Endorsements: It is a condition of registration that the blank spaces within the scroll device may only contain the Latin words 'DEO Volenti Vincam' meaning 'God Willing I shall conquer' or other matter of a non Trade Mark character.

Registration of this trade mark shall give no right to the exclusive use of a double headed eagle except as depicted in the mark.

The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Endorsements: Registration of this trade mark shall give no right to the exclusive use of a double headed eagle except as depicted in the mark.

It is a condition of registration that the blank space within the scroll device may only contain the latin words 'Deo Volenti Vincam' meaning 'god willing, I shall conquer' or other matter of a non Trade mark character.

The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

1. I refer to the above collectively as the 'Cited Marks'.
2. The Applicant responded with submissions that the Application should be accepted on the basis of s 44(3)(b), which allows for acceptance of a trade mark in the face of an earlier conflicting trade mark where 'other circumstances' exist which would make registration proper. The other circumstances relied upon include the effect of the disclaimers in the Cited Marks, an allegation that the double-headed eagle or bird was common to the trade, and that the owner of the Cited Marks used them as only a tiny element of a larger trade mark.
3. The examiner remained unpersuaded and maintained the ground for rejection. The Applicant likewise maintained its argument that the device was common to the trade and that the disclaimers in the Cited Marks supported this submission. It also provided several decisions and practice notes from jurisdictions including Australia, Singapore, the United Kingdom and the European Court of Justice as support for its position. These arguments were largely reiterated by both the examiner and the Applicant over the course of a further five examination reports, although the Applicant did not explicitly pursue s 44(3)(b) beyond its initial response. After the examiner issued the sixth examination report, the Applicant requested to be heard by video conference.
4. I heard the matter in my capacity as a delegate of the Registrar on 10 June 2025. The Applicant was represented at the hearing by Trevor Dredge of Intellepro Patent & Trade Mark Attorneys, who made verbal and written submissions on the Applicant's behalf, including reliance upon his responses to the examination reports.
5. The purpose here is not a review of the examiner's decision and I am not bound in any way by it. Rather, this proceeding will consider afresh the ground for rejection under s 44 as it applies to the Application.

Section 44

1. The relevant provisions of s 44 are reproduced below:

Section 44 - Identical etc. trade marks > > (1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar services or closely related goods; or

(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or

(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

1. For the purposes of s 44 the priority date of the Trade Mark is the same as its filing date, being 28 September 2023.
2. A presumption of registrability is embodied in s 33 which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Applicant). Accordingly, I am not entitled to reject the Trade Mark unless satisfied that one or more of the Cited Marks:
   • is in the name of a person other than the Applicant;
   • has a priority date that is earlier than the priority date of the Trade Mark;
   • is in respect of similar goods or closely related services to the Applicant's Goods; and
   • is substantially identical with, or deceptively similar to, the Trade Mark.
3. If I am so satisfied, sub-ss (3) and (4) of 44 provide exceptions to sub-s (1) and (2). Under those provisions I may accept the application because the Applicant has made honest concurrent use of the Trade Mark (s 44(3)(a)) or because other circumstances exist which would make acceptance proper (s 44(3)(b)). There are no express limitations upon what constitutes a relevant other circumstance. Otherwise, if prior continuous use is established (s 44(4)), then I may not reject the application because of the Cited Marks.
4. It is straight-forward that each of the Cited Marks are in the name of Angove's Pty Ltd and that they each have a priority date which is earlier than the priority date of the Trade Mark.
5. It is also relatively straightforward that the Cited Marks are in respect of goods which are the same as those of the Trade Mark. The Cited Marks specify all goods in classes 32 or 33; thereby they are in respect of all of the goods specified in classes 32 and 33 of the Application. There are also a number of services specified in the Application which are closely related to the goods of the Cited Marks, not least distillation services, the various wine tasting services claimed and whiskey club services. However, before assessing the full scope of nexuses between the goods of the Cited Marks and the goods and services specified in the Application, I turn to the question of the similarity between the respective trade marks.
6. Section 44 applies to trade marks that are substantially identical or deceptively similar. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ('Shell') Windeyer J articulated the test for determining substantial identity as follows:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[2]

7. The Trade Mark is reproduced side by side with each of the Cited Marks below.

1. It is immediately apparent that the Trade Mark contains the words HUNCHY HILLS and that none of the Cited Marks do. Additionally, the latter two of the Cited Marks each contain an image of an oval shape with a scroll beneath it, reminiscent of a heraldic cartouche or crest. Accordingly, a total impression of resemblance does not emerge in a side by side comparison of the parties' trade marks. They are therefore not substantially identical.
2. As to deceptive similarity, Windeyer J continued in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [trade mark].[3]

