Earlier this year, a recent Australian Trade Marks Office decision provided an example of where an opposition can succeed on the basis of a prior existing reputation in not only the opponent’s mark itself but also in the imagery and other references associated with that mark through its promotion and marketing.
Background
Casella Wines Pty Limited (Casella) filed a trade mark application on 15 December 2015 for the word mark ABEL TASMAN in respect of wine in class 33. It was accepted on 12 May 2016 and subsequently opposed by Southcorp Brands Pty Ltd (Southcorp) under sections 44, 60, 42 and 62A of the Trade Marks Act (the Act). The Hearing Officer only considered the section 60 ground (which was enough for the opposition to succeed).
Unlike the section 44 ground of opposition, the section 60 ground does not require the marks to be deceptively similar (although they often are). It is enough to show that, as of the priority date of the opposed application, there was a “reputation” in a prior trade mark which was of such a nature and extent as to render the use of the later trade mark likely to cause confusion.
Southcorp’s prior reputation
Southcorp claimed to have used the mark ABEL’S TEMPEST in respect of wine since late 2009, with sales extending throughout Australia. The Hearing Officer commented that the revenue and advertising and promotional expenditure in relation to this mark were “very respectable” (the actual amounts could not be publicly disclosed).
The ABEL’S TEMPEST mark was adopted as a reference to the Dutch explorer Abel Tasman, who is well known for his explorations around the Australian coast in the 1640s. The use of this mark has been accompanied by various other references to Abel Tasman such as:
use of the mark under the pre-existing “Heemskerk” brand –which was taken from the name of one of Abel Tasman’s sailing ships;
a narrative on Southcorp’s website for the Heemskerk winery which described the “violent tempests that raged around the coast of Tasmania” while “Dutchman Abel Tasman navigated his flagship, the Heemskerk…”;
a press release in 2010 which stated that the mark was named after the “violent tempests that… thwarted Abel Tasman’s initial attempts to land on Tasmania in 1642 aboard his flagship vessel, the Heemskerk”;
an article in 2014 on the relaunch of the brand, which stated: “It was aboard the flagship Heemskerk that Abel Tasman sighted the west coast of Tasmania… Along the way Abel’s attempt to reach the shore was thwarted by raging tempests, and it’s these stormy winds that are depicted on the new Abel’s Tempest by Heemskerk packaging”.
Likelihood of confusion
The Hearing Officer noted that the marks do not need to be deceptively similar for the section 60 ground to be made out. He also referred to his own previous comments in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) in which he stated:
“The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associate force in the minds of the public as the association of the trade marks with the goods or services themselves.”
He then decided (our emphasis added):
“… the reputation of the Opponent’s Trade Mark both in terms of the quanta of sales and advertising, and in the way it has been promoted (the ‘particular popular images, or sets of values, that attach to the trade mark’…) lead to the conclusion that confusion, at least, is a likelihood.”
As part of its defence, Casella argued that there are many place names in Australia which refer to Abel Tasman, and that all of those names refer to “Tasman” rather than “Abel” so therefore it would be surprising if consumers associated ABEL’S TEMPEST with Abel Tasman given that the mark does not refer to TASMAN. However, the Hearing Officer said that whilst this argument might hold up in the absence of reputation, the situation in the present case is that Southcorp has associated its mark with Abel Tasman not only via the use of his first name but also in its publicity material and it has “stress(ed) that associative force between its vineyard and winery, Heemskerk (named for one of Abel Tasman’s ships), and the State of Tasmania (named for the explorer)”.
Commentary
This case demonstrates that an opposition can succeed on the basis of reputation arising not only from the level of sales, advertising and promotion involving the mark, but also from the way in which the mark has been advertised and promoted (eg by use of particular historical references, storylines and imagery) and the resulting likelihood of confusion.
To view the Office decision, click here.