Scotch Whisky Association v De Witt

Federal Court of Australia|2007-07-01|Before: Sundberg J

The application be dismissed.
The respondent's GLENN OAKS mark remain on the register with respect to the following amended statement of goods and services in class 33: "Scotch whisky, bourbon (other than bourbon that is labelled only as 'whisky' or 'whiskey'), vodka, dark rum, white rum, ouzo, tequila, gin, liqueurs and all other spirits in this class except for whisky that is not produced in Scotland.
The applicant pay the respondent's costs of the appeal.
The cross appeal be dismissed.
The respondent pay the applicant's costs of the cross appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

Background 1 The applicant appeals from the decision of a delegate of the Registrar of Trade Marks allowing Trade Mark Application No 976817 to proceed to registration by finding against the applicant (a) that the opposition based on s 60 of the Trade Marks Act 1995 (Cth) (the Act) was not made out as GLENN OAKS was not deceptively similar to trade marks that, before the priority date of the Application, had acquired a reputation in Australia for scotch whisky and scotch whisky‑based liqueurs; (b) that the opposition based on s 43 of the Act was not made out in respect of the use of GLENN OAKS in relation to bourbon as that name has no connotation when so used; and (c) that the use of GLENN OAKS in relation to whisky (other than scotch whisky) was not contrary to law (s 42(b) of the Act). 2 The delegate found that the ground of opposition under s 43 had been made out with respect to the scotch style of whiskies which were included in the application when registration was opposed. However, she went on to say that an amendment to the specification of goods made after the hearing of the opposition meant that the opposition could not succeed on this ground. 3 The delegate permitted the trade mark to be registered in relation to the following goods: "Class 33: Scotch whisky, bourbon, vodka, dark rum, white rum, ouzo, tequila, gin, liqueurs and all other spirits in this class except for whisky that is not produced in Scotland." 4 The applicant's contention was that the trade mark should not extend to bourbon and hence that word should not appear in the statement of goods. It is this issue that is the central point of contention between the parties.

Grounds of appeal 6 The applicant relies on three grounds. First, that the GLENN OAKS mark contravenes s 43. Second, that it contravenes s 60. Third, that it contravenes s 42(b). Sections 52 and 53 of the Trade Practices Act 1974 (Cth) (the TP Act)and the common law action of passing offare relied upon in relation to this ground.

Nature of appeal 7 An appeal under s 56 of the Act is a hearing de novo. The rights of the parties are to be determined as at the date of the application for registration, namely 31 October 2003: s 12 of the Act(the priority date). 8 The onus is on the opponent to establish that one of the grounds is made out. Before the delegate the applicant was the opponent. Different views have been expressed in the authorities as to the standard at which the onus must be discharged. There are decisions to the effect that the opposition should be upheld only if the Court is satisfied that the trade mark should clearly not be registered: Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 318 and Kowa Company Ltd v N V Organon (2005) 66 IPR 131. See also Lomas v Winton Shire Council (2002) FCAFC 413 at [17] to [19], Austereo Pty Ltd v DMG Radio (Aust) Pty Ltd (2004) 61 IPR 257 at [4] and McCorquodale v Masterson (McCorquodale)(2004) 63 IPR 582 at [24]. 9 On the other hand, Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 was of the view that the opponent has simply to establish a ground of opposition; not clearly establish a ground. 10 I need not enter upon this controversy, because the outcome of the appeal does not differ according to which approach is adopted.

Legislation 11 The applicant's case was primarily based on ss 43 and 60. Section 43 provides: "An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion." 12 Section 60 provides: "The registration of a trade mark in respect of particular goods or services may be opposed on the ground that: (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and (b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion." 13 There is a degree of overlap between ss 43 and 60. 14 The expression "deceptively similar" (which appears in s 60) is defined in s 10: "For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion."

