Australian Liquour Company Pty Ltd (the Applicant) applied to, and was successful in obtaining a trade mark for the words “CELESTE NOIR COFFEE LIQUEUR” (the Mark). The trade mark was then advertised as accepted.
However, subsequent to this SELECCIÓN DE TORRES (‘The Opponent’) filed a Notice of Opposition.
The Opponent was the owner of a registered trade mark with a graphic resembling a sky with stars and constellations, featuring the name CELESTE and underneath it the inscription "EN LAS NOCHES DE VENDIMIA ESTAS SON LAS ESTRELLAS QUE VIGILAN Y CONTEMPLAN EL NACIMIENTO DE CELESTE" (Opponent’s Mark) which it used to sell wine.
The Opponent relied on section 60 of the Trade Mark Act 1974 (Cth) (the Act). To establish a ground under this section, the Opponent had to demonstrate that at the priority date of 15 November 2016:
The first element was quite clearly established because the Opponent’s Mark had been registered on the Trade Mark Register some years before the priority date.
In relation to the second element – ‘reputation’, the Opponent submitted evidence of the its mark being used in connection with alcoholic beverages. This included:
The delegate found that although the sales figures were moderately low, there was a sufficient reputation on the basis that many distributors are niche including moderate to high priced restaurants over a wide geographic range which confer an esteem [13].
For number three – market share, the Applicant submitted a percentage calculation by market share for all wine production in Australia by litres and claimed that the level of sales for the trade marked goods was not significant. The delegate commented that the wine market can be segmented by a number of factors such as price range, broad wine types, grapes, country of origin and other factors, and that the Opponent’s global and purely numerical ratio was not an appropriate strategy for determining market share or recognition.
The fourth element was more difficult. The parties submitted no evidence of actual confusion. As the goods (wine v liqueur) were both likely to be sold in the same channels, and the regulations and rules in relation to these sales were likely to be the same, the threshold to establish the likelihood of deception or confusion was lower. The delegate found that even allowing for imperfect recollection, the dominant feature of both trademarks was the word ‘Celeste’, and further, that viewing the Trade Mark as a whole there was insufficient evidence to show the Mark would not be likely to mislead or confuse a substantial number of persons. Interestingly the word ‘Noir’ was inadequate to distinguish the goods from the Opponent’s Mark as many products have a ‘black label’ or luxury version and that this fairly common terminology could simply indicate a different grade of the good.
Pursuant to section 55(1) of the Act the delegate found that the Mark will not proceed to registration, because the Opponent established a ground of opposition.
However, the Applicant may appeal the delegate's decision to the Federal Court.
This decision is another reminder of the care that needs to be taken both when applying to register a trade mark. Further, subsequent to registration, you must continue to monitor the trade mark register to protect the integrity of your business’ branding and market share. If you have any questions on the above, or would like advice tailored to your situation, please do not hesitate to contact Iain Freeman or Andrew Sutton.
