Intellectual Property Development Corporation Pty v Fermentum Pty Ltd [2017] ATMO 68


Intellectual Property Development Corporation opposed the registration of the trade mark PACIFIC ALE applied for by Fermentum in connection with a range of beers in Class 32.

By way of background, it is useful to note that the applicant is the owner of the below trade mark registration in Australia:

and there was a recent Federal Court matter between the parties concerning an allegation by the now applicant that the opponent has engaged in misleading or deceptive conduct (or conduct likely to mislead or deceive) and made false or misleading representations in contravention of ss 18 and 29 of the Australian Consumer Law, as well as passing off.  The applicant failed in the first instance judgement, but the Full Federal Court heard the appeal this year and the decision is expected shortly.

Grounds of section 41 and 44 were pressed in the opposition.

Under section 41, the opponent sought to rely on the decision of the Court in the first instance judgement noted above that PACIFIC ALE ‘has come to be associated with the use of Australian Galaxy Hops’.  However, the Hearing Officer sided with the applicant’s submissions that the Court’s findings in relation to infringement are not necessarily applicable to a consideration under section 41 and, in any event, the Court’s findings do not reflect the state-of-play as at the relevant date (the filing date of the applicant’s trade mark).

The relevant date is a crucial issue in the Hearing Officer’s decision as noted:

The Applicant launched its Pacific Ale product in about November 2010 some nine months before the Relevant Date. It is explicit in Moshinsky J’s judgment that he considered that in November 2010 ‘Pacific’ did not serve a function of describing beer made from hops from Australia and New Zealand but at some point from then to when he handed down his decision in 2016 ‘Pacific’ did serve that function.

In coming to the view that the trade mark PACIFIC ALE was not descriptive at the relevant date, the Hearing Officer noted the reproduced cross-examination of a freelance beer writer within the Court’s judgment where in the descriptive use of ‘PACIFIC’ was not known to that beer writer until at least 2013.

The Hearing Officer’s view, on balance, was that at the relevant date, ‘the ordinary signification of the term ‘Pacific Ale’ to any person in Australia concerned with the Applicant’s Goods did not include indications of the style of beverage, the hops used in the manufacture of the goods, or the geographical origin of the goods’.

The trade mark was considered sufficiently distinctive at the time it was applied for.

Turning to section 44, the opponent relied upon its prior registration for PACIFICO covering beers in Class 32.  The opponent argued that the trade marks PACIFICO and PACIFIC ALE were deceptively similar largely on the basis of the common ‘PACIFIC’ element.  The applicant countered with arguments that the ‘O’ within the opponent’s prior mark changes that trade mark considerably aurally and conceptually to the extent that it is no longer a clear reference to ‘PACIFIC’.

The Hearing Officer, upon consideration, came to the view:

[T]he simple addition of an ‘O’ to the end of the word ‘PACIFIC’ creates aural, visual and conceptual differences which, in combination, are significant and sufficiently memorable such that deception or confusion are unlikely.

Accordingly, the trade marks were not found to be too similar and the section 44 ground failed.

The application is to proceed to registration, but given the history between the parties, may be subject to appeal.

To view the Office decision, click here.

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