Witnesses 15 The key witnesses and evidence relied upon by the applicant were: · Ian Barclay, an affidavit sworn by him on 17 October 2006 and a statutory declaration made by him on 20 June 2005 · John Halmarick and an affidavit sworn by him on 18 October 2006 · Terence Mott and an affidavit sworn by him on 24 October 2006 · John Curnow and an affidavit sworn by him on 24 October 2006. 16 The respondent relied upon the evidence of James Mackinnon and an affidavit sworn by him on 28 November 2006, and an affidavit sworn by the respondent on 28 November 2006. 17 None of the witnesses was seriously challenged in cross‑examination.

Scotch Whisky 18 Scotch whisky is whisky made in Scotland. According to clause 3 of the Scotch Whisky Order 1990, made under the Scotch Whisky Act 1988 (UK), "scotch whisky" is whisky: "(a) which has been produced at a distillery in Scotland from water and malted barley (to which only whole grains of other cereals may be added) all of which have been - (i) processed at that distillery into a mash; (ii) converted to a fermentable substrate only by endogenous enzyme systems; and (iii) fermented only by the addition of yeast; (b) which has been distilled at an alcoholic strength by volume of less than 94.8% so that the distillate has an aroma and taste derived from the raw materials used in, and the method of, its production; (c) which has been matured in an excise warehouse in Scotland in oak casks of a capacity not exceeding 700 litres, the period of that maturation being not less than 3 years; (d) which retains the colour, aroma and taste derived from the raw materials in and method of, its production and maturation; and (e) to which no substance other than water and spirit caramel has been added." 19 Clause 4 of the Order provides that scotch whisky must have a minimum alcoholic strength of 40% by volume. 20 There are two categories of scotch whisky: blended and single malt. Single malt is whisky that is produced at a single distillery from water and malted barley without the addition of any other cereals. Blended scotch whisky is composed of scotch whisky produced from two or more distilleries which are blended together. The vast majority of the scotch whisky imported into Australia is blended scotch whisky.

Use of 'Glen' on whisky 21 Mr Halmarick is a well informed Australian scotch whisky consumer. He has gained a strong understanding of "Australian consumers' knowledge". He provides consultancy services to the applicant. He identified 13 scotch whisky brands that are currently or had in the past been sold in Australia which include the word or letters 'Glen' in their name. Of those brands the following 12 are single malt whiskies: Glen Keith, Glen Moray,Glen Parker, Glen Turner, Glendronach, Glenfarclas, Glenfiddich, Glengoyne, Glenkinchie, Glenlivet, Glenmorangie and Glenturret. The only scotch whiskies sold in Australia with word or letters 'Glen' in their name are the 12 single malt brands listed in this paragraph. 22 The GLENFIDDICH, GLENLIVET and GLENMORANGIE marks are held in especially high regard by consumers in the single malt whisky and blended scotch whisky categories. Mr Halmarick said they are the "big selling brands of malt". They are known by most of those who primarily consume scotch whisky in Australia. On the other hand, Mr Mackinnon, primarily a bourbon consumer, knew only that Glenfiddich is a scotch whisky sold in a bottle. He didn't know if it was available in a can. He didn't "have the faintest idea" whether it was a single malt or a blended scotch whisky. His experience was that most whiskies have 'Scotch Whisky' written on the container. 23 For non‑scotch whisky consumers (for example, those who prefer bourbon), the labelling on scotch whisky bottles is the primary means (and, in all likelihood, the only means) by which they become aware of scotch whisky and scotch whisky brands, such as GLENFIDDICH, GLENLIVET and GLENMORANGIE. Consumers of this class will not be aware of these brands unless they had previously seen them on a label.

Bourbon 24 Bourbon is a corn whiskey produced in the United States. It is made there primarily in Kentucky and Tennessee. 25 The spelling differs between the United States beverage and the Scotch: respectively 'whiskey' and 'whisky'. 26 Bourbon is produced in the United States pursuant to the requirements of the US Alcohol Tobacco Products and Firearms Statute, Part 5 "labelling and advertising of distilled spirits". Strict standards and regulations govern the production of bourbon. It has a minimum alcoholic strength of 37% by volume. 27 Bourbon and scotch whisky have distinct tastes. The different ingredients, distillation measures and percentage of alcohol in the final product account for this.

