FEDERAL COURT OF AUSTRALIA

Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235

ORDERS

THE COURT ORDERS THAT:

1.    Within 14 days of the date of this order, the parties endeavour to agree as to the appropriate form of orders (including as to costs) to be made reflecting the conclusions expressed in these reasons. If no agreement is reached, the parties are within 21 days of the date of this order to notify the Court as to the orders for which they each contend and supply written submissions of no more than 5 pages in length addressing their respective contentions and indicating whether they desire to be heard on the issues addressed.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BURLEY J:

1.    INTRODUCTION

1.1    Summary of the issues

1    Glass and crystal products have for hundreds of years been manufactured in a region that up until the commencement of World War I in 1914 was known as Bohemia. In 1918 the independent republic of Czechoslovakia was created, incorporating regions that were formerly part of Austria and Hungary and including the area formerly known as Bohemia. On 1 January 1993 Czechoslovakia was divided into the separate nations of the Czech Republic and Slovakia. Glass and crystal products continue to be made in the Czech Republic, including in parts of that country known as Bohemia. These historical facts are not in dispute, and underpin a dispute concerning the validity and infringement of two trade marks owned by the applicant, Bohemia Crystal Pty Limited (BCP) for BOHEMIA and BOHEMIA CRYSTAL (collectively, the Bohemia marks). The central issue in the case is whether BCP is entitled to a statutory monopoly under the Trade Marks Act 1995 (Cth) (TM Act) over those words in respect of glass and crystal products.

2    BCP contends that the first respondent, Host Corporation Pty Ltd (Host), has infringed the Bohemia marks by importing, advertising and selling glassware and crystal ware (referred to below, except where the context indicates otherwise, as glassware) known as the “Banquet” products. Separately, BCP alleges that Host has engaged in misleading or deceptive conduct in breach of s 18 or subsection 29(1) of Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL) and that the second respondent, Gavan Sullivan, is liable as a result of either being involved in the alleged misleading or deceptive conduct or as a joint tortfeasor in respect of the alleged trade mark infringement. In the course of the hearing BCP indicated that it no longer presses a pleaded claim for passing off.

3    The parties have agreed that 5 forms of impugned conduct by Host represent the range of activities that may amount to trade mark infringement or breach of the ACL. They are described more fully in section 1.9 below and concern the contents of catalogues published by Host in October 2015 and January 2016, the packaging used for the Banquet products, aspects of the Host website and the use of a sticker on the Banquet glassware itself.

4    Host does not dispute that it has engaged in the impugned conduct, but denies trade mark infringement. It contends that it has not used the Bohemia marks as trade marks within the TM Act. It also relies on a defence of good faith use of a geographical term pursuant to subsection 122(1)(b)(i) of the TM Act. Host contends that the Bohemia marks are liable to be cancelled and removed from the Trade Marks Register (Register) pursuant to subsections 88(1) and 88(2)(a) of the TM Act, because each could have been opposed pursuant to s 41 of the TM Act. It contends that as at the filing dates of the marks, the names “Bohemia” and “Bohemia Crystal”, when used in relation to glassware were not capable of distinguishing BCP’s goods from those of other persons. In the alternative, Host contends that the Bohemia marks have become generic and are liable to be cancelled by operation of ss 87 and 24 of the TM Act. Host also denies that it has breached the ACL and denies any liability on the part of Mr Sullivan.

1.2    The parties

5    BCP was incorporated in 1975 as a wholly owned subsidiary of Skloexport Akciova Spolecnost (also known as Glassexport Co Ltd) (Skloexport), which was then the government entity responsible for the export of all glass and crystal products made in Czechoslovakia (and later the Czech Republic). Until July 1999 BCP sold glassware in Australia under trade marks licenced to it by Skloexport. In July 1999 Skloexport went into liquidation and BCP took an assignment of some of its trade marks. On 5 October 2001 BCP filed an application for the BOHEMIA CRYSTAL mark and on 2 May 2003 it filed its application for the BOHEMIA mark (these dates are referred to below as the relevant dates). Since its incorporation, BCP has distributed and sold glassware sourced from within Czechoslovakia and (since 1 January 1993) the Czech Republic via third party retailers, its websites and from its own stores.

6    Host is an importer and supplier of catering goods and equipment that supplies a range of goods including crockery, cutlery, glassware, kitchenware and appliances to the catering trade. It was started in 1999 by Mr Sullivan as a sole trader. In 2003 the business was transferred to Host, and Mr Sullivan became its sole director and secretary. Host conducts its business from premises in Perth and Sydney. It currently offers about 2,500 different product lines.

