Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd

1. To the extent required, Order 3 made on 30 June 2020 be varied to permit the giving of judgment in the appeal and to grant leave to the appellant to file and rely upon the amended notice of appeal.
2. Leave be granted to the appellant to file and rely upon its amended notice of appeal.
3. The appeal be dismissed.
4. The appellant pay the respondent's costs. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Overview 1 The appellant, Urban Alley Brewery Pty Ltd, sued the respondent, La Sirène Pty Ltd, for infringement of registered trade mark 1775261 (the Word Mark) under s 120(1) of the Trade Marks Act 1995 (Cth) (the Act). The mark, which is registered in class 32 for beer, comprises the words "urban ale". 2 The alleged infringement was the respondent's use of the words "Urban Pale" on the label of its beer product, exemplified below, as well as on its website and in social media in relation to that product: 3 The respondent had also filed an application to register the mark "Urban Pale" under the Act. The appellant relied on this filing as evidence of threatened infringement. 4 The primary judge rejected the appellant's case. His Honour found that the registration of the Word Mark should be cancelled under s 88(1)(a) of the Act on two grounds: first, under s 41(1) of the Act, the Word Mark was not capable of distinguishing the appellant's goods (beer) from the goods of other persons; secondly, under s 44(1) of the Act, the Word Mark was deceptively similar to an earlier registered mark in class 32 for beer (trade mark 1760362), comprising the words "Urban Brewing Company" (the Urban Brewing Company Trade Mark) which is owned by an unrelated company. These findings meant that the appellant's claim against the respondent for trade mark infringement could not be supported. 5 Apart from that lack of support, the primary judge found that the appellant could not establish trade mark infringement in any event. The primary judge found that the respondent had not used "Urban Pale" as a trade mark on or in relation to its beer product. As to threatened infringement, the primary judge noted that the respondent had withdrawn its application to register "Urban Pale" as a trade mark. 6 The primary judge also found that the respondent would have had defences to infringement under s 122(1)(b)(i) and s 122(1)(e) of the Act. 7 The primary judge's finding in relation to the defence under s 122(1)(e) was based on the respondent's own registration, with effect from 26 October 2018, of the following device mark in class 32 for beer (trade mark 1961656) (the La Sirène Label Mark): 8 The respondent had also raised a defence under s 122(1)(e) in relation to its registration, with effect from 24 October 2018, of the words "Farmhouse Style Urban Pale by La Sirène" as a trade mark in class 32 for beer (trade mark 1961654) (the La Sirène Word Mark). The primary judge did not determine that defence. In effect, his Honour reasoned that, as the La Sirène Label Mark was identical to the packaging and labelling of the respondent's Urban Pale product and provided it with a defence to infringement, it was not necessary for him to consider the separate defence based on the registration of the La Sirène Word Mark. 9 The appellant sought orders cancelling the registration of the La Sirène Word Mark and the La Sirène Label Mark. The primary judge was not satisfied that grounds for cancellation had been made out. 10 On 17 March 2020, the primary judge ordered that the registration of the Word Mark be cancelled. His Honour also dismissed the appellant's originating application and otherwise dismissed the respondent's cross-claim, with costs awarded against the appellant in each case. 11 On the question of trade mark validity, the appellant challenges the primary judge's findings that the Word Mark should be cancelled on the grounds provided by ss 41(1) and 44(1) of the Act: see s 88(2)(a) of the Act. 12 On the question of trade mark infringement, the appellant challenges the primary judge's finding that the respondent had not used the words "Urban Pale" as a trade mark. It also challenges the primary judge's findings that, had the respondent used the words "Urban Pale" as a trade mark, it would have defences under s 122(1)(b)(i) and s 122(1)(e) of the Act. 13 Finally, the appellant challenges the primary judge's finding that it had not established grounds for the cancellation of the La Sirène Label Mark. 14 There were other claims, defences and counterclaims advanced at trial, but these have no bearing on the outcome of this appeal. 15 We have come to the conclusion that the appeal should be dismissed, with costs.

Section 41 16 An application for the registration of a trade mark must be rejected if the mark is not capable of distinguishing the applicant's goods or services (here, the appellant's beer) from the goods or services of other persons: s 41(1). 17 Section 41(2) of the Act provides: A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark. 18 Section 41(3) is relevant to this appeal. It provides: This subsection applies to a trade mark if: (a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and (b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant. 19 Section 41(4) is also relevant in light of the way in which the appellant presented its case to the primary judge. It provides: This subsection applies to a trade mark if: (a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and (b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following: (i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons; (ii) the use, or intended use, of the trade mark by the applicant; (iii) any other circumstances. Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate: (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or (b) the time of production of goods or of the rendering of services. Note 2: For goods of a person and services of a person see section 6. Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8). 20 The structure of s 41 is such that, if either s 41(3) or s 41(4) applies then, by dint of s 41(2), the requirement of s 41(1) cannot be satisfied, with the consequence that the mark is not capable of registration under the Act. 21 Before the primary judge the appellant's case was that the Word Mark is sufficiently inherently adapted to distinguish its beer products such as to fall outside the application of s 41(3) and s 41(4). However, as to s 41(3), the appellant accepted that its use of the Word Mark before the filing date was insufficient to distinguish its beer as a matter of fact. Thus, to this extent, the appellant accepted that s 41(3) applied. 22 The primary judge found that the Word Mark was not to any extent inherently adapted to distinguish the appellant's beer. As we explain below, the primary judge found that each of the words "urban" and "ale" when used in relation to beer is descriptive and that the combination "urban ale" does not alter the ordinary signification of the words or their descriptiveness. 23 Given the appellant's acceptance that its use of the Word Mark before the filing date was insufficient to distinguish its beer as a matter of fact, s 41(3) applied. This necessarily meant that, under s 41(2), the Word Mark was to be taken as not capable of distinguishing the appellant's goods for the purpose of s 41(1) of the Act. In the context of the proceeding before the primary judge this, in turn, meant that the mark's registration was liable to be cancelled under s 88(1)(a) of the Act in reliance on s 88(2)(a).

