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Trade mark decision

BL Number
O/148/04
Decision date
26 May 2004
Hearing officer
Mr G Attfield
Mark
WOODBURY ESTATES
Classes
33
Registered Proprietor
Bulk Brokers International
Applicant for Invalidity
Wine World Exports Pty Limited
Invalidity
Sections 47(1) & 2(b) based on Sections 3(6) & 5(4)(a)

Result

Section 47(1) based on Section 3(6) - Invalidity section successful Section 47(2)(b) based on Section 5(4)(a) - Invalidity action failed

Section 47(2)(b) based on Section 5(4)(a) - Invalidity action failed

Points Of Interest

  • None

Summary

The applicant for invalidation claimed that the mark in suit incorporated its mark WOODBURY and that the addition of the non-distinctive word ESTATES did not affect the likelihood of confusion in the marketplace, based on its earlier use of the mark WOODBURY. The applicant also claimed that it had had a commercial relationship involving the marketing of wines with an associated company of the registered proprietor. Thus the registered proprietor must have been aware of the applicant’s mark when the mark in suit was applied for. This being the case the application was made in bad faith.

The Registrar sent a copy of the application for invalidity to the registered proprietor but there was no response and the registered proprietor did not defend its registration.

The applicant filed evidence to show that it had marketed wine through a firm called California Direct Ltd (CDL) prior to the application for the mark in suit on 17 October 2002 by Bulk Brokers International (BBI). Sales were not extensive and the Hearing Officer was unable to conclude that the applicant had acquired a reputation and goodwill in the mark WOODBURY in relation to wine at the relevant date. The applicant also showed that a Mr Jason Korman was a director of both CDL and BBI during the applicant’s trading relationship with CDL.

Under Section 5(4)(a) the Hearing Officer decided that the applicant must fail on this ground because of a lack of reputation. However, he decided that the applicant was successful under Section 3(6) because it had established a prima facie case of bad faith and there was no defence by the registered proprietor.

Full decision O/148/04 PDF document30Kb