3. As noted by the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the notional consumer's imperfect recollection of the prior mark is at the centre of the test for deceptive similarity. The principle is that allowance must be made for a consumer knowing only the prior trade mark and recalling it imperfectly, and it is that impression which is to be compared with the applied-for trade mark.[4]
4. Each of the trade marks contains a silhouette image of a symmetrical two-headed creature (it has been referred to as both an eagle and a dragon in the examination reports and responses) with each head facing away, wings outstretched, and splayed talons. There is some difference in the shape of the tail and the length and width of the creature between the Trade Mark and the Cited Marks. I note also that in the Trade Mark the creature's tongue is protruding, and that in Cited Mark 194557 eyes are visible whereas they are not in any of the other trade marks. However, these are the kind of differences unlikely to be recalled with precision, if noted at all. The silhouette image itself is highly similar in each trade mark. In the Cited Marks the silhouette image is the subject of a disclaimer, which I will discuss further shortly.
5. The other features of the parties' trade marks include the prominent words HUNCHY HILLS in the Trade Mark, and the crest elements of Cited Marks 268168 and 268169. Of themselves, these are not features that sufficiently differentiate the parties' trade marks. Whilst HUNCHY HILLS is a prominent and distinctive feature in the Trade Mark, the Cited Marks do not contain any words. As such, the Cited Marks can only be recalled by their image (the recollection of which may be imperfect). Of themselves, I consider the degree of similarity between the parties' images to be very high. Given the Cited Marks do not contain other differentiating material such as distinctive names or other distinctive device elements, it is likely consumers would at least entertain a reasonable doubt as to whether the parties' marks were associated.
6. The crest elements in Cited Marks 268168 and 268169 are not unusual particularly in respect of goods in class 33, which tend to emphasise both the provenance and historical traits of goods. The oval and scroll, being common elements of emblems, flags, crests and the like, conjure notions of geography, provenance and history and as such are relatively common in trade marks applied to such goods. Importantly though, the crest elements here are very basic - they are standard images of both an oval and a scroll. They are not depicted with any stylistic character or flourish. Consumers are therefore unlikely to take particular note of their rendering, and they therefore carry less weight in the comparison with the Trade Mark.
7. Accordingly, the primary feature of each of the Cited Marks is the silhouette image described in paragraph [20], which is also an essential feature of the Trade Mark. For simplicity I will refer to this image as a double-headed eagle. The double-headed eagle is the subject of a disclaimer in each of the Cited Marks. The wording of the disclaimer varies slightly between Cited Mark 194557 and Cited Marks 268168 and 268169, but for all intents and purposes they are identical. The disclaimers are:

Registration of this trade mark shall give no right to the exclusive use of the device of a double-headed eagle except as depicted in the application.

Registration of this trade mark shall give no right to the exclusive use of a double headed eagle except as depicted in the mark.

1. The Applicant contends that these disclaimers were required because the Registrar considered the double-headed eagle to be common to the trade. All of the Cited Marks were registered under the Trade Marks Act 1955 (Cth) ('1955 Act'). Section 32 of the 1955 Act gave the Registrar the discretion to require the proprietor of a trade mark to disclaim exclusive use of matter in a trade mark, as follows:

(i) which are not the subject of separate applications by the proprietor for registration as trade marks; or

(ii) which are not separately registered by the proprietor as trade marks; or

(b) contains matter which is common to the trade or is otherwise not distinctive,

the Registrar, the Appeal Tribunal or the High Court, in deciding whether the trade mark shall be registered or shall remain upon the Register, may, in his or its discretion, require as a condition that the proprietor shall disclaim any right to the exclusive use of any of those parts, or of that matter, to the exclusive use of which the Registrar, the Appeal Tribunal or the High Court holds the proprietor not to be entitled or that the proprietor shall make such other disclaimer as the Registrar, the Appeal Tribunal or the High Court considers to be proper for the purpose of defining the rights of the proprietor under the registration.

(2.) No such disclaimer affects the rights of the proprietor of the trade mark which do not arise out of the registration of the trade mark.

