Wingara Wine Group Pty Ltd v T?Gallant Winemakers Pty Ltd
[2012] ATMO 93
•19 October 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Wingara Wine Group Pty Ltd to registration of trade mark application 1343223(33) - ODYSSEUS - filed in the name of T’Gallant Winemakers Pty Ltd.
Delegate: Debrett Lyons Representation: Opponent: John Gottschall of counsel, instructed by B2B Lawyers
Applicant: Tim Allen of Corrs Chambers WestgarthDecision: 2012 ATMO 93
S52 opposition: s44 ground established – trade marks deceptively similar - application refused – costs awarded against ApplicantBackground
On 2 February 2010 (‘the Priority Date’) T’Gallant Winemakers Pty Ltd (‘the Applicant’) filed an application under the Trade Marks Act 1995 (‘the Act’) to register ODYSSEUS (‘the Trade Mark’) in class 33.
The application was accorded number 1343223, examined under section 33 of the Act, accepted and advertised as ready for registration in the Australian Official Journal of Trade Marks dated 29 July 2010 in respect of “Alcoholic beverages (except beer); none being cocktails or mixed drinks”.
Within the statutory time limit Wingara Wine Group Pty Ltd (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to registration.
The parties then served and filed evidence as provided for by the Trade Mark Regulations 1995 (‘the Regulations’) and as described in more detail later.
The parties asked to be heard and at an appointed hearing which took place in Melbourne on 17 July 2012, acting as a delegate of the Registrar of Trade Marks, I took written and oral submissions. The applicant was represented by Tim Allen of Corrs Chambers Westgarth and the Opponent was represented by John Gottschall of counsel, instructed by B2B Lawyers.
The Opponent clarified that it pressed the following grounds of opposition:
· Section 41 – Trade Mark not distinguishing applicant’s goods
· Section 42(b) – Trade Mark use contrary to law
· Section 43 – Trade Mark inherently likely to deceive or cause confusion
· Section 44 – identical or deceptively similar trade marks with earlier priority
· Section 58 – applicant not owner of the Trade Mark
· Section 60 – use of Trade Mark would be likely to deceive or cause confusion
The onus is on the Opponent to establish at least one of those grounds on the balance of probabilities.[1] The date at which any ground must be established is the Priority Date.
[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [26]; Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])
The Opponent states in its written submissions that:
The citation relied upon by the Opponent in respect of each of the above grounds of opposition is the Opponent’s registered trade mark No. 720501 for the word, ODYSSEY. The cited mark is registered for goods in Class 33 which are described as “Wines”.
Evidence
The Opponent relies on the statutory declaration of Sean Shortt made 17 June 2011 as evidence in support of the opposition.
The Applicant’s evidence in answer comprises:
· the statutory declaration of Alex Haswell Ishii Hill made 13 October 2011;
· the statutory declaration of Anne Bernadette McAlaney made 16 November 2011; and
· the statutory declaration of Natalia Josephine Blecher made 27 October 2011.
The Opponent’s evidence in reply consists of the statutory declaration of Bradley James Parker made 24 February 2012.
The Applicant initially objected to the admissibility of the evidence in reply on the basis that it was served out of time and was non-compliant with paragraph 5.12 of the Trade Marks Regulations 1995 but at the commencement of the hearing Mr Allen made it clear that the Applicant retracted that objection and the hearing proceeded on the basis of all the evidence filed.
Discussion and Reasons
A convenient place for me to begin my consideration of the issues is with the ground of opposition under section 44 of the Act.
Section 44
In order for the Opponent to establish this ground of opposition it must identify a trade mark (or marks) that meets the following requirements:
· it is substantially identical or deceptively similar to the Trade Mark;
· it has an earlier priority date than the Priority Date of the application;
· it is registered or pending in respect of similar goods or closely related services; and
· it is owned by someone other than the Applicant.
The Opponent has identified trade mark registration 720501 (“the Registration”) with an earlier priority date of 29 October 1996 as the foundation for its section 44 ground of opposition.
The goods of the Registration are “Wines”. The Trade Mark has been accepted in relation to “Alcoholic beverages (except beer); none being cocktails or mixed drinks”. Section 14(1) states that goods are similar to other goods if (a) they are the same as the other goods; or (b) they are of the same description as that of the other goods. Alcoholic beverages include wines and to that extent the goods compared are the same. The remaining question is whether wines are goods of the same description as alcoholic beverages other than wine. In E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 the Full Federal Court held that beer and wine were goods of the same description. Although that decision can be read as authority to the effect that any alcoholic beverage is a good of the same description as any other alcoholic beverage it is clear, for present purposes, that wines and other class 33 alcoholic beverages are goods of the same description.
