BAVARIA mark for beer allowed to proceed to registration

In Bavaria NV v Bayerischer Brauerbund eV ([2009] FCA 428, April 30 2009), the Federal Court of Australia has allowed an appeal from the registrar of trademarks and directed that Bavaria NV’s BAVARIA mark proceed to registration.
Bavaria applied to register a composite trademark including the word 'Bavaria', three references to 'Holland', as well as a number of non-word or graphic elements, in respect of beer and other alcoholic and non-alcoholic beverages. Bayerischer Brauerbund eV (the Bavarian Brewery Association) sought, on behalf of its members, to protect the use of the terms 'Bavarian' and 'Bavaria' (and their German equivalents) in relation to beer. Bayerischer Brauerbund submitted that the word 'Bavaria', when used in Australia in connection with beer, indicates that the beer originates from Bavaria and possesses a quality, reputation or other characteristic attributable to a Bavarian origin. On these grounds, Bayerischer Brauerbund successfully opposed Bavaria’s registration of its trademark and Bavaria appealed to the Federal Court. 

At the trial, the issues were whether:
  • the trademark was capable of distinguishing Bavaria’s goods;
  • the mark was inherently adapted to distinguish those goods;
  • use of the mark would be likely to deceive or cause confusion or be contrary to law;
  • the mark contained or consisted of a sign that is a geographical indication; and
  • there is a general discretion to refuse to register the mark pursuant to Section 55 of the Trademarks Act where no specific ground of opposition is established.
The court found in Bavaria’s favour on each of these issues. This report will focus on the fourth and fifth issues. 
Section 61 of the act (as in force at the priority date) provides that the registration of a trademark in respect of “relevant goods” may be opposed on the grounds that the mark contains or consists of a sign that is a geographical indication for “designated goods” originating in a country (or in a region or locality in a country) other than the country, region or locality in which the relevant goods in fact originated.

'Geographical indication' is further defined in Section 6 of the act to mean a sign which is recognized in the former country as a sign that indicates that the goods:
  • originate from that country, region or locality; and
  • have a quality, reputation or other characteristic attributable to their geographical origin.
Bayerischer Brauerbund thus had to establish that the word 'Bavaria' is recognized in Germany as a sign indicating these two elements. In this context, Bayerischer Brauerbund relied on numerous matters which it argued established the necessary “recognition”, including the fact that on May 8 1957, the LADY BAVARIA mark (a composite mark consisting of the words 'genuine Bavarian beer' and the LADY BAVARIA logo) was registered in Germany as a collective mark. The 'Lady Bavaria' (or 'the Bavaria') is a bronze statue in Munich which is said to be the personification of Bavaria and has been so for over 150 years.
After considering the substantial evidence of the alleged recognition in Germany of BAVARIA as a sign, the court rejected Bayerischer Brauerbund’s submission. The court noted that the relevant test does not depend on the impression or the likely impression made on a consumer. The test requires Bavaria’s actual, composite trademark to be looked at in its totality and the court found that the various signs relied on by Bayerischer Brauerbund did not equate to Bavaria’s actual trademark. For example, 'Bavarian beer' is not the same as 'Bavaria' or 'Bavarian Holland beer', and Section 61(1) requires that the geographical indication which is alleged to be recognized must itself be contained in the opposed trademark.
Section 55 of the act deals with what happens at the end of an opposition. It directs that the register decide to either:

  • refuse to register the mark; or
  • register the mark (with or without conditions or limitations), having regard to the extent (if any) to which any ground of opposition has been established. 
Bayerischer Brauerbund submitted that Section 55 confers a general discretion to refuse to register a mark notwithstanding that no ground of opposition was established.
That submission was also rejected. The court held that a decision to reject a trademark application must be based upon positive satisfaction that a ground for rejecting it is made out. Thus, Section 55 does not provide an “ambulatory discretion” to refuse a trademark application which otherwise does not offend any of the particular grounds of opposition provided for in the act.
Julian Gyngell, Julian Gyngell, Wahroonga

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