1. I bear in mind that the actual circumstances of the Cited Marks' registration are unknown. It is possible that the disclaimer was required pursuant to s 32(1)(b) of the 1955 Act, as opposed to either limb of s 32(1)(a). I note nonetheless that a brief perusal of other double-headed bird/dragon marks applied for or registered under the 1955 Act did not consistently disclaim the double-headed eagle (see for example registration 186293 or now-removed 151949), suggesting that it was not settled that such images were common or non-distinctive. Nonetheless I will assume for the purposes of this decision that the disclaimer was required pursuant to s 32(1)(b).
2. A Wikipedia® article, filed by the Applicant in its response to the first examination report, states:

The double-headed eagle is an iconographic symbol originating in the Bronze Age. A heraldic charge, it is used with the concept of an empire. Most modern uses of the emblem are directly or indirectly associated with its use by the late Byzantine Empire, originally a dynastic emblem of the Palaiologoi. It was adopted during the Late Medieval to Early Modern period in the Holy Roman Empire, Albania and in Othodox principalities (Serbia and Russia), representing an augmentation of the (single-headed) or Aquila associated with the Roman Empire.

Albania, Serbia, Montenegro and Russia have a double-headed eagle in their coat of arms...

The double-headed eagle is now used as an emblem by a number of Orthodox Christian churches, including the Greek Orthodox Church and the Orthodox Autocephalous Church of Albania. In modern Greece, it appears in official use in the Hellenic Army (coat of arms of the Hellenic Army General Staff) and the Hellenic Army XVI Infantry Division.

The two-headed eagle appears, often as a supporter, on the modern and historical arms and flags of Austria-Hungary, the Kingdom of Yugoslavia, Austria (1934-1938), Albania, Armenia, Montenegro, Russia and Serbia...It is also used in the municipal arms of a number of cities in Germany, Netherlands and Serbia, the arms and flag of the city and Province of Toledo, Spain, the arms of the town of Velletri, Italy, and the arms and flag of the city of Rijeka, Croatia.

1. The Wikipedia article illustrates that the double-headed eagle is an image with a long history which is used in flags, crests and emblems of a number of countries and cities, particularly those related to the Balkans and Russia. There is nothing in the Wikipedia article which indicates an association of the double-headed eagle with the goods and services specified in the Application. Nonetheless, its inclusion in the heraldry of the countries and cities that use it is likely to conjure an association with those countries and cities when used in trade marks, and may thus have made it a desirable element. Alternatively, given its long history it may simply be a popular motif that many traders have wished to use in trade marks. This is reflected in the Register, wherein a search of a double-headed bird or dragon reveals 252 results, 64 of which were filed during or before 1973 (being the year of priority for the latter two Cited Marks). For this reason it may have been considered common to the trade or otherwise not distinctive.
2. However, the Registrar did not require the proprietor to absolutely disclaim use of a double-headed eagle, nor could the Registrar do so. To allow a proprietor to disclaim exclusive use of its whole trade mark (in the case of Cited Mark 194557) or the primary feature of its trade mark (in the case of Cited Marks 268168 and 268169) in order to gain registration would be to contradict the very purpose of trade mark registration - being that it confers upon an owner the exclusive right to use the registered trade mark. This was reflected in the words of Lee J in Bausch & Lomb Inc. v Registrar of Trade Marks in respect of a word mark:

[I]t seems to me that whether a word is registrable or not is a matter that first must be determined in accordance with the principles laid down in regard to the registration of trademarks, and a word which does not pass the tests established by those principles ought not to be registered. Disclaimer undoubtedly has a place in registration (eg s 32 of the Act) but it is not a device to be used to permit registration of a word that should be regarded as unregistrable.[5]

1. Similarly, the authors of Shanahan's Australian Law of Trade Marks and Passing Off, in their discussion of the abolition of compulsory disclaimers, note that 'The entry of a disclaimer should never have enabled the registration of an otherwise unregistrable mark, so issues of registrability should not be affected'.[6]
2. Rather, the Registrar required the proprietor to disclaim exclusive use of the double-headed eagle except as depicted in the application (or mark in respect of the latter two Cited Marks). These words are significant. They mean that the proprietor has exclusive rights over the double-headed eagle only as rendered in the particular fashion shown in the application. The Cited Marks' scope of protection, and the proprietor's ability to stop others from using it, only extends to depictions of the double-headed eagle rendered in the same, or a deceptively similar, fashion. The proprietor does not have exclusive rights to any other rendering of the double-headed eagle. This is reflected in the Register wherein several double-headed eagles rendered in different fashions co-exist, a sample of which is below (including the flag of Albania, protected under s 39).

1. The Applicant touches on this in its response to the third examination report (emphasis original):

The other point we would make for the citations especially 194557, harking back to the Examiner's reference to Forde-Werke A.G.'s Appn (1955) 72 PC 191 Lloyd Jacob in the refusing to enter a disclaimer, of what he saw as an effort to gain registration by disclaiming the whole non-distinctive mark. This 194557 seems to be precisely what Lloyd Jacob was advocating against. How is one meant to interpret a registration that in practical reality, disclaims the whole of the mark. It would have to be a very narrow registration of very narrow scope given the limitation except as depicted in the application.

