An existing registration for TAYLOR’S and awareness of this mark in New Zealand was not enough to prevent the registration of the JULES TAYLOR trade mark for “wines”.
Taylor, Fladgate & Yeatman opposed the registration of the JULES TAYLOR mark covering “wines” owned by Jules Taylor Holdings Limited.
The basis for the opposition was:
- Section 17(1)(a) – Use of the JULES TAYLOR mark would be likely to deceive or cause confusion;
- Section 25(1)(b) – The JULES TAYLOR mark is similar to the registered TAYLOR’S mark and use is likely to deceive or cause confusion;
- Section 25(1)(c) – the JULES TAYLOR mark, or an essential element of it, is identical or similar to the well-known TAYLOR’S mark for “port” and use of the opposed mark would be taken as indicating a connection in the course of trade between the Applicant’s goods and services and/or the Opponent’s mark, and use of the opposed mark would be likely to prejudice the interests of the Opponent.
The Opponent claims that TAYLOR’S is one of the oldest and respected port brands in the world. Its port is made in Portugal produced by Quinta and Vineyard Bottlers, the successor of Taylor Fladgate, a company that has a history dating back to 1692. It also claims that TAYLOR’S port has been sold in New Zealand for many years and supported this by providing a list of online and physical stores that sell the product in New Zealand, samples of advertisements, media articles and sales figures in New Zealand
The Applicant has produced wine under the JULES TAYLOR mark since 2001 and has released a vintage every year. Over time, the brand has grown in New Zealand which was evidenced by sales figures, advertising expenditure and awards that the wines have won. An independent New Zealand wine writer also commented that the Applicant is “internationally recognised as one of the leading New Zealand producers of Sauvignon Blanc, which is the most important grape and wine to New Zealand”.
Prior to the Hearing, the Applicant applied to restrict its goods to “wines excluding port, fortified wine, dessert wine”.
- Ground 1: Section 17(1)(a) – likely to deceive or cause confusion
Under New Zealand law, a trade mark must not be registered if use of the mark would be likely to deceive or cause confusion.
In order to give rise to the likelihood of confusion, the Opponent must first establish that at the priority date of the opposed application, there was sufficient awareness of its TAYLOR’S mark in New Zealand. If sufficient awareness is found, it is then necessary to assess the likelihood of deception or confusion having regard to all surrounding circumstances and degree of similarity between the marks.
In the decision, the Assistant Commissioner found that the sales figures and advertising examples provided by the Opponent met the threshold for awareness of its mark in New Zealand for alcoholic beverages.
With regard to the similarities of the relevant marks, the Assistant Commissioner found that the marks are similar, but not very similar. This is because (i) both marks contain the word TAYLOR, (ii) the opposed mark includes an additional prefatory word JULES which is considered distinctive, and (iii) the Opponent’s mark is a possessive name (i.e. it ends with an ‘S) which was absent in the opposed mark.
The Assistant Commissioner also considered other relevant factors and noted that port is similar to wine as they are all alcoholic beverages made from grapes. However, she accepted that port is a distinct category of beverage and is produced differently. She also commented that port is protected as a geographical indication in many parts of the world (except for New Zealand) and that the Opponent emphasised that its port is from Portugal.
Taking the above into account, it was concluded that the use of the Applicant’s mark in relation to “wines, excluding port, fortified wine, dessert wine” would not be likely to deceive or confuse consumers. Therefore, the Opponent was unsuccessful under s17(1)(a).
- Ground 2: Section 25(1)(b)
Under this ground, the Assistant Commissioner must consider whether:
- the opposed mark is similar to the Opponent’s mark;
- the goods of the respective marks are identical and similar; and
- in light of the similarity of the marks and the goods, whether the use of the mark in question is likely to deceive or cause confusion.
As noted above, it was already determined that the respective marks and goods are similar. It was also determined that the use of the opposed mark is unlikely to deceive or confuse consumers. Therefore, unsurprisingly, this ground was not successful.
Interestingly, the Assistant Commissioner noted that, in the event that confusion or deception was likely, the application could have been registered on the basis of honest concurrent use. This was due to the use of the JULES TAYLOR mark dating back to 2001 and the substantial evidence of sales and marketing figures from 2009.
- Ground No. 3: Section 25(1)(c)
Turning to the last ground of s25(1)(c), the Opponent must, as an initial step, establish that its TAYLOR’S mark is well known in New Zealand. This test has a higher standard than the requirements needed to establish reputation under section 17(1)(a).
If this was established, then the following factors would be considered:
- the degree of similarity of the opposed mark to the well-known mark;
- the similarity of the goods;
- whether the use of the opposed mark indicates a connection to the well-known mark; and
- whether use of the opposed mark would prejudice the interests of the Opponent.
As indicated above, the Opponent was able to meet the standard of market awareness under s17(1)(a). However, the evidence fell short of the higher threshold for establishing that the TAYLOR’S mark is well known in New Zealand. A detailed reasoning for this decision was not provided, however, the Assistant Commissioner noted that the Opponent did not provide any quantitative evidence of its promotional activities or survey evidence. She also commented that the significance of the Opponent’s sales figures was difficult to assess without information on the market size for alcoholic beverages or port in New Zealand. As such, this ground of opposition was also not successful.
Overall, the Opponent did not succeed on any grounds of opposition and the trade mark application was allowed to proceed to registration.