TM/00/037 Regulation 5.15 IPAustralia Trade Marks Act … · applicant has collected materials to be included in evidencein support ofthis application and a Declaration ... satisfactorily

TM/00/037Regulation 5.15

IPAustralia Trade Marks Act 1995PATENTS - TRADE MARKS - DESIGNS

Application for an Extension of Time under Section 224for Acceptance

Trade Mark No.(s) Our Ref. Fee

1574654 35208389/FMS/AFS $100

in the name of Bacardi & Company Limited

Address Aeulestrasse 5FL-9490 VaduzLiechtenstein

Address for Service Davies Collison CavePatent & Trade Mark Attorneys1 Nicholson StreetMelbourne VIC 3000

Telephone: (03) 9254 2777Facsimile: (03) 9254 2770

Application is made by the above applicant for an extension of time of one (1) month toextend the due date for acceptance from 3 June 2015 to 3 July 2015.

The grounds upon which this application is made are as follows:

special circumstances

The facts which the above grounds are based are set out in the accompanying Declaration.

The proceeding for which an extension of time is required is acceptance of an application.

Davies Collison CavePatent & Trade Mark Attorneys 3 June, 2015

C O M M O N W E A L T H O F A U S T R A L I A

Trade Marks Act 1995

IN THE MATTER of Application No.1574654 in the name of Bacardi &Company Limited

DECLARATION

I, FIONA SYMONS, of 1 Nicholson Street, Melbourne, Victoria 3000, Australia make the

following declaration:

1. I am a current practitioner of the Supreme Court of Victoria in the employ of Davies

Collison Cave, Patent and Trade Mark Attorneys of 1 Nicholson Street, Melbourne,

Victoria, 3000, Australia (hereinafter referred to as "my firm").

2. Under the supervision of the partners of my firm, I am responsible, inter alia, for the

prosecution of trade mark applications through the Australian Trade Marks Office. In

particular, I am responsible for the prosecution of Trade Mark Application No. 1574654

("the application") in the name of Bacardi & Company Limited ("the applicant").

3. The deadline for placing the application in order for acceptance expires on 3 June

2015. On instruction from the applicant, I have prepared and lodged an application for

extension of time of two (2) months under s.224 of the Trade Marks Act 1995 in which

to place the application in order for acceptance.

4. The application has been objected to under the provisions of Section 41 of the Act. The

applicant has collected materials to be included in evidence in support of this application

and a Declaration is being drafted. Further time is required for the finalisation and

lodgement of the evidence in support of the application together with submissions,

consideration by the Trade Marks Office and for any further action required to place the

application in order to be taken. This extension is requested for that purpose.

I make this Declaration conscientiously believing the statements contained in this

Declaration to be true and correct.

DECLARED at Melbourne this 3rd day of June, 2015

Signed: __________________________________

TM/00/037Regulation 5.15

IPAustralia Trade Marks Act 1995PATENTS - TRADE MARKS - DESIGNS

Application for an Extension of Time under Section 224for Acceptance

Trade Mark No.(s) Our Ref. Fee

1574654 35208389/FMS/AFS $100

in the name of Bacardi & Company Limited

Address Aeulestrasse 5FL-9490 VaduzLiechtenstein

Address for Service Davies Collison CavePatent & Trade Mark Attorneys1 Nicholson StreetMelbourne VIC 3000

Telephone: (03) 9254 2777Facsimile: (03) 9254 2770

Application is made by the above applicant for an extension of time of one (1) month toextend the due date for acceptance from 3 July 2015 to 3 August 2015.

The grounds upon which this application is made are as follows:

special circumstances

The facts which the above grounds are based are set out in the accompanying Declaration.

The proceeding for which an extension of time is required is acceptance of an application.

Davies Collison CavePatent & Trade Mark Attorneys 3 July, 2015


Trade Marks Act 1995


DECLARATION

I, FIONA SYMONS, of 1 Nicholson Street, Melbourne, Victoria 3000, Australia make the









3. The deadline for placing the application in order for acceptance expires on 3 July 2015.

On instruction from the applicant, I have prepared and lodged an application for

extension of time of one (1) month under s.224 of the Trade Marks Act 1995 in which to

place the application in order for acceptance.

4. The application has been objected to under the provisions of Section 41 of the Act.

Evidence of use of the mark has recently been lodged with the Trade Marks Office

together with submissions. Further time is required for consideration of the evidence

and submissions by the Trade Marks Office and for any further action required to place

the application in order to be taken. This extension is requested for that purpose.



DECLARED at Melbourne this 3rd day of July, 2015

Signed: __________________________________

Customer Supplied Documents

Document

Sequence

Document Type Document File Name Physical

Media

1 Other TRUE SCOTCH 1574654 - Response

to Report No 2.PDF

No

2 Other Declaration of Isabelle Taymans and

Annexures A to F.PDF

No

3 Other Declaration of Fiona Symons and

Exhibit FMS-1.PDF

No

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26 June, 2015

The Registrar of Trade MarksWODEN ACT 2606

Examination - Respond to an Examiner's Report

Application: 1574654Trade Mark: TRUE SCOTCHApplicant: Bacardi & Company LimitedExaminer: Spencer HooleyResponse to: Report No. 2DCC Ref: 35208389/FMS/as

WRITTEN SUBMISSIONS

Dear Mr Hooley

We are writing in response to the Second Official Examination Report inrelation to the above application.