1.3    Summary of conclusions

7    I have found that the cross claim brought by Host succeeds and that the Bohemia marks are liable to be removed from the Register. More particularly, for the reasons set out in section 2 of these reasons, I have found that as at the relevant dates, neither was capable of distinguishing the goods in respect of which they were registered from the goods or services of other persons. In section 3 of these reasons I find that the Register should be rectified by cancelling the registration of each of the Bohemia marks pursuant to subsection 88(1) of the TM Act. In section 4 I note that in light of my conclusion in section 2, it has not been necessary for me to consider the merits of Host’s cross-claim for revocation pursuant to ss 87 and 24 of the TM Act.

8    In deference to the skilfully presented arguments of the parties, and against the prospect that my conclusion in relation to validity of the Bohemia marks is incorrect, I have considered in section 5 whether or not the impugned Host uses would have amounted to infringing trade mark use. In relation to the BOHEMIA mark, I conclude that some, but not all, of the uses would have infringed. In relation to the BOHEMIA CRYSTAL mark, I conclude that none of the impugned uses is substantially identical with or deceptively similar to that mark in accordance with subsection 120(1) of the TM Act. In section 6 I conclude that a defence under subsection 122(1)(b)(i) of the TM Act would not apply in the event that the Host uses did otherwise amount to infringements.

9    In section 7 I consider and reject the claim advanced by BCP for breach of the ACL.

10    In light of my primary findings in relation to liability it has not been necessary to consider the personal liability of Mr Sullivan or BCP’s entitlement to pecuniary or other relief.

1.4    The witnesses

11    The hearing was conducted over 7 days and the evidence of 15 witnesses was read, many of whom were cross-examined. I generally consider that all of the witnesses made a genuine attempt to assist the Court by giving evidence honestly and, where cross-examined, that they frankly answered questions of them. The exceptions to this general finding are identified in these reasons.

1.4.1    BCP’s witnesses

12    Paul Hesse has since March 1990 been the managing director of BCP and has worked as an employee with BCP since 1980. Mr Hesse was employed by S. Hoffnung & Company Limited from 1965 to 1980, first as a commercial traveller selling products including glassware and giftware and later as a manager of marketing and promotions for its giftware department. He gives evidence about BCP’s history, BCP’s relationship with Skloexport, action taken by BCP to protect the BCP marks over the years, the conduct of Host, the goods sold by BCP and the channels through which they are sold. He was cross-examined.

13    Greg Francis has since July 2000 been employed as a retail buyer by Peter’s of Kensington in Sydney. He gives evidence about the glassware market in Australia. He was cross-examined.

14    Stephen Coudounaris is a solicitor employed by HWL Ebsworth Lawyers, who act for BCP. He puts into evidence various materials concerning the manner in which the words “Bohemia” and “Bohemian” have been used. He was not cross-examined.

15    Anthony Moore is an Associate Professor of communications and media studies and the director of the Communications and Media Studies Masters program at Monash University. He has studied the culture of Bohemia and Bohemians in Australia and gives independent expert evidence about the meaning of the word “Bohemia” and its use in Australia. Professor Moore was not cross-examined.

16    Shane Paterson is a solicitor employed by HWL Ebsworth Lawyers who puts into evidence a Notice to Produce and some photographs. He was not cross-examined.

17    David Wilkinson is a solicitor employed by HWL Ebsworth Lawyers. He puts into evidence searches that he conducted on the internet using the Wayback Machine to locate historical versions of Host’s website.

1.4.2    Host’s witnesses

18    Gavan Sullivan is the second respondent and the sole director and secretary of Host. He is responsible for overseeing all stock imported or purchased by Host and sold in Australia and has ultimate responsibility for all promotional materials used by Host. He gives evidence about his own background, his role in the business of Host, his understanding of the meaning of the words “Bohemia” and “Bohemia Crystal” and the activities of Host in relation to the goods the subject of the proceedings. He was cross-examined.

19    Lucy Flint has been employed by Host since 2008 and was initially involved in its operations in the warehouse and sales. Since 2015 she has been its purchasing and marketing manager. She is responsible for stock, pricing, sourcing products, liaising with suppliers, attending trade fairs to source new stock, artwork for catalogues, approving Host’s marketing material and managing its digital marketing campaigns. She gives evidence about how she sourced the Banquet range of products in 2015, how it has been promoted and the sales activities of Host in relation to that range. She was cross-examined.