Market distinction: LMAA Report 28 The Liquor Merchants Association of Australia (LMAA), a trade body representing its members who are liquor distributors and wholesalers in Australia, provides annual reports of spirits in Australia. In 2006 it published a report containing statistics delineating the categories that constitute the overall Australian liquor market (LMAA Report). They were not questioned by the parties. The salient categories and sales (per 9 litre cases) of bottled products in 2006 include: · Standard Scotch - 1,571,619 · Standard Whisky - 132,295 · Premium Scotch - 130,981 · Premium Whisky - 6,973 · Malt Scotch - 35,326 · Malt Whisky - 2 · Standard bourbon - 783,100 · Premium bourbon - 331,881 29 Bourbon is not treated as a category of whisky in the LMAA Report. Figures are provided for the total bottled Scotch/Whisky categories (1,877,196), and for the total bottledBourbon categories (1,114,981). 30 Sales for Malt Scotch and Malt Whisky total35,328, which is only 1.88%of the total bottled Scotch/Whisky category. As I have said, the word 'Glen' in relation to scotch whisky in Australia is confined to single malt whisky. This would encompass Malt Scotch and Malt Whisky as defined in the LMAA Report. 31 The LMAA Report describes the salient categories and sales (per 9 litre cases) of pre‑mixed products in 2006: · Pre‑mix Scotch ‑ 4,088,768 · Pre‑mix Bourbon ‑ 17,619,407(approximately four‑times that of Pre‑mix Scotch) 32 There was very little evidence on whether Malt Scotch/Malt Whisky is used in premix products. Mr Halmarick, an experienced scotch whisky consultant, said he had heard of people mixing Coca‑Cola with Malt Whisky. He gave no specific examples or statistical figures. Mr Mott said retailers would sell bottles of GLENFIDDICH, GLENLIVET and GLENMORANGIE (Malt Scotch/MaltWhisky) and bottles of Coca‑Cola to mix, but that this "does not happen often". I find that while bottles of scotch whisky (blended) would be mixed with Coca‑Cola, Malt Scotch/MaltWhisky such as GLENFIDDICH, GLENLIVET and GLENMORANGIE are most unlikely to be dealt with in that manner. Consumers relate these three brands to bottled and not pre‑mix products.

The market(s) and consumer knowledge 33 There are two classes of consumer in the scotch whisky and bourbon markets: the involved consumer and the uninvolved consumer. The knowledge of these consumers may be obtained in several ways ‑ including labels, customer salespeople, word of mouth and past experiences. 34 Typically, involved scotch whisky consumers are very knowledgeable about the products they consume. For instance, they would understand that: · scotch whisky is made from barley · scotch whisky originates in Scotland · there are two forms of whisky: blended and malt · brands such as GLENFIDDICH, GLENLIVET and GLENMORANGIE are malt scotch whiskies and dominate the Malt Scotch market · the alcoholic content of scotch whisky must be at least 40% by volume. 35 All the applicant's expert witnesses would fall within this class of consumer. Given the market is quite small, product distinction between scotch whisky and other products is more readily discerned by consumers in this class. They would also be aware that scotch whisky is sold in bottles and in pre‑mixed drinks (scotch whisky products). 36 Typically, an involved consumer in the bourbon market has purchasing habits as demonstrated in Mr Mackinnon's evidence. An involved consumer in this class can be credited with a clear understanding of bourbon brands (for example, Jim Beam Black, Turkey, Cougar). Such knowledge would extend to both the bottled and pre‑mixed products. These consumers have a preference for pre‑mixed bourbon. 37 Uninvolved consumers in both the scotch whisky and bourbon markets can not be credited with the same knowledge as involved consumers. The following knowledge can however be attributed to them when purchasing either bottled or pre‑mixed products: · that bourbon bottles and/or pre‑mixed drinks (bourbon products) are labelled bourbon, bourbon whiskey or Tennessee whiskey · that bourbon products are made in the United States · that labelling on scotch whisky products shows their origin · that scotch whisky is made in Scotland. 38 The purchase of bourbon and scotch whisky products is notone of impulse. The habits of alcohol purchasers differs from those of purchasers of soft‑drinks or sports drinks, who are usually teenagers and children. Age, pricing and product quality are all factors that make for more discerning consumers of scotch whisky and bourbon. 39 The uninvolved purchaser buying a present for someone else will usually ask a salesperson, who will assist in product distinction between bourbon products and scotch whisky products. The salesperson in a liquor store is a means by which consumers become knowledgeable about different products. By contrast, consumers would not typically ask a salesperson what a bottle of coke or a new soft drink tastes like. They would purchase the product and try it themselves. Consumers would also read product labels, see that 'scotch whisky' is written on the container, and infer that scotch whisky is made in Scotland. 40 Consumers of pre‑mixed drinks primarily drink bourbon products, and only occasionally drink scotch whisky pre‑mixed products. Such consumers would, however, know of brand and taste differences between the bourbon and scotch whisky products. 41 The fact that the LMAA Report distinguishes between the bourbon and scotch whisky categories evidences a market distinction as to consumer habits and tastes. The LMAA Report further breaks down each market into categories such as bottled and pre‑mixed products and then further into Standard Scotch, Premium Scotch, Standard Bourbon and Premium Bourbon categories. These statistics are part of the totality of the evidence that shows that market distinction clearly exists between bourbon and scotch whisky products in Australia.

