No victory for Vittoria Victoria Coffee not sufficiently distinctive

What you need to know

• Cantarella Bros unsuccessfully applied to register the composite trade mark VICTORIA COFFEE in class 30, consisting of the stylised words VICTORIA COFFEE and a rectangular device element.
• Despite the State of Victoria not being known as a region for growing coffee beans, the Applicant was not able to overcome the Examiner's lack of distinctiveness objection to the trade mark.

What you need to do

• When applying to register a composite trade mark combining descriptive words and other elements, ensure that the other elements are distinctive enough to outweigh the descriptive significance of the words.

Cantarella Bros Pty Ltd, trading as Vittoria Food & Beverage (the Applicant) is a major competitor in Australia's coffee market.

The Applicant has been trading in coffee under the VITTORIA brand since 1958. The Applicant filed trade mark application 1955965  for in respect of goods in class 30, including coffee (the Trade Mark).

At the examination stage, the Examiner raised a ground for rejection under section 41 of the Trade Marks Act 1995 (Cth) (the Act), on the basis that the Trade Mark was not capable of distinguishing the Applicant's goods from those of other traders.

The Applicant's submissions to the Examiner were unable to overcome the section 41 ground, so the Applicant requested a hearing. The Delegate ultimately refused to register the Trade Mark for the reasons outlined below.

Ordinary signification of the Trade Mark

The Applicant relied upon the well-established principle that an enquiry under section 41 of the Act requires the Trade Mark to be considered as a whole, and not artificially divided and assessed by its respective components.

The Applicant argued that the Delegate should follow Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428, in which a composite trade mark was sufficiently inherently adapted to distinguish beer, notwithstanding that it included the name of a well-known beer producing region in Germany, BAVARIA. This was because the mark contained other distinctive visual elements, such as a family crest.

The Applicant acknowledged that the words VICTORIA COFFEE, an essential feature of the Trade Mark, are not by themselves inherently adapted to distinguish. However, the Applicant argued that the other elements of the Trade Mark, namely the words appearing in a highly stylised format and the rectangular device separated by white space, made the composite Trade Mark sufficiently distinctive.

The Delegate disagreed and found that, considering the Trade Mark as a whole, the ordinary signification of the Trade Mark is coffee related goods which originate from Victoria. The Delegate did not consider the Bavaria case to be determinative, and found that the stylised font and rectangle in the Trade Mark did not overcome the pure descriptiveness of the word elements. The Delegate considered that other traders should not be impaired from using the descriptive word elements in relation to similar goods.

Other circumstances

The Delegate did, however, find that the Trade Mark has some level of inherent adaptation to distinguish. This led the Delegate to consider whether any "other circumstances" justified registration under section 41(4) of the Act.

The Applicant submitted that the Trade Mark should be registrable with regard to the combined effect of the following:

• The Trade Mark was registered without objection in New Zealand for the same goods;
• Victoria, Australia, is not a suitable region for growing coffee beans and has no association with this trade. Furthermore, there is no region called Victoria anywhere else in the world which is suitable for growing coffee beans;

• The VITTORIA composite mark (AU TM No 1995149), has been used extensively by the Applicant since at least 2005 and was registered in 2019; and
• The Applicant holds the trade mark registration 1123171 for QUEEN VICTORIA for similar goods.

The Delegate acknowledged that although Victoria may not be a suitable region for coffee bean production, certain varieties of coffee beans may be grown there in the future, and other aspects of commercial coffee production, for example roasting, could occur in Victoria. In support of this, the Delegate referenced a recent McDonald's advertisement that stated its coffee beans were roasted in Melbourne, which illustrated how traders may find it desirable to associate their coffee related goods with Victoria.

Reputation in the VITTORIA brand

The Applicant supplied evidence of its extensive use of and reputation in the VITTORIA brand, however the Applicant filed no evidence of the use or intended use of the Trade Mark. Although the Delegate was satisfied that the Applicant had a significant reputation in VITTORIA, the Delegate did not consider the Applicant's reputation to be a sufficiently compelling reason to permit registration of the Trade Mark. This was despite the similar stylisation of the marks, which consumers might recognise, and evidence of Google searches for "Victoria coffee" automatically returning results for "Vittoria coffee".

Authors: Stuart D'Aloisio, Partner and Giulia Falvo, Graduate.