) in relation to the following trade mark application:
Application Number:   2232221
Trade Mark:    (‘Trade Mark’)
Filing Date:  30 November 2021
Specification:  Class 33: Wine (‘Designated Goods’)
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) ( ‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) ( ‘Regulations’).
The application was examined as required by s 31 and a ground for rejection was raised under s 43. The first examination report issued on 3 December 2021 and raised the following ground for rejection:
Issues raised under Section 43 of the Trade Marks Act 1995.
Your trade mark is, or contains, WILLUNGA which is the name of a wine growing area in South Australia. It is likely that purchasers of your goods would be confused or deceived about the origin of your goods if the goods did not come from that area.
What you can do now
You can overcome this problem by agreeing, in writing, to add this endorsement to your application:
It is a condition of registration that the trade mark will only be used in respect of wines produced predominantly from grapes grown in the Willunga area.
In support of the application, the Applicant made submissions arguing that Willunga is not a location which produces wine. It is not a geographical indication of any wine region or sub-region. It happens to be a locality/township to the south of McLaren Vale on the Fleurieu Peninsula in South Australia.
The examiner did not find the submissions persuasive and maintained the s 43 ground for rejection. The Report stated that Willunga is an official sub-region of the McLaren Vale wine growing wine region of South Australia. As such, this is an area which is associated with wine production. The Applicant did not respond to the second examination report, instead it exercised its right to be heard.
The matter came before me, a delegate of the Registrar of Trade Marks on 5 October 2023. David Stewart of Bennett Litigation and Commercial Law, represented the Applicant, making verbal and written submissions on its behalf and filed the following declarations:

Declaration of Jeremy Stevenson, Director of the Applicant, made on 3 October 2023 (‘Stevenson’).
Declaration of Hoa Thi Nhu…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] ATMO 168
Decision Date: 30 October 2023

CaseChat Overview and Summary

The applicant, Willunga Hundred Pty Limited, sought to register a trade mark. The Registrar of Trade Marks, represented by Louise Tuohy, considered whether to accept or reject the application. The dispute centred on the potential for the trade mark to deceive or cause confusion, as contemplated by the *Trade Marks Act 1995* (Cth).

The primary legal issue before the court was whether there were grounds under the *Trade Marks Act 1995* to reject the trade mark application. Specifically, the court had to determine if the proposed trade mark, as presented, was likely to deceive or cause confusion, thereby falling foul of section 43 of the Act.

The Registrar reasoned that the wording in the initial examination report, which proposed an endorsement to limit the trade mark's use to wines produced from grapes grown in the "Willunga area," was insufficiently clear. The terms "Willunga area" and "predominantly" were not adequately defined. Despite being offered an opportunity to consent to a revised endorsement, the applicant declined. Consequently, the Registrar concluded that there was a ground for rejection under section 43 of the Act.

The Registrar rejected trade mark application number 2232221.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

However, I agree with the Applicant that the wording in the endorsement offered in the first examination report[8] does not clearly define the terms ‘Willunga area’ or ‘predominantly’. On 16 October 2023 I informed the Applicant it was my intention to refuse to register the Trade Mark and invited it to consider the following endorsement: It is a condition of registration that the trade mark will only be used in respect of wines produced from grapes grown in Willunga[8] See also Para [2] above. On 24 October 2023 the Applicant informed me that it does not consent to the proposed endorsement. Section 33 provides:33Application accepted or rejected(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:(a)the application has not been made in accordance with this Act; or(b)there are grounds under this Act for rejecting it.(2)The Registrar may accept the application subject to conditions or limitations.(3)If the Registrar is satisfied that:(a)the application has not been made in accordance with this Act; or(b)there are grounds under this Act for rejecting it;the Registrar must reject the application. Under s 33, I must accept the trade mark application unless there are grounds under the Act for rejecting it. I am satisfied that there is a ground under s 43 for rejecting trade mark application number 2232221. Therefore, I reject the application.