Baron Philippe de Rothschild fails to prevent registration of 'mouton' mark for wine

In Ohsawa Kogyo (NZ) Ltd v Baron Philippe De Rothschild SA ([2012] NZIPOTM 37, November 13 2012), Baron Philippe de Rothschild SA and Groupement Foncier Agricole Des Vignobles De La Baronne Philippe De Rothschild have been unsuccessful in their opposition to Ohasawa Kogyo (NZ) Limited’s applications to register the trademark FLYING MOUTON in respect of wine in Class 33 of the Nice Classification.

Baron Philippe De Rothschild SA is the registered owner in New Zealand of the trademarks CHATEAU MOUTON ROTHSCHILD, MOUTON CADET, CHATEAU MOUTON BARONNE PHILIPPE and LE PETIT MOUTON DE MOUTON ROTHSCHILD, all covering alcoholic beverages in Class 33.

The opponents put forward a number of grounds of opposition, including:

• Use of FLYING MOUTON would be likely to deceive or cause confusion.
• Use of FLYING MOUTON is contrary to New Zealand law, because it would be in breach of the Fair Trading Act and would amount to passing off.
• Use of the opposed mark is contrary to New Zealand law, because it would amount to infringement within the meaning of the act.
• The application to register FLYING MOUTON was made in bad faith, and Ohasawa is not the owner of the mark.
• FLYING MOUTON is similar to the opponents’ earlier marks, which are registered for the same goods, and such use of FLYING MOUTON is likely to deceive or cause confusion.

The opponents’ marks are well known in New Zealand. As FLYING MOUTON is identical/similar to the opponent’s marks, and the goods are the same, use of FLYING MOUTON would be taken as indicating a connection in the course of trade between Ohasawa’s goods and the opponents’ goods, and such use is likely to prejudice the opponents’ interests.

In support of their position, the opponents filed evidence of use of their trademarks in New Zealand.  Surprisingly, this evidence comprised a single statutory declaration from an employee of the opponent’s attorneys, which the assistant commissioner described as consisting “largely of information from the internet, which, apart from the fact of its being on the internet, is hearsay, and most of this information is dated after the relevant date” (at 26). While this evidence established that the opponents’ Chateau Mouton Rothschild wine was what the assistant commissioner described as “rare and fine, which means that there will be esteem attaching to the brand” (at 26), the opponents failed to show that there was an awareness of their marks at the relevant date amongst a substantial number of persons. This finding was fatal to more than half of the opponents’ grounds of opposition, as these depended on the opponents being able to show that they had a reputation in their marks in New Zealand as of the date Ohasawa’s application was filed.

As for the issue of bad faith, the opponents alleged that Ohasawa would have been aware of the opponents’ marks, and given the opponents’ extensive reputation in their marks in New Zealand and throughout the world, Ohasawa’s application for FLYING MOUTON fell short of the normal standards of acceptable commercial behaviour. Taking into account the differences between the marks, and that no evidence was filed to establish that Ohasawa knew of any of the opponents’ marks before the relevant date, the assistant commissioner was not satisfied there was anything to suggest Ohasawa’s application had been filed in bad faith. Equally, it was held that, as there was an absence of evidence that the opponents had used their marks in New Zealand before the relevant date, or that those marks were well-known in New Zealand, the grounds of opposition based on ownership and conflict with a well-known mark also failed.

The final issue for the assistant commissioner was whether the opponents’ marks and Ohasawa’s FLYING MOUTON mark were confusingly similar. Despite the word 'mouton' being common to all the marks, the assistant commissioner held that the marks were not confusingly similar:

"52. My impression of the totality of each of the opponents’ marks and the opposed mark, having regard to the essential features of those marks and, in particular, the similarities is that the marks are visually, aurally, and conceptually dissimilar, even though the opposed mark, and each of the opponents’ marks, includes the word 'mouton'; but there is no evidence before me which establishes that this word has acquired a distinctive character.

...

55. I consider that the combination of an ordinary English word such as 'flying' with a word that is not English will cause the relevant market to focus more on the word 'flying', which is readily understood. The relevant market is likely to perceive 'flying mouton' as a reference to an unknown animal or object that moves through the air by itself or in an aircraft. I also consider that the combination of an ordinary English word with one that is not is unusual.

56. The opponents’ marks consist entirely of French words."

The opponents were unsuccessful on all grounds.

Neither party appeared before the assistant commissioner, and the decision was issued based on the papers filed. It is quite possible a different outcome may have resulted if the opponents had filed more evidence regarding their use of and reputation in their various marks, as well as challenging the assistant commissioner’s view on the lack of similarities between the marks, and how members of the New Zealand public may have perceived the marks given the common element 'mouton' present in all of the marks.

Carrick Robinson, James & Wells Intellectual Property, Auckland