It was the Opponent’s submission that ODYSSEUS is substantially identical to ODYSSEY. The Opponent wrote that:
… the substantial identity is apparent both in the appearance of the words and in their aural affect. The question of whether marks are substantial identical is to be considered by comparing the marks “side by side”.[2] The visual and textual similarity of the words can be seen when they are written in juxtaposition:
[2] Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-5.
ODYSSEY
ODYSSEUS
Odyssey
Odysseus
The following conclusions are clear from the written words.
The first six letters of the respective marks (“ODYSSE”) are exactly the same. The letters that are identical amount to nearly the whole of the ODYSSEY word mark. These six identical letters do not commonly arise in English and are a feature shared by no other English words but “Odysseus” and the grammatical forms of “odyssey”.[3]
The only difference between the marks is that the “-y” at the end of ODYSSEY has been replaced with “-us” in ODYSSEUS.
This small difference between the words has minimal visual impact.
The letters “u” and “y”, that are the corresponding (seventh) letters of the respective words do not have a strong visual dissimilarity. They are both characters that are largely composed of an upwardly concave shape.
The letter “s” at the end of ODYSSEUS has little impact because the addition of an “s” is a common pluralisation in English and therefore has little effect in drawing attention to any difference between words (particularly words that are otherwise substantially composed of an identical string of letters).
It is to be noted that, while “Odysseus” is a proper noun and would be capitalised as such, the use of “Odyssey” as a trade mark would ordinarily involve the same capitalisation.
The aural similarity of the words can be appreciated with an ordinary knowledge and experience of spoken English. “Odyssey” is a commonly used English word. “Odysseus” is not a common English word. It is the name of a character of classic Greek history and the word is not used in English except as a reference to that character.[4] As stated above, “Odysseus” is spelt the same way as “odyssey”, with the exception of the last two letters. People of ordinary knowledge and experience would generally pronounce words that have nearly identical spelling in the same way. They would also tend to pronounce an uncommon word that has nearly identical spelling to a common word in the same way as they are accustomed to pronouncing the common word (unless there is some reason to depart from the ordinary rules of pronunciation).
[3] Shortt declaration at 33.
[4] Shortt declaration at 34.
In Overdrive Holdings Pty Ltd v Gloria Hackmann [2012] ATMO 89 Hearing Officer Thompson wrote:
The question which remains is whether the trade marks of the parties, XSELL and IXSELL, are substantially identical.
In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at [12] Windeyer J said of ‘substantial identity’:
In considering whether marks are substantially identical they 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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115 , and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291 , per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered.
The subsequent comments of Windeyer J concerning a visual comparison of the trade marks have been clarified by Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901; (2003) 132 FCR 326; (2003) 204 ALR 90; (2003) 59 IPR 318; [2003] AIPC 91-919 at [57]:
The respondent, relying on Shell, submitted that the comparison may only be visual and that aural similarity, while relevant in considering deceptive similarity, is not relevant in determining whether two marks are substantially identical. I find nothing in s 44 of the Act that draws this distinction. ‘Identical’ is relevantly defined as ‘corresponding exactly in nature, appearance, manner, etc’ (Macquarie Dictionary, revised third edition). While Windeyer J in Shell compared the visual and not the aural features, that was in the context of the marks there under consideration and does not assist Enterprises in precluding consideration of the aural characteristics. The requirement of substantial identity recognises that the identity is not absolute but, as is clear from Shell, the question involves a consideration of the essential elements of the mark, the matters that are ‘exactly similar in everything that matters for all relevant purposes’ (Ex parte O'Sullivan; re Craig (1944) 44 SR (NSW) 291 at 298). It is not limited to appearance. In considering the total impression, both the visual and aural aspects are relevant. Further I note that s 7(2) of the Act specifically provides that aural representation is a use of the mark.
Mr Wallace, for the Opponent, submitted that:
The only difference is that the opposed mark has the letter “I” at the beginning, with the remainder of the mark being the whole of the Opponent’s mark. The addition of this singular first person personal pronoun does not disguise the duplication of the essential feature of the marks, namely XSELL. […] Because the total impression that emerges is virtually the same, the minimal difference is not sufficient, in our submission, to result in a conclusion other that the marks are substantially identical because the main substance of the marks, namely XSELL, is the same.