The Examiner has maintained the grounds for objection under Section 41(4)of the Trade Marks Act advising that while the trade mark TRUE SCOTCH isnot totally devoid of inherent adaption to distinguish, the holder has notsatisfactorily demonstrated acquired distinctiveness through either the use,and/or intended use of TRUE SCOTCH as a trade mark in the Australianmarket place. The Examiner advises that no other circumstances have beendemonstrated which allow for withdrawal of the refusal. The Examiner hasadvised that he will be able to reconsider the refusal if the holder is able toprovide sufficient evidence demonstrating that TRUE SCOTCH is capable ofdistinguishing the specified goods in the Australian market place, as a resultof the use and/or intended use of this phrase as a trade mark.

It is submitted that taking into account the applicant's use of the TRUESCOTCH trade mark, that the mark is clearly capable of distinguishing thespecified goods in the Australian market place.

*Enclosed in support of the application is the Declaration of IsabelleTaymans. Ms Taymans has held the position of Senior IP Counsel of theapplicant for a period of seven years and has full access to the relevantrecords of the applicant. Ms Taymans attests to the use of the TRUESCOTCH trade mark by the applicant and the substantial sales that havebeen achieved in Australia. We refer the Examiner particularly to thefollowing:

The TRUE SCOTCH trade mark was first used by the applicant in Australiain August 2014 (paragraph 4).

Patent and Trade Mark AttorneysAustralia and New Zealand

1 Nicholson StreetMelbourne Victoria 3000Australia

GPO Box 4387Melbourne Victoria 3001Australia

T +61 3 9254 2777F +61 3 9254 2770E [email protected] www.davies.com.auABN 22 077 969 519

In association withDavies Collison Cave Law

AUSTRALIANEW ZEALANDASIA PACIFIC

- 2 - 26 June, 2015

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The TRUE SCOTCH trade mark is applied to a range of the applicant's whisky products(paragraph 5).

Images of the labels showing use of the TRUE SCOTCH trade mark are included atAnnexure A.

The applicant's whisky product is offered for sale under the TRUE SCOTCH trade markthrough a very wide range of retail outlets including major national retailers including

and as well as many smaller retailers. A list of retailers isincluded in Annexure B (paragraph 7).

During the period August 2014 to January 2015 approximately ofwhisky were sold in Australia under the TRUE SCOTCH trade mark, representing sales ofapproximately (paragraph 8).

The sales achieved represent retail sales of approximately (paragraph 9).This represents sales of approximately extrapolated over a 12 monthperiod.

The applicant has promoted its goods under the TRUE SCOTCH trade markinternationally and in Australia and examples of promotional use are included inAnnexures C and D (paragraph 10).

TRUE SCOTCH is an international trade mark and registration has been granted in boththe US and the Ukraine (Annexure E and Annexure F).

It is submitted that the evidence of the applicant's extensive use of the TRUE SCOTCH trademark since August 2014 demonstrates the capacity of the mark to distinguish theapplicant's goods from those of other traders. The goods have been offered for sale througha very wide range of retail outlets allowing for broad exposure of the mark to consumers.Very strong sales were achieved during the first five months of use of the mark in Australiaand it is submitted that strong sales can be expected to continue.

We refer the Examiner to Annexure E which includes materials relating to the registration ofTRUE SCOTCH in the US, including a copy of the Provisional Refusal issued by the US TradeMark Office. The US Trade Mark Office took the view that the word SCOTCH is descriptiveand required the entry of a disclaimer of exclusive rights to use "SCOTCH", but found themark as applied for, TRUE SCOTCH, to be distinctive and registrable. It is submitted that inview of the close parallels between the Australian and US markets the registration of TRUESCOTCH in the US is significant and together with the evidence of use of the TRUE SCOTCHtrade mark in Australia supports the conclusion that TRUE SCOTCH has the capacity todistinguish the applicant's goods in Australia and that acceptance for possible registrationunder the provisions of s.41(4) is in order.

It is further submitted that there is no ordinary requirement for other traders to use thewords "TRUE SCOTCH" in relation to their similar product.

Exhibit E to Ms Taymans' declaration includes Wikipedia extracts considered by the US TradeMark Office in accepting the TRUE SCOTCH application for registration in the US. We referthe Examiner to these extracts which explain:

Scotch whisky is often simply called "Scotch" and is a malt whisky or grain whisky madein Scotland.

Scotch whisky must be made in a manner specified by law, and the manufacture andlabelling is highly regulated in many jurisdictions.

