Gin, the best medicine

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E&J Gallo Winery v Kristy Booth [2019] ATMO 2

In this matter, the opponent, E&J Gallo, opposed registration of the trade mark APOTHECARY GIN, which had been applied for by Ms Kristy Booth in connection with spirits.

As to its grounds of opposition, the opponent noted that it is the owner of a number of Australian trade mark registrations that incorporate the word ‘APOTHIC’, which, from the evidence filed, it appears to use in connection with its wines. The opponent also alleged to have a reputation in the ‘APOTHIC’ trade mark in Australia.

Within the decision, the Hearing Officer first considered whether the applied for APOTHECARY GIN trade mark was deceptively similar to any of the opponent’s prior trade marks that it sought to rely on in the opposition, all including the word ‘APOTHIC’. The Hearing Officer took the view that the conceptual differences between the words APOTHECARY and APOTHIC was sufficient for there not to be any consumer confusion between the two and, therefore, the trade marks were not deceptively similar.

As the marks were found not to be deceptively similar, the section 62A bad faith ground was also lost.

Turning to the reputational ground, the Hearing Officer found that the opponent had a ‘very modest’ reputation in its APOTHIC trade mark in Australia and there was no evidence of ‘spillover’ reputation to assist the opponent.

Taking all factors into consideration, including the differences between the trade marks, the minimal reputation that the opponent was able to demonstrate, and the differences between the goods (particularly, the different price-points of the goods and the goods being sold in separate sections of liquor stores), the Hearing Officer took the view that the opponent was unable to establish likely confusion or deception. As such, its section 60 ground failed.

For similar reasons (that is, no likely confusion or deception), the section 42 ground failed.

Interestingly, the opponent also pressed grounds under section 43 on the basis that the inclusion of the word ‘GIN’ within the trade mark, which covers more than just ‘gin’, results in the trade mark itself giving rise to deception or confusion. Whilst the Hearing Officer noted that it could be confusing to have the trade mark used for goods other than ‘gin’, there was nothing presented that indicated that that such use would be likely to occur or that the applicant would not simply vary the ‘GIN’ element to accord with a different type of spirit that it may offer.

As the opposition failed on all grounds pressed, the trade mark is to proceed to registration.

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