In considering both the trade marks under consideration, the impression which is formed is that of the word ‘excel’. Both of the trade marks refer to the word ‘excel’ in the same manner and use the identical ‘pun’ on the word ‘sell’. The alphabetical letter ‘I’ is, in my consideration not prominent on either a visual or aural consideration of the Trade Mark and the impression gained from the trade marks is almost entirely of the identical play on the word ‘excel’ and its similarity to the feature XSELL.
In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 the Full Bench of the High Court said at [69]:
The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark ". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).
By analogy with the above, the addition of the letter I to the Opponent’s trade mark XSELL is not one which constitutes an alteration or addition which substantially affects the identity of the trade mark XSELL. The word XSELL is the phonetic equivalent of the word ‘excel’ which is the distinguishing feature by which both parties’ services offered will be identified and requested.
I do not believe that the aural similarity of the words ODYSSEY and ODYSSEUS is quite as close as the Opponent contends. Although the termination of many words can be almost lost when enunciated, I hear a clear added syllable in the case of ODYSSEUS. Visually the marks are similar, but not so similar as are XSELL and IXSELL. Moreover, there is a common meaning inherent in both those trade marks whereas, to my mind, a person of ordinary education and intelligence would see ODYSSEY as a word with a dictionary meaning and ODYSSEUS as a personal name or an invented word. Whilst Shell asks for a side by side comparison of the trade marks, the final assessment of substantial identity is not a matter of scientific precision and in this case, close as the trade marks may be, I am not sufficiently persuaded by the Opponent’s submissions to find that the trade marks are substantially identical.
The alternate submission made by the Opponent was that the trade marks are deceptively similar. The expression ‘deceptively similar’ is defined by section 10 of the Act:
10Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
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
The comparison is to also pay regard to the factors discussed in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020, (‘Woolworths’) by French J who said:
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.”
The third factor (iii) just listed means that that assessment of deceptive similarity is not a purely abstract exercise. In other words, the assessment is contextual and is to take place against the marketplace in which the goods in question are sold, a matter on which the Applicant placed great store.
Nevertheless, the question whether the use of a trade mark is likely to deceive or cause confusion is in the end a question of impression and common sense; it is a ‘jury question’ in which the decision maker is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion: Murray Goulburn Co-operative Ltd v New South Wales Dairy Corporation [1990] FCA 32; (1990) 24 FCR 370 at 377.
The Opponent submitted that:
The word “odyssey” derives its meaning from the story of the epic journey of Odysseus and the word, itself, is derived from Odysseus’ name.[5] “Odyssey” can either specifically refer to the journey of Odysseus or, more generally, refer to journeys sharing the qualities of Odysseus’ journey (such as by being long or adventurous). A person with a background of the classics would understand this connection. However, most people of ordinary intelligence and memory would not be expected to call to mind a detailed understanding of the classics and would commonly not appreciate this. They would recognise the word ODYSSEY and they would perceive ODYSSEUS as a word spelt almost the same way. … An awareness of the ODYSSEY mark by a consumer is likely to trigger recognition when the consumer later encounters the ODYSSEUS mark.
[5] See, The Concise Oxford Dictionary of Current English 3rd Ed. Oxford University Press 1934. The entry for “odyssey” gives the meaning and etymology of the word as follows: “One of two great ancient-Greek national epics (cf. ILIAD) describing adventures of Odysseus or Ulysses returning from the siege of troy; any of the 24 books of this (in the fourth etc. ~ ); series of wanderings, long adventurous journey. [f. L f. Gk Odusseia (Odussius, IA1)]. The latin origins (from the Greek) of the English words do not suggest that “Odysseus” (“Odusseus” in latin) ought to be pronounced differently to “Odyssey” (“Odusseia” in latin), except for the endings of the words.
…
Evidence has been advanced on behalf of the Opponent as to the features of the wine market that bear on the recognition of marks by consumers in that market. This evidence has not been seriously challenged by the Applicant. The market has the following features.