Advertising, pricing and shelving 42 Bourbon and scotch whisky are often advertised together by retail liquor stores. Print media advertisements of a range of bourbon and scotch whisky products typically advertise them together. Nevertheless, as indicated above, consumers read labels and are thus reasonably informed when making a purchase. 43 Many blended scotch whisky products are similarly priced to bourbon products. In some cases the expensive bourbons are priced closer to malt scotch whisky. 44 The visual aspect of the mark on the products is of great importance because that is what is seen by customers when looking at the shelves at the liquor retailer or the advertisements in the print media. Bottled scotch whisky and bourbon are advertised in the print media in advertisements which depict the particular bottles and labels affixed to the bottle. Likewise with pre‑mixed products. 45 Bottled scotch whisky and bourbon products are displayed for sale to consumers on shelves in the spirit section of liquor retailers outlets around Australia. Bottled scotch whisky and bourbon products are often displayed on adjacent shelves. Scotch whisky and bourbon products are not, however, intermingled on the shelves. 46 Bourbon bottles or pre‑mixed cans are sometimes placed on shelves other than those containing bottles of scotch whisky, particularly malt whisky with the name GLENFIDDICH, GLENLIVET and GLENMORANGIE. 47 The findings at [18]‑[47] provide the context against which the likelihood of deception or confusion is to be judged.