20    Geoffrey Edwards is an arts consultant who obtained a Diploma of Art and Design at Chisholm Institute of Technology in about 1975 and a postgraduate Diploma in Fine Art at the Royal Melbourne Institute of Technology in about 1986. From 1976 to 1999 he worked at the National Gallery of Victoria, and from 1996 to 1999 he was a senior curator. He is the author of the book “Art of Glass: Glass in the collection of the National Gallery of Victoria”. He gives independent expert evidence about the meaning and use of the terms “Bohemia” and “Bohemia Crystal” as at the relevant dates and present day. He was cross-examined.

21    Stephen Conley has since 1995 been an antique and 20th century furniture and small ware dealer who currently operates, together with his wife, a business that trades in Double Bay, New South Wales. He gives evidence about the meaning of the terms “Bohemia” and “Bohemia Crystal” both at the relevant dates and today. He was cross-examined.

22    John Cook is an antique dealer and the owner and operator of Grafton Galleries Pty Ltd, which trades from premises in Rushcutters Bay, New South Wales. Grafton Galleries has been in his family for three generations, and he started working in the business part-time during the 1970s. He has worked for it full-time since 1986 and took over the business in the mid-1990s. He gives evidence about his knowledge and experience in the field of glass, glassware, crystal and crystal ware as at the relevant dates and the present, and in particular the meaning of the terms “Bohemia” and “Bohemia Crystal”. He was cross-examined.

23    Bindhu Holavanahalli is a lawyer employed by Wrays Lawyers, who act for Host. She puts into evidence documentary materials about: past trade mark applications including the word “Bohemia”, examination reports in respect of the Bohemia marks, dictionary definitions of the word “Bohemia”, lists of exhibitors at various trade fairs, excerpts from travel books and online materials concerning travel in the region known as Bohemia, and historical references contained in the Australian National Library dating from 1978 to 1994 concerning the use of the word “Bohemia” in various contexts. She was not cross-examined.

24    Tomas Barta is a citizen of the Czech Republic and has since 2010 been the managing director of Kedaung Europe Joint Stock Company (Kedaung), a company registered in the Czech Republic. Kedaung is a part of the Kedaung Industrial Group (Kedaung Group) which is an Indonesian company. Forincorp International Ltd (Forincorp) is the member of the Kedaung Group that is responsible for sales and marketing of Kedaung Group Limited’s products in and to Australia. Mr Barta started working in the glass industry in 1995, when he worked for a company called Sklo Bohemia. In 1995 that company exclusively manufactured glass products for Skloexport. In 1996 Sklo Bohemia terminated its contract with Skloexport and entered an exclusive supply contract with Bohemia Crystalex Trading a.s. (Bohemia Crystalex). In 1997 Skloexport became the owner of Sklo Bohemia but it was subsequently repurchased by Bohemia Crystalex in 1998. From 2000 to 2002 Mr Barta worked as the assistant to the General Manager of Bohemia Crystalex. He then moved to work for a company within the Kedaung Group before taking up his current position in 2010. He gives evidence about the manufacture of the Kedaung Group’s Banquet range of products, its packaging and promotional materials, the use by other companies of the word “Bohemia” in relation to glass and crystal products, his dealings with Mr Hesse and a brief history of the Czech glass industry. He was cross-examined.

25    Marko Kidric is a resident of the Czech Republic and has since January 2009 been the Chairman of the board and managing director of Bohemia Jihlava a.s. (Bohemia Jihlava), a company registered in the Czech Republic. Bohemia Jihlava owns a glass decoration facility and also makes designs and moulds for glass objects, such as wine glasses or vases. From 1988 until 1998 Mr Kidric worked as a product developer for a glass company located in Slovenia. He then moved to Prague and worked for a US department store as a designer, developing crystal product lines. In 2005 he moved to work in product development for a different business in largely the same sort of role, before commencing his current position in 2009. He gives evidence about his understanding of the meaning of the word “Bohemia” and “Bohemia Crystal”, the use of those terms by his company and the difficulties that he has encountered using the word “Bohemia” in Australia as a result of the activities of BCP in relation to trade marks owned by it. He was cross-examined.

