Woolworths Limited v Constellation New Zealand Limited

[2011] ATMO 18

TRADE MARKS ACT 1995

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

Re:Opposition by Woolworths Limited to registration of trade mark application 1271746 (33) - MONKEY DEVICE - filed in the name of Constellation New Zealand Limited.

Delegate:

Heath Wilson

Representation:

Opponent: Written submissions only.

Applicant: John O’Mahoney of Collison & Co, Patent and Trade Mark Attorneys.

Decision:

2011 ATMO 18

Section 52 opposition: All grounds nominated – section 41 pressed – trade mark is prima facie capable of distinguishing its goods from those of other traders – trade mark to proceed to registration – costs awarded against the opponent.

Background

1.     On 12 November 2008 Constellation New Zealand Limited (‘the applicant’) applied to register the following trade mark (‘the applicant’s trade mark’) for wines in Class 33:

2.     Following examination, acceptance of the trade mark for registration was advertised in the Australian Official Journal of Trade Marks on 12 March 2009. Woolworths Limited (‘the opponent’) filed a notice of opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) on 12 June 2009 nominating all available grounds of opposition.

3.     The opponent’s evidence consists of a single statutory declaration made on 11 December 2009 by the opponent’s legal representative, Khajaque Kortian of Spruson & Ferguson Patent and Trade Mark Attorneys (with exhibits KK-1 to KK-3). Exhibited with the declaration was the examination file for trade mark 1271746 and a ‘cease and desist’ letter from the applicant to the opponent in relation to (amongst other things) the opponent’s trade mark registration no. 1250950: which was filed as a trade mark on 9 July 2008. Also exhibited with the declaration is the opponent’s response to the applicant’s letter indicating that the opponent considered trade mark 1250950 to be sufficiently different from the applicant’s common law trade mark. From the chain of correspondence it is apparent that the applicant’s common law trade mark comprises the words MONKEY BAY and the device which is the subject of the current application.

4.     The applicant’s evidence consists of a statutory declaration by Rebecca Lacey (with exhibits RL-1 to RL-3) made on 15 March 2010. It exhibits samples of the applicant’s trade mark in use and details of pending or registered Australian trade marks owned by other parties including the representation of a monkey or the word ‘Monkey.’ 

5.     By way of its written submissions the opponent stated:

The grounds are set out in the Notice of Opposition which were, however, subsequently narrowed by way of letter dated 11 December 2009 to the attorneys for the Opponent (sic) which was copied to the Registrar of Trade Marks. We confirm that the Opponent also no longer presses paragraph 9 of the Notice of Opposition. Accordingly, only paragraphs 1, 10 and 11 of the Notice of Opposition are pressed.

6. Paragraphs 1 and 11 of the notice of opposition relate to a ground based in s 41 of the Act and to a request for an award of costs, respectively. However, Paragraph 10 of the Notice states:

By reason of the matters set forth in any one or more of the foregoing paragraphs, the Registrar, in the exercise of her discretion, ought to refuse the Registration of the Trade Mark. 

7. The opponent’s written submissions then went on to address the ground of opposition under section 41 of the Act only. In the context of the opponent’s letter and submissions, it is clear that the opponent has abandoned all grounds other than s 41 and that paragraph 10 is enlivened only as it relates to section 41. Given the circumstances set out above, I find it inappropriate to consider grounds that the opponent has not pursued.

8.     I heard this matter on 8 February 2011 in Canberra as a delegate of the Registrar of Trade Marks. The opponent relied on the written submissions of its legal representative in lieu of making an appearance. John O’Mahoney of Collison & Co, Patent and Trade Mark Attorneys appeared in person on behalf of the applicant.

Onus and Reasons

9.     In order to be successful, the opponent bears the onus[1] of establishing a ground of opposition on the balance of probabilities. I will now consider section 41, being the only ground pursued by the opponent.

[1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891at [22] to [26]).

Section 41: Trade mark not distinguishing applicant’s goods or services

10. The relevant subsections of section 41 of the Act provide:

(2)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 (designated goods or services) from the goods or services of other persons.

Note:For goods of a person and services of a person see section 6.

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

11.   In support of the argument that the applicant’s trade mark is incapable of distinguishing its goods from those of other traders the opponent has simply referred to prior trade mark registrations currently on the Register in class 33 that incorporate the device of a monkey. As a result, the opponent submits that the use of a monkey device in relation to wine is “common to the trade” and is incapable of distinguishing the applicant’s goods.

12.   Justice Kitto in F.H. Faulding & Son Ltd[2] said:

The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

[2] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555

13. The main consideration for the application of section 41 in this matter is not whether other traders would think of the applicant’s device of a monkey and desire to use it as a trade mark in relation to wine. The question is whether those traders would desire to use the applicant’s trade mark in the ordinary course of trade and without improper motive for legitimate descriptive purposes. The fact that other trade marks featuring different monkey devices co-exist on the Register of Trade Marks does not answer this question. As Kitto J stated in Clark Equipment Co v Registrar of Trade Marks[3]:

That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

[3] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14 ; [1965] ALR 344 at 345–6:

14.   There is nothing further in the evidence or submissions from the opponent which would lead me to the conclusion that the applicant’s trade mark is not prima facie capable of distinguishing its wines from the similar goods of other traders. I find the ground of opposition under section 41 of the Act has not been established.

Decision

15. Section 55 of the Act relevantly provides:

(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.

16.   The opponent has not established a ground of opposition. I direct that trade mark application no. 1271746 may proceed to registration after one month from the date of this decision. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.

Costs

17.   The applicant has been successful in these proceedings. I therefore award costs against the opponent to the extent allowed under Schedule 8 of the Trade Mark Regulations 1995.

Heath Wilson

Hearing Officer

Trade Marks Hearings

23 February 2011