Ground 1: likely to deceive or cause confusion (s 43) 48 The applicant's case was put in two ways: in a broad sense and in a more specific sense. The latter is dealt with at [57]. The broad submission was that the words GLENN OAKS (particularly GLENN) convey a clear connotation of Scottish origin, and their use in relation to bourbon products is likely to deceive or cause confusion. This submission went to the real difference between the parties, namely whether bourbon should be listed in the statement of goods. 49 In order to succeed under s 43 of the Act, an opponent must show that there is a connotation in the proposed trade mark, and that because of that connotation, the use of the mark would be likely to deceive or cause confusion. See McCorquodale at [25] and [26]. 50 The word "connotation" is defined in the Oxford English Dictionary as: "1 The signifying in addition; inclusion of something in the meaning of the word besides what it primarily denotes; implication. b That which is implied in a word in addition to its essential or primary meaning." 51 In Dunn's Trade Mark (1890) 7 RPC 311 at 318‑319 Lord Macnaghten said that a tribunal should refuse to register "words which involve a misleading allusion or suggestion of that which is not strictly true, as well as words which contain a gross and palpable falsehood". His Lordship's comments were referable to the principle underlying a predecessor of s 43. In two Trade Mark Office decisions which applied Lord Macnaghten's observations, connotation was said to be more than a mere "allusion" or "suggestion": see Aktion Zahnfreundlich v Suntory Limited (1998) 42 IPR 593 and Effem Foods Pty Ltd v Star‑Kist Foods, Inc (2000) 50 IPR 121. 52 Whether there is a likelihood of deception or confusion is to be answered "not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered": Berlei v Hestia Industries Ltd (1973) 129 CLR 353 at 362. Here, the GLENN OAKS mark is the relevant mark in suit. The surrounding circumstances provide guidance as to what is proper, normal and fair use of the respondent's mark and whether confusion exists: McCorquodale at [52]‑[53] and [60] in particular. See also, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 494‑495, Registrar of Trade Marks v Woolworths (Woolworths Metro) (1999) 45 IPR 411at [50] and Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 438. 53 In Woolworths Metro, inconsidering the meaning of "likely to deceive or cause confusion", French J at 428 said: "i. To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient. ii. A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt…It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source. iii. In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services. iv. The rights of the parties are to be determined as at the date of the application. v. The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained." See also Southern Cross at CLR 594-5 per Kitto J." 54 In Coca‑Cola Co v All‑Fect Distributors Ltd (All‑Fect) (1998) 43 IPR 47 at [41], albeit an infringement case, the Full Court said: "…the likelihood of deception or confusion involves an assessment of what would be the probable visual impression on customers or potential customers which would be produced as a result of the "notional normal and fair use" of the marks. See Gardenia Overseas Pty Ltd v The Garden Co Ltd (1994) 29 IPR 485 at 493." 55 Customers are not to be credited with any "high perception or habitual caution". On the other hand, "exceptional carelessness or stupidity may be disregarded": Australian Woollen Mills Limited v. F. S. Walton & Co Ltd (Woollen Mills) (1937) 58 CLR 641 at 658 and Woolworths Metro at [49]. In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (Shell) (1963) 109 CLR 407 at 410 the High Court said that deceptive similarity must be considered against the "background of the usages in the particular trade." See also Berlei v Hestia Industries Ltd (1973) 129 CLR 353 at 362 per Mason J. 56 The applicant's specific case under s 43 was put as follows: · Glen is an anglicised spelling of the Scottish Gaelic word 'Gleann' or 'Ghlinne' which means narrow valley, dale or glen. Scotland is renowned for whisky. "Glen" is evocative of Scotland and in particular of Scotch whisky. · Use of GLENN OAKS on bourbon products labelled 'bourbon', 'bourbon whiskey' or 'Tennessee whiskey' that do not originate in Scotland would be likely to deceive or cause confusion because of that connotation. · Alternatively, in the hypothetical case of a bourbon product being labelled solely as 'whiskey', the use of the GLENN OAKS mark would unequivocally evoke Scotland as the source of the product. 57 The applicant also placed emphasis on the fact that bourbon is a form of whiskey albeit one made in the United States. 58 In the circumstances described, the applicant submitted that consumers would be led into confusion if the GLENN OAKS mark could be applied to bourbon products as indicated on the statement of goods listed in the application. I am not persuaded by this submission. 59 First, for both involvedand uninvolved purchasers of bourbon products, the words Glen or Glenn is more likely to be associated with a person's name than with a place denoting Scottish origin. Most uninvolvedscotch whisky consumers, particularly those of pre‑mixed drinks, would also think of a person's name before thinking of a Scottish place. The LMMA Report indicates that scotch whisky drinkers prefer pre‑mixed drinks. There was no evidence of any pre‑mixed drinks with the name Glen or Glenn. Involved scotch whisky consumers are in the same position. Consumers in the involved malt whisky class are discerning in their choice and are very knowledgeable about the products they purchase. Purchasing habits are more refined, which lessens the chance of confusion. Glen or Glenn, as a person's name, overshadows the connotation propounded by the applicant. Accordingly, that connotation is not strong enough to cause "enough persons in the relevant public to be deceived or confused": Carlton & United Breweries v Royal Crown (2001) 53 IPR 599 at 606; The Kendall Co v Mulsyn Paint and Chemicals (Kendall) (1963) 109 CLR 300 at 305. 60 Second, involved and uninvolved purchasers of bourbon and scotch whisky products review product labels. This is the fair and normal way in which consumers behave. In this case, confusion is mitigated by the circumstances in which such products are bought and sold. Bourbon products are typically labelled as bourbon, bourbon whiskey or Tennessee whiskey. Importantly, a consumer of these products must be 18 years of age. Bourbon products are much more expensive than impulse products such as soft drinks and confectionary: cf. All‑Fect at [41] and Shanahan's Australian Law of Trade Marks & Passing Off 3rd ed (Shanahan), 176 and 211‑212. Purchasers of alcohol generally tend to be discerning in their purchasing habits: cf Henschke & Co v Rosemount Estates Pty Ltd (Henschke) (2001) 52 IPR 42and Shanahan at211‑212. Where goods are denoted as being from a particular country, this constitutes another factor that reduces the possibility of confusion: Green's Application (1946) 64 RPC 14. 61 Both involved and uninvolved purchasers of bourbon and scotch whisky products will inspect labels and see that the product is in fact bourbon, made in the USA or the states Kentucky or Tennessee. A label indicating bourbon, bourbon whiskey and/or made in the USA clearly connote an origin of a place other than Scotland. Labels indicating 'Tennessee Whiskey' again connotes an origin in a place other than Scotland. For a mark to be rejected under s 43 there must be a 'real tangible danger of deception or confusion'. That exceptionally stupid or careless consumers might be confused does not suffice. 62 Third, there is no evidence that the GLENN OAKS mark would be used or would be likely to be used on a bottle of bourbon labelled solelyas 'whisky' or 'whiskey'. While that does not limit the prospective use of a label of this nature, I infer from the absence of such evidence that such use would not be in the fair and normal course: Woollen Mills at 658, Woolworths Metro at [49] and All‑Fect at [41]. In my view, the hypothetical scenario that the applicant proffers is one that will not, in all likelihood, eventuate. It cannot, therefore, lead to consumer confusion for the purposes of the Act. However, to cover this hypothetical case, the Court's order will state that bourbon in the statement of goods does not include bourbon which is labelled only as 'whiskey' or 'whisky'. 63 The applicant's case on s 43 of the Act fails.

