[2009] FCA 428

The Federal Court’s decision in Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428 (Bavaria Decision) clarifies the scope of sections 43 and 61 of the Trade Marks Act 1995 (Cth) (TMA). Justice Bennett overruled the Hearing Officer’s original decision and found for the applicant on all grounds.

The facts

The applicant, Bavaria NV, was a Dutch beer manufacturer. It sought to register a composite trade mark covering beer in class 32.

Although the applicant’s BAVARIA beer was not manufactured in Bavaria (Germany), it was processed using a method of fermentation that originated in Bavaria and was subsequently adopted by breweries across Europe.

The respondent was a German industry association whose name translates to ‘Bavarian Brewery Association’. It sought to restrain the applicant’s use of the word ‘Bavaria’ in connection with beer sold in Australia. It opposed the application on the following grounds:

  1. Section 41: trade mark not capable of distinguishing and/or is not inherently adapted to distinguish
  2. Sections 52, 53 and section 42(b) of the Trade Practices Act 1974 (Cth) (TPA): trade mark contravenes sections 52 and 53 TPA and therefore section 42(b) of the TMA
  3. Section 43: given the connotation of the mark, its use would be likely to deceive/confuse, and
  4. Section 61: trade mark contains a false connotation of geographical indication (GI).

The applicant emphasised the centrality of the graphic elements of the mark and contended that insofar as the trade mark was non-graphic, its most important elements were the words BAVARIA HOLLAND BEER. The respondent, on the other hand, considered the most important element of the mark to be the word BAVARIA, arguing that word HOLLAND only served to indicate the category of the product being sold.

The decision

Section 41

The respondent had argued that the trade mark was essentially a geographical name displayed ‘against a backdrop of generic heraldic symbols’1. It relied on the Australian tendency to shorten product names (here to a form such as ‘Bavaria’ or ‘Bavaria Beer’) as providing support for its section 41 claim. It also relied on previous court decisions that had rejected use of geographical names used simpliciter on goods which are produced in a particular area or which could be reasonably expected to be produced there (for example, ‘Oxford’, ‘Michigan’ and ‘Colorado’).

Justice Bennett found that the trade mark was inherently adapted to distinguish the applicant’s goods. The key points that counted towards this finding were:

  • the application was not for BAVARIA simpliciter but for a trade mark containing BAVARIA among other elements for example the crest of the applicant’s founders
  • where a geographic name is ‘so conspicuously displayed on the label that the fact of its use would suggest that the beer comes from Bavaria, the question is whether the remaining elements of the mark dispel that association’2
  • devices such as the family crest, barley sprigs and sunrays, the repeated references to HOLLAND and the prominence of the word HOLLAND beneath the word BAVARIA ‘drew attention to the fact that BAVARIA HOLLAND BEER is a specific product, the source of which is Lieshout, Holland’3. The elements of the mark other than BAVARIA dispelled the assumption otherwise created by the word BAVARIA, and
  • other Bavarian breweries use BAVARIA in their trade marks: this suggests that the word alone is not used to distinguish the beer of any particular brewery. Such breweries rely on other distinguishing features of their marks to distinguish their goods.

Section 43

The respondent claimed that the applicant’s trade mark connoted that the beer sold under it was Bavarian, and that because it was in fact from Holland, this connotation was deceptive/confusing. It drew on evidence of beer-related tourism and travel to Bavaria (for example, for the annual Oktoberfest beer festival).

Justice Bennett found that the reasonable consumer would not fail to notice the three references to ‘HOLLAND’ in the trade mark which ‘at least … neutralise the connotation with the State of Bavaria’)4. Australian consumers regard European beers as being generally from Europe and do not distinguish between the various European countries5. While the average Australian consumer would be aware that Bavaria is a State in Germany6, and while Bavaria may well have a reputation for beer, there was no evidence proving any ‘recognition’ by Australian consumers of such a reputation. Australian consumers would not be ‘led by the trade mark to believe that the beer comes from … Bavaria’7.

Sections 52 and 53 TPA; section 42(b)

Justice Bennett drew on her section 43 finding to deal swiftly with these grounds. She found that the applicant’s trade mark did not represent that the applicant’s beer was brewed in Bavaria or have a quality, reputation or other characteristic attributable to beer brewed in Bavaria. Accordingly the section 42(b) claim failed.

Section 61

Section 61(1) requires that the trade mark contain the exact GI. It did not. Therefore the section 61 claim was also dismissed.

  • BAYERISCHES BIER (which translates to ‘Bavarian Beer’) had received formal recognition in Germany as a GI.
  • The applicant’s trade mark contained BAVARIA and BAVARIA HOLLAND BEER. Neither of these were the GI that had received formal recognition in Germany.
  • ‘The trade mark does not contain “Bavarian”, “Bavarian Beer” or even “Bavaria Beer”. One cannot just ignore the word HOLLAND that appears between BAVARIA and BEER, nor the difference between Bavaria, the name of the State in Germany, and the description of the kind of beer that has the quality that [the respondent] contends is associated with Bavarian beer”8.

Take-home points

Important points to take home from Justice Bennett’s judgment are as follows:

Section 41

Where a trade mark prominently displays a geographical name among contains other graphic and non-graphic elements, the question is whether those other elements neutralise the assumption that the product to which the mark relates is produced in the area referred to by the name.

Section 43

Where the true origin of the product is displayed (numerous times, and prominently) in a trade mark, this is likely to counter any connotation conveyed by the presence of a geographical name. This is particularly where the product’s true origin is inserted directly after the geographic name, as it was here (BAVARIA HOLLAND BEER).

Section 61

Opponents need to be careful to ensure that the opposed trade mark contains the precise GI which has received recognition in the relevant country.