Section 44 24 An application for the registration of a trade mark must be rejected if, amongst other things, the trade mark is substantially identical with, or deceptively similar to, a trade mark registered by another person in respect of similar goods or closely related services, where the priority date for the registration of the first-mentioned mark is not earlier than the priority date for the second registered mark: s 44(1) of the Act. In the present case, the "blocking" registration relied on by the respondent was, as we have noted, the Urban Brewing Company Trade Mark. 25 The primary judge found that the Word Mark was deceptively similar to the Urban Brewing Company Trade Mark. His Honour rejected the respondent's submission that the two marks were substantially identical. 26 In making his finding of deceptive similarity, the primary judge drew on what he found to be a close association in meaning between the words "brewing company" and "ale", and the common use of the word "urban" as the first word of each mark. His Honour found that there was a real risk that Australian consumers would be left in doubt or would have cause to wonder whether goods bearing the respective marks had the same origin. He found that there was nothing in each mark, as registered, to dispel that confusion. 27 The primary judge's findings and conclusions in relation to the operation of s 44(1) meant that, for this independent reason, the Word Mark's registration was liable to be cancelled under s 88(1)(a) of the Act in reliance on s 88(2)(a).

Trade mark use 28 If a trade mark is registered under the Act, the registered owner has the exclusive rights to use, and to authorise others to use, the trade mark: s 20(1). The registered owner also has the right to obtain relief under the Act if the trade mark has been infringed: s 20(2). A person infringes a registered trade mark if the person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the registered mark in relation to goods or services in respect of which the mark is registered: s 120(1). 29 The primary judge was not satisfied that the respondent's impugned use was use of the product name "Urban Pale" as a trade mark. This was fatal to the appellant's case on infringement. 30 It is convenient to consider the primary judge's finding by reference to the depiction of the label at [2] above. The primary judge noted that the words "Urban Pale" appeared in large lettering and in emboldened font on the label. Indeed, the primary judge was satisfied that this was the most prominent name on the label. However, he did not consider that prominence converted (what his Honour found to be) an essentially descriptive name into a trade mark that indicated the source of origin of the product. The primary judge expressed four reasons for this conclusion. 31 First, his Honour found that the words "by La Sirène" were sufficiently prominent on the label to convey that the respondent was the source of origin of the product. 32 Secondly, his Honour concluded that the words "urban" and "pale", when used in connection with beer, would be understood by consumers as describing the nature and style of the beer in the sense that the word "urban" presented the beer as a craft beer and the word "pale" indicated a style of beer (pale ale). Although his Honour recognised that a descriptive name can also function as a trade mark, he considered that "Urban Pale" was overwhelmingly descriptive of the respondent's product's nature and style and that consumers would not consider that the name was used to distinguish the respondent's product from the products of others. 33 Thirdly, the primary judge did not accept the appellant's submission that the respondent had commonly used the name "Urban Pale" on its own and in a manner to distinguish that product from the products of others. 34 Fourthly, the primary judge placed no reliance on the fact that the respondent had filed a trade mark application for "Urban Pale" as affording evidence that the respondent intended to use "Urban Pale" as a trade mark. To the extent that the respondent's subjective intention might be relevant on the question of infringement, the primary judge accepted evidence that the respondent chose not to proceed with the application because a number of third parties were already using "urban" in relation to beer and related goods and services, and the word "pale" was a shorthand description of pale ale as well as a descriptor of the colour and appearance of a large range of beers.

Section 122(1)(b)(i) 35 Section 122(1)(b)(i) of the Act provides: In spite of section 120, a person does not infringe a registered trade mark when: … (b) the person uses a sign in good faith to indicate: (i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; … 36 The primary judge noted that the appellant had not contended that the respondent had adopted the name "Urban Pale" dishonestly or with an ulterior motive. Therefore, there was no want of good faith on the part of the respondent that would deny its reliance on this defence. The issue between the parties was the narrow one of whether the word "urban" functions to indicate the kind, quality, geographic origin or any other characteristic of beer. The appellant had argued that the word "urban" was too nebulous to indicate any of those matters. The primary judge disagreed. He found that "urban" has a tangible meaning in relation to beer (including, at one level, that it connotes that the beer has been produced in an inner city craft brewery). Thus, the primary judge found that the word "urban" when used in connection with beer indicates "the kind, quality or other characteristic of the product". The primary judge was therefore satisfied that this defence had been made out.