Ground 2: deceptive similarity (s 60) 64 In order to establish a ground of opposition under s 60, the applicant must demonstrate that the GLENN OAKS mark: · is substantially identical or deceptively similar to another trade mark (registered or unregistered) · which had acquired a reputation in Australia amongst a significant section of the public such that the use of the GLENN OAKS mark would be likely to deceive or cause confusion. 65 Numerous marks were put in evidence by the applicant. The respondent, however, submitted that GLENFIDDICH, GLENLIVET and GLENMORANGIE are the only marks relevant to the second limb. I agree. All three brands fall into the malt scotch market, which constitutes only 1.88% of the total bottled Scotch/Whisky category in the LMAA Report. (This percentage would be significantly lower if both bottled and 'pre‑mix' scotch products were taken into account). According to Mr Halmarick, these were the three 'Glen' marks of which consumers were typically aware. All three pre‑date the priority date of the GLENN OAKS mark. Further, the evidence establishes that they are the dominant marks in the malt scotch whisky market. Accordingly, I will consider only those marks in the s 60 comparison. 66 The key issue under s 60 is a comparison between the GLENN OAKS mark and marks used before its priority date. The approach in Pianotist Co's Application (1906) 23 RPC 774 at 777 is oft cited. There, Parker J said: "You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all of the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks are used in a normal way as a trade mark for the goods of the respective owners of the marks." 67 That passage was cited with approval in Cooper Engineering Co. Pty Ltd v Sigmund Pumps Limited (1952) 86 CLR 536 at 538 and in Woollen Mills at 658, where Dixon and McTiernan JJ described the comparative analysis as follows: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight." 68 A more recent decision, not dissimilar to the present case, is Henschke, albeit an infringement case. The marks in issue were: · Hill of Grace (owned by Henschke, being the registered mark used on bottles of wine) · Hill of Gold (owned by Rosemount, being the alleged infringing mark used on bottles of wine). 69 The Full Court held in favour of Rosemount on the basis that the second element of both marks ‑ 'Grace' and 'Gold' ‑ were "peculiar and distinctive", sounding different and evoking quite distinct impressions: Henschke at [57]. In applying the relevant tests, the Court considered the characteristics of involved and uninvolved consumers in the market, saying at [41]‑[42]: "So, in this case, no doubt it was relevant to know that the wine market is a crowded one but that, although names incorporating topographical or geographical references are common, 'Hill of …' is almost unique. Equally, we see no reason to doubt that the characteristics of consumers of wine, and of particular categories of consumers, were relevant; so too was the way in which wine is marketed, including - for example - the way wines are commonly described in restaurant wine lists. The significance of surrounding circumstances of that nature was discussed in the judgment of the Full Court in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 at 245-6; 42 IPR 561: such circumstances provide the context for consideration of the question whether a near resemblance between two marks is likely to deceive or cause confusion." (Emphasis added)