It is a diverse market with a large number of wine products (there are over 2000 winemakers in Australia alone).[6]
Australian wine consumers are faced with a large number of brands.[7]
Australian wine consumers are exposed to wine brands from a variety of sources including their own experiences, peer recommendations, advertising and reviews.[8]
Australian wine consumers make choices based on experience and knowledge about brands of wine gathered over years (several, possibly more).[9] Such recollections will commonly be affected by the passage of long periods of time.
By reason of the above matters, consumer recollection of wine brands is commonly vague and imprecise and involves impressions created by brands they have encountered.[10]
Most wine retailers or licensed premises that sell wine stock only a selection of available wines.[11]
Consumers are therefore faced with different selections of wine at different points of sale and at different times.[12]
If both the ODYSSEY and ODYSSEUS marks were to be used, it would be uncommon for Australian wine consumers to see both the products at the same time.[13] Consumers would therefore not commonly be alerted to the existence of two so nearly identical marks in respect of wines they might be expected to choose between.
[6] Shortt declaration at 21.
[7] Short declaration at 26.
[8] Shortt declaration at 28, 30 and 31.
[9] Shortt declaration at 28.
[10] Shortt declaration at 32.
[11] Shortt declaration at 29.
[12] Shortt declaration at 29.
[13] Shortt declaration at 22-3.
For its part, the Applicant argued that:
Wingara’s evidence is primarily directed at the familiar trade mark law concept of the likelihood of confusion allowing for consumers’ imperfect recollection. … In this opposition, Wingara is trying to significantly over-extend the concept of imperfect recollection.
At [32] of the Shortt Declaration, it is said that:
“wine consumers’ choices are commonly based on past experiences and influences relating to many brands of wine acquired over long periods of time ... [T]his large exposure to different brands over time means that consumers’ recall of wine brands is often imprecise and includes recollections of wine brands that are vague and/or may be a mere impression created by a brand at an earlier time.”
Again, this statement impermissibly extends the concept of imperfect recollection to a general state of confusion arising from the highly populated Australian wine market.
We submit that, assuming fair and normal use (in the notional context) of both marks as wine brands, ODYSSEUS and ODYSSEY are not deceptively similar. This conclusion flows from the following “surrounding circumstances” which are relevant to the analysis of deceptive similarity under section 44 (Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Shell Company of Australia Ltd v Esso Standard Oil (1961) 109 CLR 407 per Windeyer J at 416; MID Sydney v Australian Tourism Co Ltd (1998) 42 IPR 561 at 245):
First, the diversity of wine brands in the Australian market diminishes the prospects of consumer confusion; and
Second, the industry practice of marketing wines by reference to a multitude of indicia of origin results on consumers placing less reliance on any one branding component when distinguishing between wines of different traders.
…
In a sparsely populated market, consumers might be more inclined to make hasty (and possibly erroneous) judgments in distinguishing between the marks of different traders. Purchasers of toothpaste, mobile phones or sliced cheese come to the point of purchase cognisant of the small suite of brands used in connection with those goods.
The Australian market for wine is extremely diverse. This diversity has led to an extremely cluttered branding landscape in which marks that might be considered deceptively similar in other industries coexist without giving rise to consumer confusion.
The evidence before the Trial Judge in CA Henschke & Co v Rosemount Estates [2000] FCA 1539 was that there were some 1,000 wine producers in Australia who sold wine under more than 16,000 brands. The Shortt Declaration attests to the number of wine producers having doubled in the space of roughly a decade. In the section entitled “The Wine Market”, the Shortt Declaration details the vast range of brands available for purchase in Australia. The Shortt Declaration includes the following remarks:
[21]: “The Australian wine market has a high degree of diversity. There are over 2000 producers spread across more than 60 designated wine regions making wine for the domestic market and Australian manufacturers compete with numerous foreign winemakers. Most winemakers make a variety of wines including different grape varieties, blends and styles. Many winemakers also produce wines suited to different sectors of the market with respect to price and quality. Accordingly, there are a large number of wine products that are available for sale in the Australian wine market. The total overall number of products substantially exceeds that which are ordinarily sold at any single retail location in Australia.”
[26]: “For the reasons set out above, Australian wine consumers are faced with a large number of brands. This remains the case even when the market is narrowed to particular grape varieties or blends (such as Cabernet Sauvignon) or a quality segment of the market.”
On Wingara’s own evidence, there are in excess of 2,000 wine producers in Australia. It would be consistent with the both the evidence in Henschke and with the Shortt Declaration to say that the number of separate wine brands available for purchase in Australia is likely to be at least 32,000.