Section 122(1)(e) 37 Section 122(1)(e) provides: In spite of section 120, a person does not infringe a registered trade mark when: … (e) the person exercises a right to use a trade mark given to the person under this Act; … 38 As we have noted, the respondent relied on the La Sirène Word Mark and the La Sirène Label Mark (together, the La Sirène Marks). It was common ground between the parties that if the respondent was entitled to rely on this defence, then it applied to the period commencing from the respective dates of registration of those marks. 39 The appellant contended that the respondent was not entitled to rely on the defence because it had not made ordinary use of the La Sirène Word Mark consistently with the rights granted to it by its registration. The primary judge concluded that this contention did not assist the appellant because, whatever the position might be with respect to the La Sirène Word Mark, the respondent could rely on the La Sirène Label Mark, which was identical to the packaging and labelling of its Urban Pale product. 40 As we have recorded, the appellant then contended that the La Sirène Word Mark and the La Sirène Label Mark should be cancelled under s 88(1)(a) of the Act on various grounds. 41 First, the appellant contended that the La Sirène Marks should be cancelled because, under s 44(1) of the Act, they were substantially identical with, or deceptively similar to, the appellant's prior registration of the Word Mark. As the primary judge was satisfied that the Word Mark should be cancelled, this ground fell away. 42 Secondly, the appellant contended that the La Sirène Marks should be cancelled because, under s 42(b) of the Act, their use by the respondent would be contrary to law on the basis that such use would be contrary to ss 18 and 29 of the Australian Consumer Law and would constitute a passing-off. The primary judge was not satisfied that ss 18 and 29 of the Australian Consumer Law would be contravened or that passing-off would occur by reason of the respondent's use of the La Sirène Word Mark or the La Sirène Label Mark. 43 Thirdly, the appellant contended that the La Sirène Marks should be cancelled because, under s 60 of the Act, their use by the respondent would be likely to mislead or deceive based on the appellant's prior reputation in the words "urban ale". 44 Fourthly, the appellant contended that the La Sirène Marks should be cancelled because, under s 88(2)(c) of the Act, their use by the respondent was likely to mislead or deceive based on the appellant's reputation in the words "urban ale" at the date of commencement of the primary proceeding. 45 The primary judge rejected the third and fourth bases for cancellation because he was not satisfied that the appellant had established the reputation it claimed. 46 Therefore, the primary judge was not satisfied that the appellant had made out a case for cancellation of the La Sirène Marks.

Ground 1 47 Ground 1 of the amended notice of appeal (the notice of appeal) contends that the primary judge erred by ordering the cancellation of the registration of the Word Mark pursuant to s 88(1)(a) of the Act. This ground is informed by Grounds 2 and 3. The notice of appeal as originally filed also advanced Ground 4 in support of Ground 1. The notice of appeal as amended abandons Ground 4.

Ground 2 48 Ground 2 of the notice of appeal contends that the primary judge erred by finding, firstly, that the Word Mark was not capable of distinguishing the appellant's beer within the meaning of s 41(1) of the Act and, secondly, by rejecting the Word Mark under s 41(3). Given the structure of s 41 of the Act, and in particular s 41(2), the first contention, in fact, proceeds from the second contention: see [20] above. 49 The notice of appeal provides the following particulars: (a) The primary judge found, as agreed by the parties, that "… the combination of words "urban ale" does not convey any significance in terms of style or flavour characteristics of beer.": [135] of Judgment 1 (and restated at [140] of Judgment 1). (b) Having correctly made the finding referred to in sub-paragraph (a) above, his Honour erred, on the issue of capacity to distinguish, by finding that: (i) "… the meaning of "urban ale", when used in connection with beer, is [not] allusive or metaphorical": [141] of Judgment 1; (ii) "… [urban ale] describes the beer as having been produced in a city location …. [and produced] in an inner-city craft brewery": [141] of Judgment 1; (iii) "…the use of the word [urban, as a consequence] is descriptive and laudatory….": [141] of Judgment 1; (iv) "… each of the words "urban" and "ale", when used in relation to beer, are descriptive. Their combination does not alter their ordinary signification or their descriptiveness.": [144] of Judgment 1; and (v) "…the Urban Ale mark is not to any extent inherently adapted to distinguish Urban Alley's beer products from those of other producers...": [145] of Judgment 1. (c) Having correctly made the finding referred to in sub-paragraph (a) above, his Honour ought also to have found that the Word Mark was inherently adapted to distinguish the Appellant's beer products from those of other traders on the basis that it does not describe a style or flavour characteristics of beer. 50 The reference in these particulars and the other particulars in the notice of appeal to "Judgment 1" is to the primary judge's reasons published as Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCA 82; 150 IPR 11. 51 In trade mark law, a finding that a "word" mark is not to any extent inherently adapted to distinguish a trader's goods from the goods of others means that the word, in relation to those goods, serves a purely descriptive function. The rationale for not allowing such words to be registered as trade marks is that the registration would result in an appropriation of the common stock of language that all should be free to use for its ordinary meaning. 52 In the present case, the primary judge referred to the following explanation of the notion of inherent adaptation in Apple Inc v Registrar of Trade Marks [2014] FCA 1304; 227 FCR 511 at [11]: 11 What does it mean to say that a trade mark is inherently adapted to distinguish the goods or services of one person from the goods or services of another? The notion of inherent adaptation is one that concerns the intrinsic qualities of the mark itself, divorced from the effects or likely effects of registration. Where the mark consists solely of words, attention is directed to whether those words are taken from the common stock of language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade. 53 Considered in the abstract, the primary judge's finding that the Word Mark was not to any extent inherently adapted to distinguish the appellant's beer might seem surprising. However, his Honour's conclusion was based on contextual facts to which his Honour was entitled to have regard. 54 In Mark Foy's Limited v Davies Coop and Company Limited (1956) 95 CLR 190 at 195, Dixon CJ said: It is easy to say that the words are addressed to persons who are accustomed to speak an idiom to which courts are strangers and who are more sensitive than judges to allusive forms of speech, which, it is claimed, possess a greater efficacy in the lively communication of more or less definable ideas. But if the claim is that the words possess a meaning which courts might not be expected to know, it would have been easy enough to adduce evidence of the meaning ... 55 When reflecting on numerous decisions of the High Court dealing with whether a mark has been adapted to distinguish goods, the majority in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; 254 CLR 337 (Cantarella) said at [44]: 44 … Those decisions show that assessing the distinctiveness of a word commonly calls for an inquiry into the word's ordinary signification and whether or not it has acquired a secondary meaning. 