Glenn Oaks v Glenfiddich 70 The GLENN OAKS mark has two elements - GLENN and OAKS. Despite being a single word, the GLENFIDDICH mark also has two elements. The first element of both marks is substantially the same ‑ GLENN and GLEN. It is the second that requires closer attention. OAKS and FIDDICH are quite different. · OAKS and FIDDICH do not have similar meanings, if the latter has one at all. In any event, confusion is mitigated when one word has no readily apparent meaning: Gardenia Overseas Pty Ltd v The Garden Co Ltd (1994) 29 IPR 485. · OAKS and FIDDICH are quite different in a visual sense: cf Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 28 IPR 193. · OAKS and FIDDICH are aurally different. The two syllables in FIDDICH is a further distinction between the marks. 71 The relevant surrounding circumstances provide additional reasons why there would be marginal (if any) confusion. Carelessness or stupidity are considerations to be disregarded in any comparative analysis. This consideration has greater weight in a market where the purchase of products is notone of impulse, but requires some degree of consideration. Unlike All‑Fect, this case does not deal with confectionary that targets consumers of less discerning habits, such as children. A purchaser must be at least 18 years of age and would, in all likelihood, consider the second feature of the marks. There is no deceptive similarity between the marks.

Glenn Oaks v Glenlivet 72 Similarly here, the point of difference is the second element of both marks: OAKS and LIVET. What appears at [71] to [72] is equally applicable in this comparison. OAKS and LIVIT do not hold the same meaning, the marks are vastly different in a visual and aural sense.

Glenn Oaks v Glenmorangie 73 There is no deceptive similarity between the GLENN OAKS and GLENMORANGIE marks. Again, the second feature in the marks is distinct both visually and aurally. It is this feature that the consumer would be drawn to in terms of identifying a difference between the brands. Even allowing for imperfect recollection, there is no deceptive similarity between the marks.

