Bavaria: a beer or a state? Recognising geographical indications
Bavaria NV v Bayerischer Brauerbund eV  FCA 428 (30 April 2009)
In appeal proceedings from a decision of the Trade Marks Office the Federal Court has had its first opportunity to consider the extent of protection to be provided to geographical indications under section 61 of the Trade Marks Act 1995 (Cth).
Facts of the case
Bayerischer Brauerbund eV, the Bavarian Brewery Association (BBA) representing 240 Bavarian Brewers, opposed registration of the following trade mark by Bavaria NV. Bavaria NV is a long established company producing beers by a brewing method they claim to be commonly known as the Bavarian method. Their beers are brewed in the Netherlands.
BBA claimed that in Australia the word Bavaria on beer indicates that the beer would originate in Bavaria and that the use of this geographical term indicates that the beer posses a quality or reputation or other characteristic associated with its geographical origin. Further BBA contended that on the basis that BAYERISCHES BIER (meaning BAVARIAN BEER) is a recognised geographical expression in the European Union the word Bavaria also constitutes a geographical indication which should also result in rejection of the trade mark under the provisions of the Trade Marks Act 1995 (Cth) (“the Act”) which preclude registration of trade marks containing or consisting of geographical indications (Section 61).
Recognising Geographical Indications
Section 6 of the Trade Marks Act 1995 defines a geographical indication in relation to goods originating from another country as a ‘sign recognised [in that country] as indicating that the goods originate in that country, region or locality and have a quality, reputation or other characteristic attributable to their geographical origin’. In original proceedings before the Trade Marks Office, the Hearing Officer determined that a geographical indication was recognised for the purposes of Section 6 if it was a sign “which has received some kind of acknowledgment”. In the Federal Court proceedings, Justice Bennett concluded that this was not enough to confer recognition within the meaning of the Act. In her view “long term use short of formal recognition is not enough, rather recognition requires something of a formal nature”. This would include registration of the geographical indication in the country of origin or recognition by some formal administrative process being undertaken or by bilateral treaty arrangement.
In this case Justice Bennett was satisfied that the expression ‘Bayerisches Bier’ is registered as a protected geographical indication (PGI) under the relevant EC regulations and as such was “recognised” for the purposes of Section 6 of the Act. She also accepted the Lady Bavaria design trade mark of BBA as registered in Germany and certain other designated countries by Madrid Protocol extension, which includes the expression GENUINE BAVARIAN BEER was recognised not only as a trade mark but as a sign of geographical indication in Germany. On this basis, and subject to any European Court of Justice determination to the contrary, Justice Bennett considered that the Lady Bavaria trade mark was also a sign that satisfied the provisions of recognition under Section 6. However in terms of Section 61 she concluded that the ground of opposition was not made out because the trade mark of Bavaria NV did not contain or consist of a sign that is a geographical indication for goods. This is because in terms of Section 61 the sign in question and geographical identification must be identical. In this case, “the recognised signs are the Lady Bavaria trade mark which includes the phrase GENUINE BAVARIAN BEER and BAYERISCHES BIER which translates as BAVARIAN BEER”. Her Honour, as had the Hearing Officer earlier, concluded that “Bavarian Beer” is not the same as “Bavaria” or “Bavarian Holland Beer” and thus the opposition by BBA could not succeed on this basis. Her Honour also went on to note that had BBA been able to establish that BAVARIA was a recognised geographical indication and had therefore been able to successfully invoke the provisions of Section 61 of the Act, Bavaria NV would have had a defence under Section 61(2)(c). This section provides an automatic defence where a trade mark has been used prior to a geographical indication being recognised. While her Honour noted that goods bearing the trade mark the subject of the application were not sold in Australia prior to the date of the geographical indication being recognised, Bavaria NV had sold beer with labels including the word BAVARIA prior to that time, and this would have been sufficient to establish the defence.
BBA also sought to establish that the connotation of the trade mark merely by inclusion of the word BAVARIA, was enough that use of the trade mark, would be likely to deceive or cause confusion (Section 43). While BBA had been successful before the Trade Marks Office in claiming the word BAVARIA in the trade mark meant that use of the trade mark in relation to beer not from Bavaria would be likely to deceive or cause confusion and that Bavaria NV had not led evidence to refute that consumers would see the word Bavaria as anything other than a geographical indication of origin, Justice Bennett of the Federal Court found to the contrary. Her Honour emphasised the requirement under Section 43 “not only that the connotation of the trade mark be established but also that, because of the connotation, the use of the trade mark in relation to the goods will be likely to deceive or cause confusion”. The evidence concerning tourism or travel was not, in her opinion, sufficient of itself to establish consumer recognition of the association of Bavaria with beer. Her Honour considered that “while an ordinary consumer in Australia would be aware that Bavaria is a State in Germany, as a matter of common knowledge “from the evidence as led she was “not satisfied that the consumer would associate the trade mark with the State in Germany”. Nor was she satisfied that the trade mark connotes more than a European origin of the beer, or that the beer had characteristics attributable to a Bavarian origin. In the absence of direct evidence it was Her Honour’s view that “the reasonable consumer would not fail to observe the three references to “Holland”, which at least neutralise the connotation with the State of Bavaria”. The evidence being insufficient in her Honour’s opinion to establish the geographical connotation of Bavaria with beer, this ground of opposition also failed.
Other matters of judicial consideration
Her Honour considered the trade mark of Bavaria NV to be inherently adapted to distinguish as per Section 41 of the Act, albeit she considered “the matter is not without difficulty”. However her Honour noted that if she had not found the trade mark inherently distinctive, the evidence was not sufficient to have qualified the trade mark for registration as a trade mark capable of distinguishing under Section 41(5), as use of the trade mark had discontinued. Thus projection to a future capability to distinguish was not possible. Neither would the evidence have been sufficient to overcome a finding that the trade mark was not inherently adapted to distinguish to any extent under Section 41(6).
In delivering her judgement Justice Bennett also considered whether there existed a discretion in still deciding opposition proceedings in favour of the Opponent when none of the specific opposition grounds have been established. Section 55 of the Act provides that unless the proceedings are discontinued or dismissed, the Registrar must, at the conclusion of proceedings make a decision “having regard to the extent (if any) to which any ground on which the application was opposed had been established”. Her Honour concluded that where no grounds of opposition have been established, neither the Registrar nor the Court retains any discretion to still refuse to register the trade mark.