26    Lubor Cerva is a citizen of the Czech Republic and has since 2009 been the owner and managing director of Crystalite Bohemia, s.r.o. (Crystalite), the largest producer of glass stemware and giftware in the Czech Republic. He gives evidence about the history of Crystalite, its products, his understanding of the meaning of the word “Bohemia” and “Bohemia Crystal”, Crystalite’s trade marks and the difficulties that Crystalite has experienced in using those trade marks in Australia arising from the activities of BCP. He was cross-examined.

1.5    The origins of BCP’s trade marks

27    Mr Hesse gives evidence of the history of BCP’s entitlement to use various trade marks, including the Bohemia marks. Set out below are my findings in relation to that evidence, much of which is taken from agreements which Mr Hesse has put into evidence.

28    BCP was incorporated on 26 November 1975. From 1975 until 1999 it was a wholly owned subsidiary of Skloexport, which was then the government monopoly responsible for the export of all glass and glassware from Czechoslovakia, or the Czech Slovak Socialist Republic (CSSR), as it was then known.

29    In 1992 Skloexport entered into a Registered User Agreement with BCP pursuant to which Skloexport agreed that BCP was granted the exclusive right to apply 5 registered trade marks to goods made in accordance with the directions of Skloexport or in accordance with its quality standards, for a term of 5 years to be renewable automatically on a year by year basis and only for so long as BCP remained a wholly owned subsidiary of Skloexport.

30    The trade marks to which this agreement applied (referred to collectively below as the Skloexport marks) were:

(1)    No. A172034, which is a composite mark (034 mark) that was registered from 14 February 1962 under the Trade Marks Act 1955 (Cth) (1955 Act) in class 21 for “Glass and glassware of all kinds not included in other classes being products of Bohemia, Czechoslovakia”. The registration (in the form that it appears in the Register following the passing of the TM Act) includes the following endorsement:

Registration of this trade mark shall give no right to the exclusive use of the word “Bohemia”. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

The form of the 034 mark is as follows:

(2)    No. 228310, which is a device mark (310 mark) that was registered under the 1955 Act in class 21 for “Glass and glassware of all kinds included in this class” from 13 January 1955. The registration contains no endorsements. The form of the 310 mark is as follows:

(3)    No. 319701, which is a composite mark (701 mark) that was registered from 5 July 1978 in class 21 for “Glass and glassware of all kinds included in class 21 being crystal ware produced in the Bohemian region of the Czechoslovakia” (after its name change “Czechoslovakia” was changed for “the Czech Republic”). The registration (in the form that it appears in the Register following the passing of the TM Act) includes the following endorsement:

Registration of this trade mark shall give no right to the exclusive use of the words BOHEMIA and CZECH REPUBLIC. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks act 1995.

The form of the 701 mark is as follows:

(4)    No. A345332, which is a composite mark (332 mark) that was registered under the 1955 Act in class 11 for “Chandeliers, being crystalware produced in the Bohemian region of the Czechoslovakia” (after its name change “Czechoslovakia” was changed for “the Czech Republic”). The registration (in the form that it appears in the Register following the passing of the TM Act) includes the following endorsement:

Registration of this trade mark shall give no right to the exclusive use of the words BOHEMIA and CZECH REPUBLIC. The preceding endorsement(s) were recorded prior to the commencement of the Trade Marks Act 1995.

The form of the 332 mark is as follows:

(5)    No. 532337, which is a composite mark (337 mark) that was registered under the 1955 Act in class to 2 “Household and ornamental glassware, plain and decorated”. The registration includes no endorsement. According to the Register, the lapsing of the 337 Mark was advertised on 11 February 1993. The form of the 337 mark is as follows:

31    On 4 April 1995 BCP applied to register a trade mark for the words BOHEMIA CRYSTAL in respect of all goods in class 21 including crystal ware, glassware and porcelain dinnerware. On 23 February 1996 that application was the subject of an adverse report from the Australian Industrial Property Organisation relevantly on the basis that the trade mark was not capable of distinguishing the goods of BCP from the goods of other traders because “your trade mark is BOHEMIA CRYSTAL which is used to refer to crystalware from Bohemia. Other traders are likely to need to use these words to indicate their similar goods and/or services.”

32    BCP did not pursue this trade mark application.

33    Between 1997 and 1999 Skloexport was in decline. Mr Hesse explains in his evidence that its business was transferred to Bohemia Crystalex, a company incorporated in the Czech Republic.

