An alcohol-fuelled trade mark battle came before the Australian Trade Marks Office last month. E&J Gallo winery opposed gin distiller Kristy Booth’s application for APOTHECARY GIN covering spirits in class 33.
The large winery cited many reasons for its opposition, the primary reason being that Ms Booth’s mark was confusingly similar to its own wine brand, APOTHIC. The winery relied upon its prior trade mark registrations for APOTHIC in class 33 and the use of that brand in Australia since 2015 (in other words, its reputation), some years prior to Ms Booth.
So, was Ms Booth’s gin brand deceptively similar to the winery’s APOTHIC brand? In the end, the hearing officer decided they were indeed different because:
- “Apothic” and “apothecary” had different derivations and therefore different meanings and connotations. One referred to a mysterious place in 13th century Europe that was associated with wine, and the other is an old term for a pharmacist.
- The term “Apothic” and the stem “Apothec” do not function as prefixes and therefore cannot be compared in this limited, artificial way. “Apothic” is distinctive in its own right. On the other hand, the letters “Apothec” in “Apothecary” are not discernible as a discrete entity.
This line from the hearing officer sums it up nicely: “the ordinary person might notice a similarity stemming from the commonality of the “apoth” portions of the parties’ trade marks but would not be confused or deceived because of that. Neither is it likely, in my estimation, that the Apothic Trade Mark would be misremembered or imperfectly recalled as [Ms Booth’s] Trade Mark or vice versa.”
“Imperfect recollection” is the touchstone of similarity in Australian trade mark law.
The winery also tried to argue, putting its trade mark registrations to one side, that consumers would be deceived and confused by Ms Booth’s brand due to the nature and extent of the winery’s pre-existing reputation in its APOTHIC brand.
On the evidence, the hearing officer found for Ms Booth noting that deception and confusion were unlikely given the difference in price-points (budget wine vs pricier spirits), the distinct areas within retailers in which the parties’ goods are sold, the winery’s short period of use of its brand and the differences in the parties marks.
A good reminder of how trade mark issues are multi-faceted and the circumstances must always be looked at as a whole.
For the full decision, click here.