Wine marks held to be similar based on actual use

New Zealand
The assistant commissioner has upheld an opposition against the registration of the trademark OYSTERCATCHER for wine (T01/2011, February 9 2011).
 
In 2009 Oystercatcher Wines Limited applied for the registration of the trademark OYSTERCATCHER in Class 33 of the Nice Classification in respect of wines. Delegat's Wine Estate Limited, producer of the well-known Oyster Bay wine, opposed.
 
Delegat's based its opposition on it having a reputation in the trademark OYSTER BAY in relation to wine, and on earlier registered rights.
 
The assistant commissioner took a reverse approach to considering the marks under the 'reputation' provision. She said that, if she did not consider the actual use of the mark, her impression would be that the marks looked and sounded different. The ideas of the marks were also said to be different: OYSTER BAY gave the impression of a place, whereas OYSTERCATCHER is the name of a bird.
 
However, considering the actual use of the marks, the assistant commissioner found that 'oyster' was the dominant and essential feature of the OYSTER BAY mark. This was in part because of promotions of slogans such as “Sometimes the world really is your oyster”. There was also evidence of consumers shortening the trademark to OYSTER and then 'Oysty'.
 
The assistant commissioner noted that Oyster Bay is a premium wine, and that OYSTER BAY has a high level of acquired distinctiveness. On that basis, it was said to be not unusual for a family of marks to grow out of a well-known mark. Consumers were likely to perceive OYSTERCATCHER as part of the OYSTER BAY range.
 
Not only was the mark OYSTERCATCHER found to be likely to deceive or confuse, it was also found to be likely to prejudice the interests of Delegat's on the following grounds:
  • The applicant’s wine is of unknown quality. Delegat’s, which prides itself on the quality of its wine, will have no control over the quality of the applicant’s wine.
  • Consumers might believe that OYSTERCATCHER is a line extension of Delegat’s wine and Delegat’s reputation for high-quality wines may be tarnished.
  • The applicant would be able to free-ride on Delegat’s reputation.
  • Use of OYSTERCATCHER for wine will blur the distinctiveness of Delegat’s association with the word 'oyster'.
The opposition was successful and has not been appealed.
 
Kate Duckworth, Baldwins, Wellington

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