Family marks 74 The applicant put its s 60 case in an alternative way. This was that the respondent's mark contravened s 60 because one or more trade marks(namely, a family of marks with the prefix 'GLEN' used in relation to scotch whisky) had acquired a reputation in Australia before 31 October 2003. The respondent referred to these marks as the 'GLEN' marks. 75 As I understood the submission it was that use of the GLENN OAKS mark is likely to result in confusion because a family of 'GLEN' marks exists in the market. The applicant relied upon a Trade Mark Office decision in McDonalds Corporation v Bellamy (2004) 62 IPR 133 at 139 to support the submission. There, the delegate said: "[In] the line of 'family' trade mark cases…the trade marks of an opponent have been found to have a common element, usually a prefix, which is so thoroughly associated with the opponent's goods or services that the use by another person of a trade mark incorporating that element, would deceive or confuse." 76 The family marks argument is not persuasive. The applicant is not the registered owner of all the 'Glen' marks. Beck Koller & Co (1947)64 RPC 76 at 83 provides guidance, in dicta, as to how family marks should be examined: "When an application for registration is before the Registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors. … If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a 'series' of marks and judge the conflict between the applicants' mark and each of the proprietor's mark with this consideration in mind. … On the other hand, if the registered marks were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant's mark with the registered marks, … the presence of marks on the register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account." (Emphasis added) 77 The "applicant" referred to in that passage is the applicant for the trade mark. So if the marks were owned by the same party, that would have gone against the applicant, but where there were a number of prior registered marks belonging to different parties, that was in the applicant's favour. In the present case, the respondent is the applicant for the trade mark. The passage above cuts in favour of the GLENN OAKS mark. 78 In both Woolworths Metro and McDonalds there was only one registered owner of the relevant trade marks. Several United States authorities, including J & J Snack Foods Corp v McDonald's Corp 932 F 2d 1460 (Fed Cir 1991) and American Standard Inc v Scott & Fetzer Co 200 USPQ 457 461 (TTAB 1978), support the distinction referred to at [77]‑[78]. 79 As a matter of commonsense and consistency with the purpose of the Act, the respondent's position is to be preferred. The function of a trade mark is to indicate the origin of the goods: Powell's Trade Mark (1893) 10 RPC 195 at 200. If the evidence establishes a common characteristic well recognised in marks in use by different owners in the particular trade (for example 'Glen'), this would reduce the chance of confusion as the consumer is aware that different owners maintain different trade marks (albeit names starting with the same word or letters). The consumer's attention is, therefore, likely to be more attuned to the second element in the relevant mark. For example OAKS in GLENN OAKS or LIVET in GLENLIVET. In particular, awareness of the second element would be a matter of habit for involved scotch whisky consumers. 80 Beck Koller at 83 indicates that family marks are only to be regarded as one of the "surrounding circumstances which is required to be taken into account" when making a comparison. Pianotist, as approved in High Court authorities, remains the primary test of deceptive similarity. Therefore, the existence of family marks is only a relevant factor in the totality of the assessment of whether there is a likelihood of deception or confusion. In this case, it supports the respondent. 81 The GLENN OAKS mark is sufficiently distinct from each of the GLENFIDDICH, GLENLIVET and GLENMORANGIE marks. I am also not persuaded by the family marks submission. Accordingly, the applicant fails under s 60 of the Act. This holding applies to both involved and uninvolved consumers of scotch whisky and bourbon products.

Ground 3: "contrary to law" (s 42(b)) 82 Under s 42(b) of the Act an application for a trade mark must be rejected if its use would be "contrary to law." Section 52 and 53 of the TP Act and the common law action of passing offwere relied on. 83 While a tendency to cause confusion will generally not satisfy s 52 or s 53, in particular circumstances such as that illustrated by Taco Co (Aust) Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 201, it may. However, for the reasons given in dealing with the earlier grounds, there is no such tendency here. 84 Passing off is a tort that does not require proof of intent to deceive. However, there must be at least a likelihood of deception: Erven Warnink BV v J Townsend & Sons Hull Ltd [1980] RPC 31 at [93] and [99]. For the reasons given in dealing with the earlier grounds, that has not been established.

Conclusion on appeal 85 The application must be dismissed.

Cross appeal 86 The delegate said that the applicant's opposition was justified. The applicant was correct in saying that use of the mark on the goods for which the application was accepted was likely to cause confusion. On the other hand the respondent's amendment to his statement of goods following the hearing was sufficient to eliminate that likelihood. As both parties thus had a measure of success, the delegate considered they should bear their own costs. That is also the view to which I have come. The cross appeal should be dismissed. I certify that the preceding eighty-six (86) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Sundberg.

Associate: Dated: 2 November 2007 Counsel for the Applicant: Ms S Strong SC

Solicitor for the Applicant: Corrs Chambers Westgarth

Trade Practices Act 1974(Cth)

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