56 The majority went on to say at [59]: 59 … In relation to a word mark … "inherent adaption to distinguish" requires examination of the word itself, in the context of its proposed application to particular goods in Australia. 57 One of the decisions to which the majority in Cantarella referred was F. H. Faulding & Co. Limited v Imperial Chemical Industries of Australia and New Zealand Limited (1965) 112 CLR 537, which concerned the registrability of the word "Barrier" in respect of "chemical substances prepared for use in medicine and pharmacy". After reviewing the evidence in that case of trade use of "Barrier", Kitto J said (at 556-557): The conclusion seems inevitable that at least by the year of the initial registration of the appellant's trade mark (1943) the word Barrier had caught on as a word peculiarly apt, according to its ordinary signification, for descriptive use in connexion with skin protective creams, so that any trader in such creams would be very likely indeed, in the ordinary course of business and without any improper motive, to desire to use the word in order to distinguish such creams in general from creams intended for other purposes. We have not to inquire, on this aspect of the case, whether or not the respondent began its use of the word with a view to appropriating to itself some of the goodwill which the appellant had built up for its own product. What matters is that at all material times the word has had such a place in the vocabulary of persons concerned with skin protective creams that according to the principle which must be applied under the Trade Marks Acts the appellant cannot be allowed a monopoly of its use in connexion with such creams. 58 In the present case, evidence as to the meaning of "urban" in the composite expression "urban ale" in the context of beer was adduced by the respondent. 59 The primary judge found that, at one level of meaning, the word "urban", when used in relation to beer, conveyed the meaning that the beer was brewed in a city location as opposed to a country location. His Honour noted that it is well-known that many traditional or mainstream brewers are located in urban areas. 60 However, the primary judge also found that, at another level of meaning, the word "urban", when used in relation to beer, had come to signify a connection with the craft beer industry. In particular, the word, so used, had come to signify craft beer made in an inner city location. The primary judge saw this use as not only descriptive of the beer as such, but also as laudatory, indicating that the brewer or the beer is "fashionable", "trendy" or "cool", and therefore attractive for that reason. 61 These findings were based, in part, on the work of journalists writing about beer in Australia. The publications, which are summarised at [80]-[91] of his Honour's reasons, were directed to beer producers and consumers. His Honour took this as evidence of the common usage of the word "urban" by those having an interest in beer, whether as producers or consumers. 62 The primary judge also relied on evidence that showed that businesses associated with beer had adopted or used the word "urban" as part of their product names and business names. The evidence is summarised at [93]-[103] of his Honour's reasons. His Honour accepted that the respondent's own use of "urban" in the name "Farmhouse Style Urban Pale by La Sirène" was motivated by its desire to describe the location of the production of its beer (in an urban area) and that this, too, was evidence of a trader using the word "urban" for its ordinary signification. 63 The primary judge also received evidence of opinion from a beer industry writer, Mr Kirkegaard. His Honour accepted that Mr Kirkegaard's industry experience qualified him to express an opinion on the common usage and meaning of the word "urban" when used in relation to beer products and breweries. The appellant did not, and does not, challenge the reception of that evidence. Further, Mr Kirkegaard's opinion on the common usage and meaning of the word "urban" in this context was not directly challenged in cross-examination. 64 The primary judge accepted Mr Kirkegaard's opinion that the word "urban" does not have any particular significance in terms of beer style or flavour characteristics; that it is a very generic term used to describe the location of a brewery or its target audience; that it communicates the aesthetic of an inner-city brewery or describes the inner-city beer movement; and that it is a generic term that brewers use to describe their location or ground their beer marketing as being relevant to an inner-city consumer. 65 Importantly, the primary judge recorded the parties' agreement that, in connection with beer and breweries, the word "urban" conveys its ordinary meaning that the beer is brewed in a city as opposed to a country location. His Honour also recorded that the parties generally agreed that "urban" had become associated with craft beer products and breweries, referring to the fact that the beer is produced in an inner city location which is regarded within a certain segment of the market as "cool" or "trendy", and thus attractive for that reason. 66 The primary judge also noted the parties' agreement (which we note is consistent with Mr Kirkegaard's evidence) that the combination "urban ale" does not convey any significance in terms of style or flavour characteristics of beer. Rather, the primary judge found that the words signify a craft beer brewed in an inner-city location. We will return to this juxtaposition: see [79]-[85] below. 67 In this appeal, the appellant disputes the correctness of the primary judge's findings of fact as to the ordinary signification of "urban ale". This is a somewhat ambitious undertaking given the agreement between the parties, which we have noted at [65]-[66] above. Nonetheless, we were taken to the evidence on which the primary judge relied in an endeavour to persuade us that his Honour's findings on the descriptive and laudatory use of "urban" in relation to beer were not open to him on that evidence. In undertaking that review, the appellant submitted that the primary judge failed to distinguish between registration of a mark for "beer" and registration of the same mark for a "brewery". 68 We are not persuaded that the primary judge failed to appreciate the distinction between registration of a mark for "beer" and registration of the same mark for a "brewery". Indeed, at [159] of his reasons, the primary judge noted that distinction when dealing with the respondent's challenge to the validity of the Word Mark based on s 44(1) of the Act. We do not accept that this distinction somehow eluded his Honour when considering the challenge to validity based on s 41(1) of the Act. 69 It is true that a number of the publications on which the primary judge relied referred to "urban" breweries. However, the articles were about the craft beers brewed in those breweries, such that, as a matter of substance, the word "urban" attached not only to the brewery but also to the beer produced from the brewery. In some cases, the beer was referred to as an "urban product" or "urban brews". In one publication, even the description "urban ale" was used. Consumers of these beers were described as constituting an "inner-urban market", "urban hipsters" and "urban beer lovers". They were also described as part of the "urban brewery scene". The evidence showed that tour providers in Australia offered "urban beer" tours. Restaurants and bars in Australia, with a focus on beer, incorporated "urban" into their names. 70 Having considered the evidence to which we were taken, we are satisfied that the primary judge's findings as to the descriptive and laudatory meaning of the word "urban" in relation to beer were open to him. We do not see any appealable error in his Honour's fact-finding. There is, therefore, no basis on which we should interfere with those findings. 