34    On 2 January 1999 Bohemia Crystalex and BCP entered into an agreement entitled “Contract for Exclusive Representation” pursuant to which BCP was appointed its sole representative for Australia in respect of, amongst other things, glassware and crystal ware and all products sold by Bohemia Crystalex at present and in the future. BCP was to receive a commission for sales achieved. It was a clause of the agreement that BCP undertook not to register for itself the trade marks for Bohemia Crystalex products, and agreed to defend the rights of Bohemia Crystalex in connection with its trade marks.

35    On 2 January 1999 Bohemia Crystalex and BCP also entered into a Distributorship Contract.

36    On 30 June 1999 Skloexport went into liquidation. Thereafter, in about May 2000, Bohemia Trading Pty Ltd (Bohemia Trading) (a company controlled by Mr Hesse and of which he is a director) and Net 2001 Ltd became co-shareholders of BCP.

37    On 13 July 1999 Skloexport assigned each of the 034, 701 and 332 trade marks to BCP. It was a term of the assignment that they were assigned without the goodwill of the business concerned in the goods in relation to which the trade marks have been used. It is relevant to note that in the schedule to the assignment it is recorded that the goods in respect of which these three trade marks are registered are goods “being products of Bohemia, Czech Republic” or products, “produced in the Bohemian region of the Czech Republic”.

38    In 2008 Bohemia Crystalex went into liquidation at which point Bohemia Trading became the sole shareholder of BCP.

1.6    The filing of the Bohemia marks

39    On 5 October 2001 BCP applied for the registration of trade mark no. 891129 which on 26 May 2004 was registered for the words BOHEMIA CRYSTAL for goods in class 21 being “Glassware being tableware, stemware and decorative items including crystal glass figurines, glass jewellery holders and trophies”. The registration included the following endorsement:

Provisions of subsection 41(6) and paragraph 44(3)(b) applied.

40    On 2 May 2003 BCP applied for the registration of trade mark no. 952530 which on 19 April 2005 was registered for the word BOHEMIA for goods in class 21 being “Glass and glassware, crystal and crystal ware of all kinds not included in other classes including vases, figurines, bowls, wine glasses, goblets, drinking glasses, ornaments, giftware, decorated glass, painted glass; china, porcelain and earthenware.” The registration includes the following endorsement:

Provisions of subsection 41(6) applied. Provisions of paragraph 44(3)(b) applied.

41    References below to “glassware” include goods which fall within the registrations of each of the Bohemia marks.

1.7    The business of BCP

42    I make the following findings in relation to the business of BCP.

43    Mr Hesse accurately characterises it as a business concerned with the importation and distribution of glassware. It is not a producer of glassware. This distinction is of significance when one considers BCP’s uses of “BOHEMIA” and “BOHEMIA CRYSTAL” and trade marks generally, particularly in the context of the ACL claim.

44    BCP sells what Mr Hesse describes as “fine quality glassware” which he defines to be crystal and glass that contains lead oxide and other materials to enhance the brilliance and strength of the glass. BCP uses the term “full lead crystal” for glass containing a minimum of 24% lead oxide, and “semi-lead crystal” for glass containing 8 – 23% lead oxide. The terms “glass” and “crystal” may, according to Mr Hesse, be used interchangeably and BCP does so.

45    BCP operates as a “high-end” vendor that competes in the sale of product with Versace, Waterford, Wedgewood and Royal Doulton in the supply of high-quality glassware products. The evidence of Mr Hesse is that most of BCP’s products cost hundreds of dollars and are expensive compared with mass-produced glassware. Therefore, although the least expensive product available is apparently a pair of champagne flutes available for $10, the price range extends to $4,200 and the normal price of goods is, according to the evidence, much higher than $10. It is Mr Hesse’s view that the products that it sells are of fine quality. Many of the goods sold feature etching and decorations that are done by hand.

46     The customers of BCP may be divided into “retail customers” and “commercial customers”. Retail customers generally buy from BCP stores or online for domestic use. Presently BCP has stores in Brisbane, Canberra, Jindalee in Queensland, Uni Hill in Victoria and in Liverpool in New South Wales. BCP also supplies glassware to third party retailers such as David Jones, Myer, Prouds and Angus and Coote “from time to time”. A confidential list of BCP’s commercial customers is in evidence. It largely comprises trophy and engraving businesses (who no doubt purchase glassware from BCP so that it can be engraved and presented) but also includes a small number of restaurants, hotels, catering companies and sporting or other clubs/establishments. No evidence indicates the breakdown between the number of retail customers versus commercial customers, nor the proportion of sales made to each of them. However, the number of BCP stores and the type of products sold by BCP suggests, and I infer, that the retail customers significantly outnumber the commercial customers.