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Scotch whisky is divided into five distinct categories: single malt Scotch whisky, singlegrain Scotch whisky, blended malt Scottish whisky, blended grain Scotch whisky andblended Scotch white whisky.

A Scotch whisky label comprises several elements including:

o age;

o bottling;

o ownership.

The label always features a declaration of the malt or grain whiskies used, with specificterms being permitted eg. single malt; blended malt; blended Scotch whisky. Use ofothers terms such as "pure malt" have been prohibited.

It is submitted that producers of similar product will ordinarily require to use the widelyaccepted and regulated terms that allow consumers to reliably understand the nature of theproduct and will not require use of the term TRUE SCOTCH.

Also *enclosed in support of the application is the Declaration of Fiona Symons. On 24 May2015 Ms Symons attended the First Choice liquor store at Tooronga Village Shopping Centrein Glen Iris in Victoria. As attested at paragraph 3 of the Declaration, Ms Symons observedthat 19 different Scotch whisky products were being offered for sale. Photographs of thelabels of the 19 different products are included in Exhibit FMS-1. As noted by Ms Symons atparagraph 5 of the Declaration each of the products, including the applicant's product,accord with international standards for labelling of Scotch and in each case the labelidentifies the product clearly as either "blended Scotch whisky" or "single malt Scotchwhisky". With these established terms for describing Scotch whisky it is submitted thatother traders would ordinarily have no reason to use the trade mark TRUE SCOTCH unlessactuated by improper motive.

In all of the circumstances it is submitted that acceptance of the subject application underthe provisions of s.41(4) is in order. It is submitted that taking into account the history ofuse of TRUE SCOTCH in Australia, particularly the substantial sales achieved throughcombination of national retailers and independent stores, it may be concluded that, on thebalance of probabilities the trade mark TRUE SCOTCH is clearly capable of distinguishing theapplicant's products from those of other traders. This conclusion is supported by theregistration of TRUE SCOTCH in the USA and the rules and norms of labelling of Scotchwhisky which mean that other traders have no ordinary requirement to use the term TRUESCOTCH in relation to their similar product.

Favourable reconsideration of the s.41 objection is requested under the provision of s.41(4),noting the operation of the presumption of registrability. Further notification is awaited.

………………………………………..Fiona Symonsa Member of the firm Davies Collison Cavefor and on behalf of Bacardi & Company Limited

Enc: Declaration of Isabelle TaymansDeclaration of Fiona Symons

EXEMPT

Annexure B 7 Pages

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T r a d e M a r k s A c t 1 9 9 5


DECLARATION

I, FIONA SYMONS of 1 Nicholson Street, Melbourne, Victoria, 3000, Australia make the









3. On 24 May 2015 I attended First Choice Liquor, Tooronga Village Shopping Centre,

Corner Toorak Road and Tooronga Road, Glen Iris, Victoria, 3146. I observed that the

following Scotch whisky products were offered for sale:

3.1. Teacher's, Highland Cream Blended Scotch Whisky;

3.2. Bell's, Blended Scotch Whisky;

3.3. Ballantine's, Finest, Blended Scotch Whisky;

3.4. Ballantine's, Blended Scotch Whisky;

3.5. Chivas Regal, Gold Signature, Blended Scotch Whisky;

3.6. John Samson, Blended Scotch Whisky;

3.7. Heather Mist, Blended Scotch Whisky;

3.8. Hankey Bannister, Blended Scotch Whisky;

3.9. Dewar's – TRUE SCOTCH –, White Label, Blended Scotch Whisky;

- 2 -


3.10. Johnny Walker, Black Label, Blended Scotch Whisky;

3.11. Dimple, Blended Scotch Whisky;

3.12. Chivas Regal, Extra, Blended Scotch Whisky;

3.13. Chivas Regal, 12 Years, Blended Scotch Whisky;

3.14. Black Bottle, Blended Scotch Whisky;

3.15. Johnny Walker, Red Label, Blended Scotch Whisky;

3.16. Glen Grant, Single Malt, Scotch Whisky;

3.17. Bowmore, Islay, Single Malt, Scotch Whisky;

3.18. Glenfiddich, Single Malt, Scotch Whisky;

3.19. The Glenlivet, Single Malt, Scotch Whisky.

4. Attached hereto and marked Exhibit "FMS-1" are photographs of the labels of each of

the whisky products referred to in paragraph 3. above.

5. I noted common descriptors used in relation to the different types of Scotch whisky with

each of the products being clearly identified on the label as either "Blended Scotch

Whisky" or "Single Malt Scotch Whisky".



DECLARED at Melbourne this 26th day of June, 2015

Signed: __________________________________



T r a d e M a r k s A c t 1 9 9 5


EXHIBIT "FMS-1"

This is the exhibit marked "FMS-1" to the Declaration of Fiona Symons.

DAVIES COLLISON CAVEPatent & Trade Mark AttorneysOne Nicholson StreetMelbourne, Victoria, Australia 3000Tel: (61 3) 9254 2777

Ref: 35208389/BL/FMS/as