Trade mark opposition: Implications of adopting a mark containing descriptive words of foreign origin

A recent opposition looked at the importance of the word SAKE as an English word of foreign origin. In dismissing the opposition, the Hearing Officer found that prior rights in composite marks where an essential element is a descriptive English word, albeit of foreign origin, may not be sufficient to prevent third party use and registration of subsequent marks that share that word.

In the recent case of Urban Purveyor Group Pty Ltd v Sake No Hana Limited [2016] ATMO 95 (2 November 2016), Urban Purveyor Group opposed registration of the trade mark SAKE NO HANA for various services in Class 43.

The Opponent relied on its reputation in the word SAKE based on use since 2009 and on prior registrations it owned, including the following marks registered from June 2013:

  Trade Mark Number   Mark
  1368276  sake black
  1368278  sake yellow
  1368280  sake restaurant and bar

The opponent was ultimately unsuccessful.

The decision focuses on the ‘prior marks’ ground of opposition under section 44, and also the ‘reputation’ ground of opposition under Section 60.

Prior marks ground dismissed

The prior mark ground was unsuccessful.

The word SAKE is an English word of foreign origin, with an entry in the Macquarie Dictionary. The Hearing Officer, noting this entry in the dictionary, considered that that the term ‘sake’ was “utterly descriptive” in relation to goods such as ‘rice wine’ in class 33 and also had descriptive relevance when used in relation to restaurants and similar services.

The additional words ‘NO HANA’ and lack of circle device in the opposed mark were significant points of difference, on an aural and visual basis.

Further, the applicant had demonstrated that ‘sake’ is used by various traders in the marketplace, such that consumers would not necessarily assume that the same trader was using different trade marks containing ‘sake’ .

The Hearings Officer concluded that consumers were unlikely to shorten SAKE NO HANA to simply SAKE, and further that the impression left upon a person would be ‘sake no hana’ in its entirety. Interestingly, the Hearings Officer commented that consumers were more likely to shorten SAKE NO HANA to, “the most memorable element… ‘no hana’ given that ‘sake’ has some application to the services”.

Reputation ground dismissed

In terms of the reputation ground of opposition, the Hearings Officer commented that the sales and marketing figures submitted by the Opponent were significant, from 2009 until the filing date of 8 October 2013 of the SAKE NO HANA application.

Indeed, the Opponent had received numerous industry awards for its SAKE restaurant services before the priority date of the opposed SAKE NO HANA mark.

However, the Hearings Officer was not satisfied that because of that reputation, use of the SAKE NO HANA mark would be likely to deceive or cause confusion. The Hearings Office referred to her reasons for dismissing the ‘prior mark’ ground, and stated that if any deception or confusion were to arise from the use of the SAKE NO HANA trade mark, “it is likely to be because both parties trade marks incorporate the descriptive word ‘sake’ rather than because of any reputation attributable to the Opponent.”

The Opponent did not establish any ground of opposition. The SAKE NO HANA trade mark proceeded to registration on 20 December 2016.

This case highlights that committing to a trade mark principally consisting of a well-understood English word of foreign origin which is somewhat descriptive may have limitations in terms of stopping registration of future marks containing the same term, notwithstanding evidence of significant sales and marketing.