Perhaps to the dismay of Italian wine enthusiasts, a Chianti Classico producer has lost its battle to prevent a rival French winemaker from registering a trade mark incorporating the image of a rooster. The Court found that, because consumers order wine at bars and restaurants by their brand name, they are more likely to identify trade marks by their word elements rather than their images. In the Court’s view, the same is true for all alcoholic beverages. Vintners and brewers, take note!
The Italian producer, Consorzio vino Chianti Classico (“Consorzio”), owned a number of registered European Community trade marks incorporating the image of a rooster, and was seeking to prevent the registration of a trade mark incorporating a similar image of a rooster by the French winemaker, Federation Francaise de Rugby (“FFR”), on the basis that the marks were deceptively similar. Both trade marks included images (which were similar) and words (which were different).
In determining the likelihood of confusion between the two marks, the Court considered their visual, phonetic and conceptual similarity, bearing in mind their “distinctive or dominant components”.
What did the Court find?
From a visual perspective, the Court found that both marks contained images of roosters in their centre, facing left, both with a prominent crest and a very broad tail. Whilst there were some visual differences between the marks (for example, the French mark was in the shape of a shield, whilst the Italian mark was circular), those differences were not enough to “eclipse the visual similarity resulting from the fact that both marks contain roosters”. This was particularly the case when one considered the imperfect recollection of consumers (especially after a bottle of wine!).
However, the Court found that when referring to the trade marks, the public would most likely cite the word element – not the logo. For example, when one orders a bottle of wine at a bar or restaurant, one would not ask for a bottle of “rooster”, but rather for a bottle of “Consorzio Chianti Classico” or “FFR”. The Court contrasted this with the packaging of cleaning products, where the visual appearance of the packaging arguably takes on greater importance (because it is picked up off a shelf). Finally, in the Court’s view, the “idea” of the marks were different, as the French mark resembled an “armorial emblem”, whereas the Italian mark resembled a seal. The visual similarity of the two roosters was therefore weakened by the phonetic and conceptual differences, and so the marks were not considered to be deceptively similar.
What about in Australia?
When assessing deceptive similarity in Australia, the Trade Marks Office and Courts consider (amongst other things) the oral and aural effect of the words contained in a composite trade mark. The Court also considers whether the registered trade mark includes words which can be regarded as an “essential” or “dominant” feature of the mark, and whether the incorporation of those words in another trade mark may cause consumer confusion. However, the application of these principles often arrives at inconsistent results.
Kingsgate Hotel and Tivo Vivo
The recent Kingsgate Hotel case helps illustrate the difficulty in applying these principles. In that case, the owner of a registered “fancy mark” consisting simply of the words “Kingsgate Hotel” opposed the registration of a composite mark containing the word “Kingsgate” underneath an image made up of five vertical bars in the shape of “M”. Both trade marks relate to hotel services.
v 
In that case, the owner of the registered trade mark argued that:
- The dominant and most memorable element of both marks is the word “Kingsgate” (the word hotel is entirely descriptive and can be discounted);
- Consumers ordinarily book a hotel over the phone or after having conducted a search using an internet search engine, and they do not use the logo element of the trade mark when making that booking or undertaking that search; and
- Therefore, the aural and oral similarities of the trade marks are likely to cause confusion.
Justice Jacobson disagreed. In his Honour’s view, in most instances, the preliminary steps to making a hotel booking will include a search for a telephone number or the website, in which case the person making the search is “likely to see the mark displayed”, including any logos. Whilst his Honour accepted that the trade marks will be referred to by their word elements, Justice Jacobson thought that the presence of the five bar “M” logo was sufficient to distinguish the two trade marks.
By contrast, in another recent case, the Full Federal Court found that the composite Vivo trade mark was deceptively similar to the registered TiVo word mark, principally because of the phonetic and aural similarities of the marks when spoken (see our previous post here).
TIVO v 
The take out: if you want to protect a word or a visual element in its own right, the surest way is to seek to register that element on its own (another challenge, to be sure!). Now, where’s that Chianti?