The extremely cluttered branding landscape in which Australian wine producers compete gives rise to a high frequency of similar-looking and similar-sounding wine brands. Examples of coexisting similar brands taken from the Langton’s Classification contained in Exhibit SS-6 to the Shortt Declaration include:
Georgia’s Paddock (produced under the Jasper Hill label) and Sally’s Paddock (produced under the Redbank label);
Yellow Label (produced under the Lake’s Folly label) and Black Label (produced under the Wolf Blass label);
Great Western Shiraz (produced under the Seppelt label) and Thomson Family Great Western Shiraz (produced under the Best’s label);
Bin 389 (produced under the Penfolds label) and Bin No. 0 (produced under the Best’s label); and
Block 5 (produced under the Bindi label) and Block 6 (produced under the Kay Brothers Amery Vineyards label).
Australian purchases of wine come to a market which they know is populated with a plethora of brand names, many of them similar. As a result, those purchasers would be especially careful in distinguishing between Wingara’s Mark and T’Gallant’s Mark.
The high frequency of similar coexisting wine brands militates strongly against the likelihood that a substantial number of wine consumers would mistakenly assume a connection in trade between goods bearing T’Gallant’s Mark and goods bearing Wingara’s Mark.
The marketing of wine
Fortifying this argument is the reality that “fair and normal use” of wine marks encompasses use of that mark within a broader set of visual and aural indicia of origin.
Here we are not inviting the Delegate to assess deceptive similarity by reference to anything other than notional use of the marks. Nor do we submit that anything turns on the fact that the parties may use their marks differently. Rather, we submit that the high susceptibility of the wine product category to tiered branding militates against a likelihood of confusion between T’Gallant’s Mark and Wingara’s Mark.
In a practice that reflects the crowded state of the Australian wine market, wine producers tend to make the most of the limited space available on their bottles to distinguish their wines from those of other traders. The tendency of wine producers to use various indicia of origin to build brand equity is explored at [25] of the Shortt Declaration:
“Winemakers use marks based on their own identity as the maker of the wine. In addition, winemakers may use marks that relate to the identity of the vineyard from which grapes used in wine originate. Winemakers also use trade marks for specific wines that signify a wine having a particular collection of attributes with respect to origin, including the origin of the grapes, production quality and style”.
In De Bortoli Wines Pty Ltd v Brown (2002) 58 IPR 548, the Delegate (at 560-561) acknowledged the relevance of the particularities of the wine market to the assessment of deceptive similarity:
“Before I turn to my assessment of whether the marks are deceptively similar, I believe it is useful to set out my impressions regarding what is common in the trade, and the normal method of selling or supplying wines. I believe, and have seen nothing to contradict my belief, that the normal method of selling or supplying wines includes both aural and visual cues.
I believe that consumers, when purchasing wine from liquor outlets will look for a label first, and then the variety or specific name of the wine. In the present case, I believe that purchasers, when using their imperfect recollection, will look for the applicant's diamond logo, then the variety of wine, and then the specific name of the wine — in this case “Melba”. I am not satisfied that they would look for the “Brown's of Padthaway”. In the opponent's case, taking into account that its trade mark is De Bortoli Melba, I believe that they will look for the “De Bortoli” name, and then for “Melba”.
On the other hand, I believe that when orders are placed aurally — either by retailers ordering supplies or by customers in restaurants, they are likely, due to their imperfect recollection and the accepted need to be somewhat specific when ordering wine (due to the large number of varieties and producers), to ask for “Brown's Melba” or “De Bortoli's Melba”. I believe that this is the normal, shorthand version that people usually use when ordering wine when they are presented with both trade marks in the one list.”
As it was expressed by Parker J in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777:
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.
So, for example, I remind myself of what Assistant Registrar Hanlon had to say in Bodegas Rioja Santiago SA v. Barossa Co-Operative Winery Limited (1983) 5 IPR 1, page 7:
In considering the surrounding circumstances I think particular attention should be given to the impact, impression or idea of each of the respective marks and to the function and significance of their common features in a business context. I am aware, from my own knowledge and particularly from a consideration of the liquor labels and trade marks which have been before the Trade Marks Office, that in Australia especially for wine labels it is most common for the name or the “house” mark of the producing or marketing organisation, the vigneron or the vineyard to appear prominently on the label, often also with a coat of arms, crest or similar logo. Less often a device or composite trade mark is used alone. The type of wine is then normally shown, often with descriptive information, in a reasonably prominent position on the label but is subordinated to the proprietor’s name or trade mark. Many labels also bear decorative embellishments and frequently have such devices as representations of grapes and vine-leaves, and sometimes of objects associated with winemaking and drinking such as wine barrels or glasses and representations of ways in which the wine is recommended to be served. I consider that Australian purchasers of wine are accustomed to seeing such decorative or informative features on wine labels and that the respective marks in the present matter conform with this common style or get-up for wine labels.