47    I refer further to the BCP business in the context of the ACL claim in section 7 below.

1.8    The Host business and the Banquet products

48    I make the following findings in relation to the Host business and the Banquet products.

49    Host is an importer and supplier of catering goods and equipment that supplies a range of goods including crockery, cutlery, glassware, kitchenware and appliances to the catering trade. It was started in 1999 by Mr Sullivan as a sole trader, but in 2003 the business was transferred to Host. Host conducts its business from premises in Perth and Sydney. It currently offers about 2,500 different products lines.

50    Since 1999 Mr Sullivan, and since 2003 Host, have been importers and distributors of goods supplied by Forincorp. In about April or May 2015 Host agreed to become the exclusive distributor in Australia of crystal products supplied by Forincorp called “Banquet Crystal by Bohemia”, which are referred to in these reasons as “Banquet products”. Since then Host has supplied Banquet products, mainly to buyers in the catering industry, and promoted those products in various ways including on its website and in its catalogues.

51    The Banquet products imported by Host are made and packaged in the Czech Republic for the Kedaung Group. The products are made by three major glass makers from within the Czech Republic. Mr Barta gives evidence that Kedaung Group sells its products worldwide using the same branding. The Banquet range is sold to between 30-35 different countries including in Europe, Indonesia, China and Singapore. In the case of Australia, it is sold by Forincorp, a member of the Kedaung Group.

52    The Banquet products were first promoted in Host’s October 2015 catalogue. That is a publication of 132 pages that includes a substantial listing of products including glassware, crockery, cutlery, barware, dining, disposables (aluminium foil, paper cups, plastic cutlery etc) and equipment. The primary source of promotion of Host’s goods is Host’s catalogues. They are available in hard copy and online via Host’s website.

53    Customers of Host may place orders online, by telephone or by visiting Host’s showroom in Perth. The evidence indicates that over half of Host’s sales are conducted via telephone and the balance of sales are split evenly between online sales conducted via Host’s website and sales made direct from its showroom.

54    I refer further to the business of Host and its typical customers in the context of the ACL claim in section 7 below.

1.9    The impugned Host uses

55    BCP alleges that Host has infringed each of the Bohemia marks and engaged in misleading or deceptive conduct in 5 different forms of promotion of the Banquet products. The parties agree that the impugned conduct of Host may be considered on the basis of the representative samples set out below.

56    The first concerns the words “Banquet Crystal by Bohemia” as they appeared at page 14 of the October – December 2015 catalogue, which is set out below (October 2015 catalogue use):

57    The second focusses upon the words “Czech Crystal by Bohemia…Exclusive to HOST” as they appear at page 34 of its January – April 2016 catalogue which is set out below (January 2016 catalogue use). The entry for the Banquet range in the January 2016 catalogue use was reduced in comparison to the October 2015 catalogue use to a single page spread. The references to the Leona Collection and “Banquet” have been removed from the heading which is now “Czech Crystal by Bohemia”.

58    The third concerns the manner in which the word “Bohemia” has been used on Host’s packaging of the Banquet products, by using the phrase “Banquet by Bohemia” (packaging use) in the context of the packaging as a whole:

Top view:

Front view:

Side view:

59    The fourth concerns the use of the word “Bohemia” as it has appeared on Host’s website in the context of the sale of particular glass or crystal glasses such as “Bohemia Flute”, “Bohemia Footed Beer” and “Bohemia Whiskey”. An example of this impugned use is depicted below (Website use):

60    Finally, BCP alleges that the use of “Crystal by Bohemia” as it appears in the context of “BANQUET Crystal by Bohemia” in the Host catalogue set out in blue boxes in the top left corner of the catalogues pictured above and separately as stickers affixed to glasses when sold, examples of which are set out below, amount to trade mark infringement (collectively, sticker use):

1.10    The drafting of the impugned uses

61    The process by which Host came to adopt the impugned uses is relevant to a number of issues in the proceedings. Set out below are my findings in relation to this subject.