1. What the Applicant states is precisely the issue - the scope of the registration is narrow and is limited to the depiction (or 'rendering' as I have described it) in the application. Accordingly, the protection afforded to it is for images that are the same, or deceptively similar. With that in mind, the degree of similarity between the Trade Mark and the Cited Marks is significantly greater than that between any of the trade marks in the table above, or between any of the trade marks in the table above and the Cited Marks. In my estimation no other registered double-headed bird or dragon marks are as similar as the Trade Mark and the Cited Marks. On my perusal of double-headed bird and dragon marks, it appears that only one trade mark which contains an image closely resembling the Cited Marks has achieved registration (registration number 1859804), and then only under the provisions of 44(3)(b) (indicating that s 44 had been raised as a ground for rejection, but the owner was able to satisfy the Registrar that other circumstances existed which made registration proper):

1. Presumably this registration was not cited against the Trade Mark on account of the difference between the words of the respective marks - those words provided sufficient differentiation such that consumers would not likely be confused. Accordingly, there is no inconsistency by the Registrar apparent to me in the treatment of the Trade Mark in terms of the assessment under s 44.
2. I note that the Applicant provided images of labelled products, two invoices, and a label in response to the fifth examination report. This was not pressed as evidence relevant to ss 44(3) or (4), however for completeness I comment that none of this material is in the form of a declaration; the images of labelled products and the label are undated; and the two invoices do not provide a basis for honest concurrent use (there being insufficient extent of use) or prior continuous use (the use not being prior to the priority date of the Cited Marks).
3. As already mentioned the Applicant has provided a range of materials in support of its position, some of which is in relation to disclaimers and some is not (for example court and registry decisions regarding trade marks with non-distinctive material). None are relevant to the question of the scope of a disclaimer, rather they look to whether disclaimed material is accounted for in the assessment of deceptive similarity (either in an examination or opposition context, infringement context or passing off context). Otherwise, they discuss whether trade marks are deceptively similar on account of material present in both that is considered common to the trade. These cases do not assist the Applicant. Trade mark elements which are otherwise unregistrable, such as letters, numerals, a map of Australia, a depiction of the relevant goods or services (or the combination Q10, as discussed in one of the decisions) may be stylised or colour-restricted to such a degree that they are distinctive. However, the scope of protection afforded is to the particular depiction (or one that is deceptively similar), not to any other depiction of the element.
4. In summary, I consider that the Trade Mark is deceptively similar to the Cited Marks. The disclaimers of the Cited Marks do not disentitle the owner of the Cited Marks protection of its double-headed eagle device. Rather, protection is afforded to the specific rendering or depiction shown in the Cited Marks. The Trade Mark falls into the category of a rendering or depiction that is deceptively similar to that shown in the Cited Marks.
5. I have considered whether an amendment to the Applicant's goods and services would enable registration, however there is no obvious delineation and the Applicant has not provided a suggested amendment. Alcoholic beverages are likely to be associated with their non-alocoholic counterparts. The services that would appear to be of interest to the Applicant are likely to be in relation to beverages. I consider dividing up such goods and services leads to the type of fragmented ownership and fine distinctions warned against in McHattan v Australian Specialied Vehicle Systems Pty Ltd.[7] For that reason I have not offered an amendment to the Applicant.

1. I am satisfied that a ground for rejection exists under s 44 in relation to the Trade Mark.
2. Section 33(3) provides that if the Registrar is satisfied there are grounds under the Act for rejecting the application, then the Registrar must reject it.
3. Given I am so satisfied, I reject the application in accordance with s 33(3).

[1] Any references to a section or regulation in this decision is a reference to a section of the Trade Marks Act 1995 (Cth) ('Act') or a regulation of the Trade Marks Regulations 1995 (Cth) ('Regulations') respectively, unless otherwise indicated.

[2] [1963] HCA 66, [12].

[4] [2023] HCA 8, [28]-[29] (Kiefel CJ, Gageler, Gordon, Edelman And Gleeson JJ). The comments are made in the context of infringement under s 120 but are nonetheless relevant to the assessment under s 44.

[5] (1980) 42 FLR 459, 549; cited in Phone Directories Company Australia Pty Ltd v Telstra Corp Ltd [2014] FCA 373, [217] (Murphy J).

[6] Davison M and Horak I, Shanahan's Australia Law of Trade Marks and Passing Off (Law book Co., 7th ed, 2022), [45.515].

[7] [1996] FCA 481 (Drummond J); cited in Tivo Inc v Vivo International Corp Pty Ltd [2012] FCA 252; [471]-[472].