71 The corollary of the primary judge's findings is that the meaning of "urban ale", when used in relation to beer, is not allusive or metaphorical (as the appellant contended them to be). His Honour so found at [141]. As his Honour put it, the evidence established that the word "urban", in its relevant context, has a tangible meaning - beer produced in an inner-city craft brewery. Had the primary judge found that the Word Mark was an allusive or metaphorical use of the words "urban ale" then this would have indicated that the mark was inherently adapted, or at least inherently adapted to some extent, to distinguish the appellant's beer from the beer of other traders. 72 To support the validity of the Word Mark, the appellant submitted that, contrary to his own understanding, the primary judge had in fact adopted an "allusive or metaphorical approach" by commenting that, within a certain segment of the market, beer produced in an inner city location is regarded as "cool" or "trendy" (or as we have also noted, "fashionable"), and thus attractive for that reason. As we understand it, the denouement of this submission is that this approach by the primary judge reveals that the words "urban ale", when used in relation to beer, do not have a sufficiently clear or direct meaning so as to function descriptively and thus deny the Word Mark registrability. 73 We do not accept that submission. It is important to recognise that, on the primary judge's reasoning, these particular sentiments proceeded from the very fact that the segment of the market to which his Honour referred understood that, when applied to beer, the word "urban" had the tangible, descriptive meaning which his Honour found. Thus, these sentiments spoke of an appreciation of beer because the word "urban" functioned descriptively to identify the beer as a craft beer brewed in an inner-city location. Given that these sentiments were invoked because of the descriptive use of the word "urban", the primary judge regarded that use as also laudatory in character. 74 We see no error in his Honour's conclusion in that regard. Marks functioning as laudatory epithets, according to their ordinary signification when applied adjectivally to particular goods or services, have typically been regarded as not inherently adapted to distinguish those goods or services. 75 For example, in In re Joseph Crosfield & Sons, Limited [1910] 1 Ch 130, Cozens-Hardy M.R. observed that there are some words which are incapable of being adapted to distinguish, such as "good", "best" and "superfine". He said (at 142): … an ordinary laudatory epithet ought to be open to all the world and is not, in my opinion, capable of being registered. It may be that within a particular area the applicant might succeed in a passing-off action against a trader who used the epithet without sufficiently distinguishing his goods from the goods of the applicant. But that would not justify the Court in giving the applicant a monopoly throughout the United Kingdom in the use of a laudatory epithet. 76 In that case, it was held that the word "Perfection" could not be registered for "common or household soap" because, in relation to those goods, the word functioned as a laudatory epithet. 77 Another example is provided by Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417, where Gibbs J held that the word "Whopper", when applied to hamburgers, was not inherently adapted to distinguish. His Honour found (at 425) that, in that context, the word described one of the characteristics of a hamburger - its size. His Honour found that the word was also laudatory - a person buying a hamburger might be expected to feel that he or she would get more satisfaction or better value for money from "a large rather than a small one". 78 Once one accepts the primary judge's findings of fact, the basis for his Honour's conclusion that the Word Mark was not to any extent inherently adapted to distinguish the appellant's beer is clear and sustainable. 79 We turn to another argument advanced by the appellant. As we have noted, the primary judge found that the combination "urban ale" did not have significance in terms of the style or flavour of beer beyond what is ordinarily conveyed by the word "ale". The appellant advanced this finding as establishing, contrary to his Honour's finding, that the Word Mark must be inherently adapted to distinguish its beer from the beer of other traders. 80 In advancing this submission, the appellant relied on Note 1 appearing after s 41(4) of the Act, which provides: Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate: (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or (b) the time of production of goods or of the rendering of services. 81 The appellant submitted that the note provides "useful guidance" on whether a trade mark is inherently adapted to distinguish designated goods or services. The appellant then submitted that, having regard to the note, the word "urban" does not describe "any relevant characteristic" attributable to beer. 82 The Reader's Guide in the published version of the Act makes clear that its notes are facilitative rather than interpretative: Notes: Notes are to be found throughout the text. They are designed to help you find your way through the Act. They may tell you that certain words or terms are defined and where to find the definition; they may alert you to other provisions in this Act and in other legislation that are relevant to the text you are reading; or they may draw your attention to information that may help you to understand the contents or legal consequences of certain provisions or how to comply with them. 83 Further, Note 1 itself makes clear that it is not, in any event, an exhaustive statement of the circumstances in which a mark will not be inherently adapted to distinguish. 84 Even so, recourse to the note (as it appeared in previous versions of s 41) has been made in other cases as an aid to the provision's interpretation: see the useful collection of cases identified in [25.575] of Shanahan's Australian Law of Trade Marks and Passing Off (Thomson Reuters, 6th ed, 2016). 85 We are not persuaded that the appellant's recourse to Note 1 advances this ground of appeal. By framing its submission so as to refer to "any relevant characteristic", the appellant seeks to confine attention to only those characteristics of beer that concern its style and flavour. This posits too narrow a focus for the word "characteristic". No doubt the style and flavour of beer are among its "characteristics". However, we are satisfied that a beer's "characteristics" as "goods" can encompass other attributes, including the fact that the beer is a craft beer brewed in an inner-city location. 86 On the primary judge's findings of fact, it can be seen that other beer, as "goods", will share this characteristic and that other traders would seek to use, without improper motive, the word "urban" to describe this characteristic in relation to their own goods (beer) having this characteristic. The combination "urban ale" is simply a more specific exemplification of that use. 87 In a related submission, the appellant submitted that the primary judge did not address in terms the question whether other traders might legitimately wish to use the word "urban" in relation to beer. We think it is tolerably clear from his Honour's summary of the evidence of the use of "urban" in relation to beer, at [78]-[110] of the reasons, that this consideration was within his Honour's contemplation and that, at least implicitly, his Honour was satisfied that such use was not only in prospect but already occurring. 88 For these reasons, Ground 2 of the appeal should be dismissed. 89 This conclusion is enough to dispose of the whole appeal because once invalidity of the Word Mark's registration is established, the appellant's case on infringement cannot be established and the respondent's defences to infringement do not arise for consideration.

