Wingara Wine Group Pty Ltd v T?Gallant Winemakers Pty Ltd

Wingara Wine Group Pty Ltd (the Opponent) opposed the registration of a trade mark by T?Gallant Winemakers Pty Ltd (the Applicant). The Opponent relied on its registered trade mark No. 720501, for the word "ODYSSEY," registered for "Wines" in Class 33, as the basis for its opposition. The Applicant's trade mark application was for "Alcoholic beverages (except beer); none being cocktails or mixed drinks." The opposition proceeded on the ground that the Applicant's mark was substantially identical or deceptively similar to the Opponent's registered mark, pursuant to section 44 of the relevant Act.

The primary legal issue before the Hearing Officer was whether the Applicant's proposed trade mark was substantially identical or deceptively similar to the Opponent's registered trade mark "ODYSSEY," and whether the goods for which the marks were registered or sought to be registered were similar or closely related. The Hearing Officer was required to determine if the criteria for establishing a ground of opposition under section 44 of the Act were met, specifically concerning the identity or similarity of the marks and the similarity of the goods.

The Hearing Officer reasoned that for the section 44 ground to be established, the Opponent needed to demonstrate that its registered mark had an earlier priority date, was registered for similar or closely related goods, and was owned by someone other than the Applicant. The goods were found to be similar, as alcoholic beverages include wines, and it was established by precedent that wines and other Class 33 alcoholic beverages are goods of the same description. In assessing the similarity of the marks, the Hearing Officer compared "ODYSSEY" and "ODYSSEUS" side-by-side. The first six letters of both marks were identical, and the difference lay in the final two letters, "y" in "ODYSSEY" being replaced by "us" in "ODYSSEUS." This difference was considered to have minimal visual impact, and the addition of an "s" was noted as a common pluralisation. Aurally, the Hearing Officer found the marks to be deceptively similar, noting that while "Odysseus" is not a common English word, people of ordinary knowledge would likely pronounce it similarly to the common word "Odyssey" due to the near-identical spelling.

Consequently, the Hearing Officer found that the trade marks were deceptively similar and that the Opponent had established the section 44 ground of opposition. The application to register the trade mark was refused, and the Applicant was ordered to pay the Opponent's costs.