So, too, in Richard Hamilton Wines Pty. Limited v. Ewell Investments Pty. Limited (1997) 39 IPR 591, where Hearing Officer Forno commented at page 598 that:
I do appreciate that, in recent years, wine consumers in Australia have become more educated about wine styles, districts, labels, makers, and the like. However, despite this growing sophistication, and the tendency to discriminate, wines are not always purchased with as much time and attention to detail as wine makers would hope, e.g. at a drive-in bottle shop on the way to a BYO restaurant. I therefore feel that, notwithstanding that many people would be easily able to differentiate the marks, a significant number of purchasers could also be deceived as to the origin of the respective wines.
The Applicant pointed to what it described as the lack of evidence supporting a likelihood of confusion. Applying the test of Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101), the Applicant submitted that the Opponent bore the onus of establishing that it was more likely than not that, assuming use in a normal and fair manner of the ODYSSEY trade mark on wines, there is a reasonable likelihood of deception or confusion among a substantial number of persons if the Applicant uses ODYSSEUS normally and fairly in relation to the wines and goods of the same description as wines.
The Applicant was keen to note the many times that Mr Shortt made statements of the kind indicating his belief that “at least some consumers” would fail to distinguish the trade marks, or be likely to be confused, or think they came from the same source. The Applicant stated that this was not enough and pointed to its own evidence in the form of the declarations made by Anne McAlaney and Alex Hill who both declared that to their knowledge there had been no confusion between the trade marks when in use.
The evidence is a valuable guide to me but, as already noted, the question whether the use of the Trade Mark is likely to deceive or cause confusion is ultimately a question of impression and common sense in which I have final discretion. The Applicant is right to argue that imperfect recollection of trade marks is tempered in the case of wine sales by the great many brands in use and that, taking account of the circumstances of the sale of wine, buyers are astute to small differences. But small differences are to be weighed. At a level, HILL OF GRACE is similar to HILL OF GOLD. At several levels, ODYSSEY is similar to ODYSSEUS.
The trade marks are not substantially identical in my assessment; however they are not far from being so. They have a high degree of visual and aural similarity. For much of the population, they would in my estimation carry a conceptual resemblance. Whether or not the majority of wine buyers know ODYSSEUS to be the protagonist of the ODYSSEY, they would in my assessment know that both words were somehow rooted or linked in Greek or Classical literature or mythology. In my view, if they knew of ODYSSEY wine, they would either imperfectly recollect that wine when faced with ODYSSEUS labelled wine, or they would have cause to wonder whether the wines had a common origin. For those of the general population who know nothing of ODYSSEUS or of the ODYSSEY, they would in my assessment and as I have already said, be likely to think that the word ODYSSEUS is somehow linked to the dictionary word they know, ODYSSEY, or if they were ignorant even of the meaning of that word, then they would see only two invented words and, as the Opponent argues, they would as a matter of construction see them as somehow connected. I do not feel that any of those finding are diminished by the fact that the evidence shows there to be a plethora of wine brands, many sharing common words. Finally, whatever may be the branding habits of wine makers and I am referring in particular here to the evidence that wine labels are tiered with information - some of a trade mark nature, some not - it nonetheless remains open to the Opponent to use its registration as a stand alone brand quite separate from the name “Wingara” as it would the Applicant, were it to achieve registration, to use the Trade Mark without any other added matter of a source indicating nature.
I find that the trade marks are deceptively similar and for that reason I find that the Opponent has established the section 44 ground. I need not go on to consider its other grounds pressed.
Decision
Subsection 55(1) of the Act provides:
55(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.
I refuse to register trade mark application 1343223.
Costs
Both parties requested costs in the event of success. The Opponent has been successful and it is entitled to its costs, which I award against the Applicant according to the Official Scale.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
18 October 2012
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