62    Mr Sullivan has since October 2001 known of a region in the Czech Republic referred to as “Bohemia” and was aware that it is a source of good quality glassware. In 2002 he began to attend an international trade fair in Germany called “Ambiente” at which household wares, including glassware, are promoted by various manufacturers. He became familiar with a number of companies in the Czech Republic that sold glassware and used the name “Bohemia” in their title, examples of which include “Sklorservice trading as Bohemia Royal Crystal”, “Bohemia Crystal Handelgesellschaft”, “Crystal Bohemia AS” and Crystalite (referred to above in paragraph 26). He considers that the words “Bohemia Crystal” and “Bohemia Glass” refer to glassware that is manufactured in the region of Bohemia and which is reputed to be of high quality. The objective evidence of exhibitor lists from the Ambiente trade fair in the years from 2006 to 2008 and 2009 to 2015, which were in evidence, indicate that in those years between 4 and 10 different traders with “Bohemia” in their name participated as exhibitors, including Bohemia Crystaltex Trading a.s., Tom Bohemia Crystal s.r.o., Axum Bohemia s.r.o. and Bohemia Jihlava Co Ltd.

63    Host has been a customer of Forincorp since it was incorporated in 2003. For several years from 2011 onwards Mr Sullivan was invited to acquire product from Forincorp identified to Mr Sullivan as “Bohemia Crystal”, which he understood to be glassware from the Czech Republic.

64    In April 2015 he met a representative of Forincorp at the trade fair and Host was again offered an exclusive agency in Australia to distribute its Banquet products. After discussing it with Ms Flint, he decided to take up the offer. At the fair, Ms Flint was provided a promotional brochure (flyer). After she returned from the fair, on 30 April 2015, Mr Derrick Chan from Forincorp emailed a quotation to Ms Flint of prices for glassware within the Banquet range. The flyer included at its top a rendition of the “Banquet Crystal Bohemia” logo, an image of which is produced below (Banquet logo):

65    Ms Flint, as purchasing and marketing manager at Host, was responsible for the packaging to be used by Host for its products. In his written evidence Mr Sullivan gives evidence that normally a supplier will send proposed packaging artwork by email to Ms Flint for approval. He qualified that evidence in cross-examination to say that prior approval was normally sought only where Host imports goods for sale under its own brand. Where it distributes another supplier’s product under its own brand, Host rarely ever approves the artwork, and Mr Sullivan could think of no instance of it doing so. He did accept, however, that if packaging supplied by Forincorp was considered to be inappropriate, Host could, under the terms of their agreement, order its own style of packaging, although his evidence was that this would come at a considerable increase in cost and include some minimum order quantities. I accept that the content of the packaging used for the Banquet products was designed overseas by or at the request of Forincorp and was supplied to Host. I also accept that Ms Flint was the person within Host who was responsible for accepting the packaging.

66    Mr Sullivan was responsible for approving the content of the October 2015 and January 2016 catalogue uses. Under his ultimate supervision Host produced the October 2015 catalogue consistently with the artwork and description supplied by Forincorp. The catalogue was first drafted by Angeline Alle, the marketing officer at Host, at the instruction of Ms Flint. Ms Alle was provided by Forincorp with images of the products together with images of the packaging used by Forincorp. Mr Sullivan approved the choice of wording and in particular the words “by Bohemia” because it was consistent with the artwork for the products in the Banquet range as supplied by Forincorp.

67    In relation to the January 2016 catalogue use, Mr Sullivan instructed Ms Alle to change the banner headline in the October 2015 catalogue use from “Banquet Crystal by Bohemia” to “Czech Crystal by Bohemia” in order to condense the promotion from two pages to one. He considered that there was no need to replicate the word “Banquet” because it was already on the page and because he believed that the words “Czech Crystal” would emphasise the point that the product was genuine crystal from Bohemia.

68    The use of the preposition “by” in the impugned uses of “by Bohemia” came under scrutiny during the course of the hearing. In cross-examination Mr Sullivan said:

Right. Czech – you say “Czech crystal by Bohemia” is descriptive. Can you just explain to his Honour how you say it works as a descriptive use on this page? --- It refers to the type of product and where it comes from.

The type of product being Czech crystal? --- That’s correct.

And where it comes from – “by Bohemia”? --- Bohemia.

Well, Czech crystal indicates where it comes from, doesn’t it? It comes from the Czech Republic? --- It does, but Bohemia is more specific and renowned for glassware production.

…

You understand that the word “by” is a bit problematic, don’t you, with that explanation? --- I do.

