The decision of Bacardi & Company Limited v Dickinson Distribution Group Pty Ltd [2020] ATMO 117 (1 July 2020) confirms the acceptance of the similarity between goods in classes 32 and 33, and in particular accepts that gin is similar to beer. Hence, it is vitally important for owners of marks registered in classes 32 and 33 to monitor for any potentially infringing marks in the wider beverage market.

Further, if relying on your reputation in opposition proceedings, this decision demonstrates the significance of providing sufficient corroborating evidence of such reputation in the relevant market, including comprehensive data concerning the sale and marketing of the goods and if appropriate, the establishment of a family of marks in relation to the goods.

Facts

On 11 August 2017, Dickinson Distribution Group Pty Ltd (the Applicant) filed an application for registration of its trade mark ‘Royal Bombay Premium Lager’ in class 32 with the following specification: ‘Alcoholic beers; Non-alcoholic beers; Non-alcoholic beverages (except non-alcoholic beer); Beer; Bitter beer; Black beer; Dark Beer; Low alcohol beer; Lager; Alcohol-free beer; De-alcoholised beer; Home brew kit concentrate of hopped wort for making beer.’ Bacardi & Company Limited (the Opponent) opposed the application on the basis of three grounds. Each is discussed below. All grounds failed and the Applicant’s mark was registered.

Section 44 Ground

The Opponent claimed that the Applicant’s mark was substantially identical with, or deceptively similar to, five of its prior registered trade marks.

The goods in relation to which the Opponent’s marks were registered were found to be the same as or similar to those in respect of which the Applicant’s mark was registered. Importantly, the Opponent’s claim to ‘alcoholic beverages’ in three of its marks was found to encompass the Applicant’s claim to ‘alcohol-containing beer,’ and ‘gin’ was found to be a good of the same description as the Applicant’s ‘beers’.

However, the Hearing Officer found that the Applicant’s mark was not substantially identical or deceptively similar to any of the Opponent’s marks, but that it was distinct aurally and visually. The Hearing Officer found that there was only one common element between the marks (the word ‘BOMBAY’) and many additional distinguishing elements in the Opponent’s marks, including the words ‘SAPPHIRE,’ ‘The Original Bombay Dry Gin’ and an ornate portrait of Queen Victoria.

The Hearing Officer also looked at the state of the Register and found that the Opponent’s family of marks at its highest consisted of three members, which was not enough to build an expectation in the minds of consumers that the Opponent is the source of all marks containing ‘BOMBAY’ for goods in classes 32 and 33.

Section 60 and 42(b)

The Opponent failed to provide sufficient evidence and data in relation to the sales and marketing of relevant goods and thereby failed to demonstrate the requisite level of reputation for its marks. Whilst the Opponent’s ‘BOMBAY SAPPHIRE’ mark was found to enjoy a strong reputation in relation to gin, the Hearing Officer did not believe that there would be any tangible likelihood of confusion.