Phillips Ormonde Fitzpatrick joins our client, Peter Philip, to celebrate a win in a trade mark opposition brought by SABMiller India Limited against Mr Philip’s Australian trade mark application for WAYWARD, covering beer in class 32.
Mr Philip is a micro-brewer, who started his business in the inner-west of Sydney in 2012. Mr Philip has built his microbrewery business from the ground up, and now distributes bottled beers and beer on-tap under the trade mark WAYWARD to various liquor stores, pubs and bars in Sydney and Melbourne.
SABMiller India Limited (“SABMiller”) filed a Notice of Opposition to Mr Philip’s WAYWARD application under the pre-Raising the Bar Act provisions of the Trade Marks Regulations, and raised a “shopping list” of grounds of opposition.
In the absence of submissions by SABMiller, the Hearings Officer found that none of the grounds of opposition raised were supported by the Opponent’s evidence, with the possible exception of a ground under Section 60 of the Trade Marks Act 1995. This ground relates to the likelihood of deception or confusion arising due to a similar mark having a prior reputation in Australia.
As noted in the decision, SABMiller’s evidence stated that they use the trade marks HAYWARDS 5000 and HAYWARDS 2000 in relation to beer, and first used those marks in Australia in 2002 although they did not have trade mark applications or registrations for these marks in Australia at the time of the Opposition.
To succeed under the Section 60 ground, SABMiller had to establish first that it had acquired a significant reputation in the HAYWARDS 5000 and HAYWARDS 2000 trade marks in respect of beer, before 17 July 2012 (the filing date of the WAYWARD trade mark); and secondly that, because of that reputation, use of the WAYWARD trade mark for beer by Mr Philip would be likely to deceive or cause confusion in the Australian market.
SABMiller submitted that it had captured 40% of the Indian beer category in Australia with its HAYWARDS 5000 and HAYWARDS 2000 beers. At first blush, this seemed quite a substantial market share. However, this figure was not substantiated, and when SABMiller’s sales figures were further analysed in terms of available market information, it became apparent that in terms of the overall Australian beer market (which is very large!), an “Indian beer category” was, on the whole, effectively unknown to Australian beer drinkers.
SABMiller also filed evidence in relation to its market share in India, and attempted to infer that this resulted in flow-on reputation to Australia. The Hearing Officer accepted our criticisms of this evidence, finding that the evidence failed to clearly establish the level of any reputation in India, and so did not show that there was any siginficant reputation in Australia as a flow-on from whatever Indian reputation may have existed.
The Hearings Officer concluded that the HAYWARDS 5000 and HAYWARDS 2000 beers could not be considered as having a significant reputation in Australia. The Hearings Officer further commented that even if he had been satisfied of a reputation, that he did not believe that the trade mark WAYWARD was so similar to HAYWARDS 5000 and HAYWARDS 2000, such that use of the WAYWARD mark would cause confusion or deception amongst a significant number of the beer drinking public in Australia. This meant that SABMiller also failed to establish the second leg of the Section 60 ground.
As an aside, on procedural matters, the Hearings Officer said it was “difficult to disagree” with our observations that some of the Evidence-in-Reply contained matters within the knowledge of the Opponent and easily discoverable by the Opponent and its Attorney, and should have comprised the Evidence-in-Support. This was particularly in respect of evidence of a “spill-over” reputation of the HAYWARDS 5000 and HAYWARDS 2000 beers in India, to Australia, which was raised for the first time in Evidence in Reply. This meant that the applicant did not have the chance to respond to those allegations with counter-evidence. In any event, the Hearings Officer found the evidence insufficient on this point.
Furthermore the Hearings Officer found it unhelpful that the Opponent provided various figures in foreign units being “lac” and “crore”, without explanation of them.
Take home points
When making assertions in evidence and submissions, make sure they are supported with sound evidence and stand up to analysis.
When providing foreign currencies, foreign units of measurements, or numbering systems, place them in context of comparable units, and / or explain them so that they stand up if analysed.
Make sure matters within your knowledge or easily discoverable information is submitted in evidence at the appropriate point in time.
We raise our (beer!) glasses to Mr Philip on this victory, and understand why he considers this to be a David and Goliath style triumph.
Photographs used with permission of Mr Peter Philip.