Trying to shout your order to a bartender in a nightclub is, as it turns out, a relevant consideration in deciding whether to allow a trade mark to proceed to registration in Australia.

On 22 February 2011, Blue Sky Brewery Holdings Pty Ltd (Applicant) filed Australian trade mark application 1410317 for the mark (Mark), in class 32 for Alcoholic Beers.

The application passed examination under s31 and was advertised as accepted for possible registration on 10 January 2013. On 9 July 2013, Skyy Spirits, LLC (Opponent) filed a Notice of Intention to Oppose along with a Statement of Grounds and Particulars. The Statement of Grounds and Particulars filed by the Opponent relied on sections 42(b), 44, and 60 of the Trade Marks Act 1995 (TMA) as grounds for opposition.

Hearing Officer Adrian Richards’s decision with respect to the opposition was recently handed down in Skyy Spirits, LLC v Blue Sky Brewery Holdings Pty Ltd [2016] ATMO 21 (31 March 2016).

Section 60 Ground of Opposition

Reputation

The Opponent submitted that it had a strong reputation in its trade mark ‘SKYY’ and associated brands, including ‘SKYY BLUE’ and ‘SKYY Infusions’.

However, the Hearing Officer focused on the ‘SKYY BLUE’ mark in concluding that the sales and advertising figures, together with the evidence of actual advertising and third party commentary, were sufficient to establish a strong reputation in relation to a “brewed, malt based alcoholic beverage amongst a significant section of the Australian public.

Nature of the Goods

The circumstances in which the products were often purchased, being in a loud and dimly lit night club, were significant in the Hearing Officer’s decision that there was a real tangible likelihood of deception or confusion. The other important factors were as follows:

“alcoholic beverages will often be ordered by name from behind a bar, relatively distant from the product itself 1. Normal use of the goods will tend to cause a degree of inebriation”

As the elements for the s 60 opposition were established, the Hearing Officer did not discuss the grounds under sections 42(b) and 44.

Having established a ground of opposition, costs were awarded to the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Conclusion: Circumstances of purchase

Obviously not all alcoholic beverages are bought in crowded and noisy nightclubs. But the decision shows that alcoholic beverages, particularly those bought in nightclubs and designed to cause intoxication in consumers, are more prone to deception or confusion under s 60 of the TMA. Which makes inherent sense to us.