Ground 3 90 Ground 3 of the notice of appeal contends that the primary judge erred by finding that the Word Mark was deceptively similar to the Urban Brewing Company Trade Mark within the meaning of s 44(1) of the Act. 91 The notice of appeal provides the following particulars: (a) The primary judge found that the Word Mark and the Urban Brewing Company Trade Mark "are not substantially identical. While there is an obvious relationship between the words "Brewing Company" and "Ale", the words convey different things. The former refers to the maker of beer, while the latter refers to beer. In my view, the words perform a descriptive function within the respective marks, but the description is sufficiently different to negative a finding of substantial identity.": [159] of Judgment 1. (b) Having correctly made the findings referred to in sub-paragraph (a) above, his Honour ought also to have found that the Word Mark is not deceptively similar to the Urban Brewing Company Trade Mark on the basis that the Word Mark refers to beer, being a different idea to the Urban Brewing Company mark which refers to the maker of beer. 92 Section 44 of the Act requires a comparison of marks by reference to the distinct and separate standards of "substantial identity" and "deceptive similarity". The primary judge was satisfied that the Word Mark was deceptively similar to the Urban Brewing Company Trade Mark, but not substantially identical. 93 The appellant does not contend that the primary judge proceeded on an incorrect principle in reaching that decision. Rather, it contends that the primary judge came to the wrong conclusion on the question of deceptive similarity because his Honour erred in his comparison of the two marks as a matter of evaluation. 94 When rejecting the respondent's contention that the Word Mark was substantially identical to the Urban Brewing Company Trade Mark, the primary judge said (at [159]): 159 In my view, the two marks are not substantially identical. While there is an obvious relationship between the words "Brewing Company" and "Ale", the words convey different things. The former refers to the maker of beer, while the latter refers to beer. In my view, the words perform a descriptive function within the respective marks, but the description is sufficiently different to negative a finding of substantial identity. 95 The appellant submitted that, having found that the words "brewing company" (as used in the Urban Brewing Company Trade Mark) and the word "ale" (as used in the Word Mark) "convey different things", the primary judge should also have found that the two marks were not deceptively similar. 96 We do not accept that this conclusion follows, for the following reasons. 97 When making the observation he did, the primary judge was undertaking the side-by-side comparison of marks mandated as the test for determining substantial identity. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (Shell), Windeyer J (at 414) explained this test: 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. 98 A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical. The primary judge's observation must be understood as having been made in that light. 99 The test of deceptive similarity is fundamentally different. It is not a studied comparison. Rather, it is a comparison between one mark and the impression of another mark carried away and hypothetically recalled, paying due regard to the fact that recollection is not always perfect. 100 The test is also directed to a different end. The inquiry is whether one mark (here, the Word Mark) so nearly resembles another mark (here, the Urban Brewing Company Trade Mark) that it is likely to deceive or cause confusion: see the definition of "deceptively similar" in s 10 of the Act. Likelihood, in this context, does not require a finding of likelihood on the balance of probabilities. Likelihood is to be understood in the sense of a "real tangible danger" of something occurring: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594 - 595. Put another way, the likelihood of deception or confusion must be finite and non-trivial: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 at [43] (French J) and [104] (Tamberlin J agreeing). 101 Windeyer J explained the test of deceptive similarity in Shell (at 415): 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 impugned mark]. 102 Earlier, in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, Dixon and McTiernan JJ (at 658) said with respect to the notion of deceptive similarity: 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 may 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. 103 Once the differences between the separate tests for determining substantial identity and deceptive similarity are recognised, it can be seen that, even though the words "brewing company" and "ale" might convey different things when the Urban Brewing Company Trade Mark and the Word Mark are compared side-by-side to determine whether they are substantially identical, that conclusion loses much of its significance when the comparison is not a studied comparison but one based on recollection alone - and imperfect recollection at that - to determine deceptive similarity (i.e., deceptive resemblance). 104 Critical to the primary judge's conclusion on deceptive similarity was that, even though the words "brewing company" and "ale" convey different things when seen side-by-side, there is, nevertheless, a close association in meaning between the two. Further, the Word Mark and the Urban Brewing Company Trade Mark each share as their first element the word "urban". 105 In this appeal, the appellant submitted that substantial weight must be given to all the words in each mark (two words in the Word Mark; three words in the Urban Brewing Company Trade Mark). The appellant emphasised that only the word "urban" is common to each mark. These considerations might be relevant, but they are hardly determinative of the question of deceptive similarity. 106 The appellant also submitted that there is "no relevant trade mark resemblance" between the words "ale" and "brewing company". This submission requires careful consideration. As the appellant's submission recorded immediately above recognises, each compared mark must be considered as a whole. It is impermissible to dissect each mark to emphasise its disparate elements and then compare the disparate elements of each in order to reach a conclusion on deceptive resemblance. To start with, this would leave out entirely the impact of the common element "urban". It would also ignore the synergy between the word "urban" and the other word(s) in each mark. This synergy contributes to the impression gained of each mark, which is carried forward into the relevant comparison between the two. This last-mentioned consideration brings into play the primary judge's finding that there was a clear association in meaning between "brewing company" and "ale". Given that clear association, coupled with use of the common element "urban", it is understandable that the primary judge reached the conclusion he did on the question of deceptive similarity. 107 In the end, we are not persuaded that the primary judge erred in his evaluation of the two marks or in reaching the conclusion that the Word Mark is deceptively similar to the Urban Brewing Company Trade Mark. 108 For these reasons, Ground 3 of the appeal should be dismissed. 109 This conclusion stands as a separate basis on which to dispose of the whole appeal. In light of this conclusion, once again the appellant's case on infringement cannot be established and the respondent's defences to infringement do not arise for consideration. It also means that, taken with our conclusion on Ground 2, Ground 1 of the appeal is not established and should be dismissed.

Ground 5 110 Ground 5 of the notice of appeal contends that the primary judge erred by finding that the respondent's use of "Urban Pale" was not used as a trade mark and, for that reason, did not infringe the Word Mark. 111 The notice of appeal provides the following particulars: (a) The primary judge found that: (i) "the labelling of the La Sirène Urban Pale product features the words "Urban Pale" in large lettering and an emboldened font. It is the most prominent name on the labelling.": [205] of Judgment 1; (ii) "the words "by La Sirene"... are somewhat less prominent than the words "Urban Pale": [206] of Judgment 1; and (iii) as agreed between the parties, "… the combination of words "urban ale" does not convey any significance in terms of style or flavour characteristics of beer.": [135] of Judgment 1 (and restated at [140] of Judgment 1). (b) Having correctly made the findings in sub-paragraph (a) above, the primary judge erred by finding that: (i) "…La Sirène has used the name [Urban Pale] as a product name that is descriptive of the nature and style of the beer product.": [204] of Judgment 1; (ii) "… the words "by La Sirène" are sufficiently prominent on the label to convey to a consumer that La Sirène is the source of origin of the product": [206] of Judgment 1; (iii) "… the words "urban" and "pale", when used in connection with beer, would be understood by consumers as describing the nature and style of the beer: the word "urban" signifies that the product is presenting itself as a craft beer and the word "pale" indicates a common style of beer (pale ale).": [207] of Judgment 1, notwithstanding that the word "urban" does not describe "craft beer"; (iv) "… In the present case, I consider that the name "Urban Pale" is overwhelmingly descriptive, such that consumers would understand the name to be a description of the product's nature and style and would not consider that the name is used to distinguish the goods from the goods of others.": [207] of Judgment 1; and (v) "… no weight [should be put] on the fact that La Sirène filed a trade mark application for the words "Urban Pale.": [209] of Judgement 1. (c) Having correctly made the findings referred to in sub-paragraph (a) above, the primary judge ought also to have found that the Respondent's use of "Urban Pale" was use as a trade mark and that this was an infringement of the Word Mark. 112 Our conclusions on Grounds 1, 2 and 3 of the appeal mean that the appellant's case on infringement cannot succeed. The infringement case would only fall for consideration if the primary judge's findings in relation to the Word Mark's lack of inherent adaptation to distinguish (for the purposes of s 41(1)) and its deceptive resemblance to the Urban Brewing Company Trade Mark (for the purposes of s 44(1)) were to be set aside. For this reason alone, Ground 5 should be dismissed. 113 In any event, Ground 5 now poses an abstract question whose determination would achieve no practical outcome. The issue it raises is entirely academic. It would require us to proceed as if the Word Mark were inherently adapted to distinguish the appellant's beer - in particular on the basis that the word "urban" does have the capacity to distinguish the appellant's beer and does not function purely descriptively in the combination "urban ale". This would be inconsistent with the primary judge's findings and our rejection of Ground 2 of the appeal. 114 In this connection, one of the cardinal considerations that informed his Honour's finding that the name "Urban Pale" was not used by the respondent as a trade mark on the label depicted at [2] above, is the fact that, in his Honour's view, "Urban Pale" as a product name is overwhelmingly descriptive. Consumers would understand the name to be no more than a description of the product's nature ("urban" - a craft beer) and style ("pale" - a pale ale). They would not consider the name to be used to distinguish the respondent's beer from the goods of others: see at [207]. This finding was undoubtedly informed by his Honour's earlier conclusion in respect of the application of s 41(3) that the word "urban", when used in relation to beer, signifies that the beer is a craft beer brewed in an inner-city location. 115 The appellant argued that the primary judge's finding that the name "Urban Pale" was overwhelming descriptive is inconsistent with his Honour's earlier acceptance that the combination "urban ale" did not convey any significance in terms of style or flavour characteristics of beer. We do not think that there is any inconsistency. It is certainly true that, when dealing with the question of inherent adaptation to distinguish, the primary judge noted at [135] the parties' agreement that the combination "urban ale" did not convey any significance in terms of the style or flavour characteristics of beer. However, at [140], when returning to the parties' agreement in relation to the combination "urban ale", his Honour said: 140 As already noted, both parties agree that the words "urban ale" do not have significance in terms of the style or flavour of the beer beyond what is ordinarily conveyed by the word "ale"… (Emphasis added.) 116 This finding is consistent with the primary judge's acceptance at [139] of Mr Kirkegaard's opinion that the word "urban" (not the combination "urban ale") did not have any particular significance in terms of beer style or flavour characteristics. Thus, despite the terms in which the primary judge recorded the parties' agreement at [135] of the reasons, he recognised that the word "ale" did convey something about the style or flavour of beer. 117 Whatever infelicity of language might be involved in his Honour's recording of the parties' agreement at [135], it is tolerably clear that his Honour found that: (a) the word "urban" did not convey any significance in terms of the style or flavour characteristics of beer, but did signify that the beer was a craft beer brewed in an inner-city location; (b) the word "ale" did convey a type of beer (see his Honour's explanation at [110]); and (c) the combination "urban ale" did not convey any significance in terms of the style or flavour characteristics of beer in addition to what the word "ale", as an ordinary English word, already signified in that regard. 118 The significance to the question of trade mark use of the primary judge's conclusion that the name "Urban Pale" was overwhelming descriptive is revealed by the opening paragraph of his Honour's reasons dealing with this question: 204 On the question of trade mark use, there are factors pointing in different directions. On balance, Urban Alley has not satisfied me that La Sirène has used the name "Urban Pale" as a trade mark. Rather, the evidence leads me to conclude that La Sirène has used the name as a product name that is descriptive of the nature and style of the beer product. 119 Thus, it is entirely possible - indeed likely - that, absent the finding of the Word Mark's lack of inherent adaptation to distinguish because of the ordinary signification of the word "urban", the primary judge would have come to a different conclusion on trade mark use in relation to the respondent's use of the name "Urban Pale" on the depicted label. This is particularly so when regard is had to the prominence and location of the name "Urban Pale". Such use would normally be regarded as persuasively suggesting trade mark use, a consideration which his Honour seems to have recognised in the next paragraph of his reasons, where he said: 205 It is apparent that the labelling of the La Sirène Urban Pale product features the words "Urban Pale" in large lettering and an emboldened font. It is the most prominent name on the labelling. However … I do not consider that that prominence converts the essentially descriptive name into a trade mark indicating the source of origin of the product. 120 Be that as it may be, our resolution of Grounds 1, 2 and 3 of the appeal adversely to the appellant necessarily means that Ground 5 of the appeal should be dismissed, as we have said.

Ground 6 121 Ground 6 of the notice of appeal contends that the primary judge erred by finding that the respondent was able to rely on the defence in s 122(1)(b)(i) of the Act. 122 The notice of appeal provides the following particulars: (a) The primary judge found, as agreed between the parties, that "… the combination of words "urban ale" does not convey any significance in terms of style or flavour characteristics of beer.": [135] of Judgment 1 (and restated at [140] of Judgment 1). (b) Having correctly made the finding referred to in sub-paragraph (a) above, his Honour erred by finding that: (i) "the word "urban" has a tangible meaning when used in relation to beer products": [222] of Judgment 1; (ii) "… the word "urban", when used in connection with beer, indicates the kind, quality or other characteristic of the product.": [222] of Judgment 1; and (iii) " … It describes the beer has having been produced in a city location and, at another level, It connotes that the beer has been produced in an inner- city brewery. The use of the word is descriptive and laudatory, conveying that the product is cool or trendy and suited to inner-city beer drinkers.": [222] of Judgment 1. (c) Having correctly made the finding referred to in sub-paragraph (a) above, the primary judge ought also to have found that the Respondent was not entitled to rely on the defence in s 122(1)(b)(i) of the Act. 123 Given our conclusions on Grounds 1, 2 and 3 of the appeal, the determination of the grounds of appeal challenging the primary judge's findings in respect of the defences raised by the respondent are even more removed than the determination of Ground 5 concerning trade mark use. 124 The issues raised by Ground 6 are essentially the same issues raised by Ground 2, specifically whether the words "urban ale" when used in relation to beer function descriptively or have the inherent capacity to distinguish the appellant's beer. Given our conclusion in relation to Ground 2, Ground 6 now poses an abstract question whose determination would achieve no practical outcome. As with Ground 5, if we were to determine Ground 6 now, it would require us to proceed as if the Word Mark were inherently adapted to distinguish the appellant's beer on the basis that the word "urban" does have the capacity to distinguish and does not function purely descriptively. As we have said, this would be inconsistent with the primary judge's findings and our rejection of Ground 2 of the appeal. It would also require us to determine Ground 5 in the appellant's favour. 125 For these reasons, Ground 6 of the appeal should be dismissed.

Grounds 7, 8 and 9 126 Grounds 7, 8 and 9 of the notice of appeal can be dealt with together. 127 Ground 7 contends that the primary judge erred in finding that the respondent had a defence to its trade mark infringement claim in reliance on s 122(1)(e) of the Act from the date of registration of the La Sirène Label Mark. 128 Ground 8 contends that the primary judge ought to have found that the respondent did not have a defence to its trade mark infringement claim in reliance on s 122(1)(e) of the Act based on the registration of the La Sirène Word Mark. 129 Ground 9 contends that the primary judge erred by finding that the La Sirène Label Mark is not substantially identical with and/or deceptively similar to the Word Mark and should not be cancelled under s 88(1)(a) of the Act. 130 We have already remarked that the determination of the grounds of appeal challenging the primary judge's findings in respect of the defences raised by the respondent are even more removed than the determination of Ground 5 concerning trade mark use. 131 In any event, Ground 9 of the appeal cannot succeed. It is predicated on the registrability of the Word Mark so as to enable it to function as a blocking registration in respect of the La Sirène Label Mark. Our rejection of Grounds 1, 2 and 3 means that the Word Mark is not registrable. It cannot, therefore, function as a blocking registration. If Ground 9 cannot succeed, Ground 7 cannot succeed, as the pleading of Ground 7 in the notice of appeal recognises. Therefore, Grounds 7 and 9 should be dismissed. 132 Ground 8 raises a question which the primary judge did not need to determine given his Honour's other findings and conclusions that were adverse to the appellant. In light of our rejection of all the other grounds of appeal, the same situation obtains. It is not necessary for us to determine Ground 8 and we decline to do so.

Conclusion and disposition 133 The appeal should be dismissed with costs. 134 The appeal was argued on the basis of the appellant's amended notice of appeal. Apart from dealing with some minor typographical and formatting matters, the amendments abandon one ground of appeal (Ground 4) and add another (Ground 8). Although prior to the hearing of the appeal the respondent opposed leave being granted to enable the appellant to rely on the amendments it sought, the efficient course was to reserve the question of leave and allow the appellant to develop the submissions it wished to make and hear the respondent in response. 135 The substantive basis of the respondent's opposition to the amendments was that they are without merit (by which we take the respondent to mean that Ground 8 is without merit). It has not been necessary for us to determine Ground 8. In the circumstances, we think the practical and appropriate course is to grant leave to the appellant to file and rely on the amended notice of appeal. I certify that the preceding one hundred and thirty-five (135) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justices Middleton, Yates and Lee.