That is, that it, as a matter of grammar, just doesn’t make sense? --- I do.

Right. Well, how do you explain that? --- It was taken by the – from the description and the packaging which was supplied to us from the producer and the vendor.

Is there any other explanation you have as to why? --- No.

- - - you would use the words “by Bohemia” to mean, on your evidence, from Bohemia? --- No. Again, that’s our normal – no.

HIS HONOUR: I think, Mr Hennessy, if you just give Mr Sullivan a chance to answer the question? --- Our normal practice is to take our descriptions from the suppliers across all suppliers. We do vary it occasionally, but our normal practice is we use their descriptions.

MR HENNESSY: Well, excepting [sic, “accepting”] that evidence, you don’t do so uncritically, do you? --- No, as I said, we - - -

That would be irresponsible, wouldn’t it? --- Sorry?

You don’t do so uncritically, do you? --- No, we don’t.

You assess it and determine whether you consider it’s appropriate to adopt it? --- We do, but our normal practice is to adopt the supplier descriptions.

And why, in this circumstance, did you consider it appropriate to adopt it when you recognise that “by Bohemia” did not make grammatical sense if it was intended to indicate where it was from? --- I didn’t recognise it at the time.

69    Ms Flint considered the use of the reference to “by Bohemia” in various contexts had the effect of identifying a geographical location and that she used the word “Bohemia” because it conveyed the fact that the products were from the region of Bohemia which has a reputation for producing high quality crystal. However, in cross-examination she gave the following evidence:

And you, as an English speaker, would understand, wouldn’t you, that if you wanted to indicate that this product was from Bohemia, you would say so, that is, you would say “from Bohemia”, not “by Bohemia”? --- Bohemia to me is a place in the Czech Republic, and that’s what I was intending by that title.

I’m not focusing so much on Bohemia in my question as the preposition “by”. Why did you not insert “from” rather than “by”? --- Don’t have an answer.

70    Ms Flint’s obvious discomfort with the choice of “by” was echoed in the oral evidence of Mr Sullivan, who, as noted in the above passage from his evidence, properly accepted that the use of “by Bohemia” was an ungrammatical usage, if indeed it was intended to denote that the product was from Bohemia.

1.11    The letter before action

71    On 17 December 2015 HWL Ebsworth wrote a letter before action to Host, alleging that Host had infringed the Bohemia marks and BCP’s 701 mark. It drew attention to the use by Host of advertising material on its website. Mr Sullivan in his evidence contends, and I accept, that until he received this letter he was not aware of the asserted trade marks. He states that shortly after receiving this letter he decided with Ms Flint that Host would, pending resolution of the dispute, obscure or remove all uses of the words “Banquet Crystal by Bohemia” and “Quality by Bohemia” on the packaging of products in the Banquet Range, change the references to these products as they appeared in Host’s catalogue to remove the “Banquet Crystal by Bohemia” logo and the words “Czech Crystal by Bohemia”, such as in the May 2016 catalogue, and ensure that the Host website ceased to use the word “Bohemia” in connection with the products.

72    Thereafter, Host has continued to maintain its preference and desire to use the word “Bohemia” in connection with its products, but has agreed that it will not do so, pending the resolution of this dispute.

2.    THE CROSS-CLAIM – SECTION 41 TM ACT

2.1    Introduction

73    It is convenient to consider Host’s cross-claim for the invalidity of the Bohemia marks before proceeding to consider issues of trade mark infringement.

74    Host seeks orders that the Register be rectified by the cancellation of the Bohemia marks pursuant to subsections 88(1) and 88(2)(a) of the TM Act. Subsection 88(1) relevantly provides that, subject to subsection 88(2) and s 89 the Court may, on the application of an aggrieved person, order that the Register be rectified by cancelling the registration. BCP admits that Host is a person aggrieved. Subsection 88(2)(a) provides that an application may be made on any of the grounds on which the registration of the trade mark could have been opposed under the TM Act. Host relies on s 41 of the TM Act which raises for consideration whether a trade mark is capable of distinguishing the trade mark applicant’s goods from those of other persons. In this context it is to be noted that it is common ground that the version of s 41 of the TM Act under consideration is that which pre-dates the amendments introduced into that Act on 15 April 2013.

75    There is no dispute that Host bears the onus of establishing that the Register should be rectified in the manner for which it contends.

2.2    The submissions

76    Host contends that each of the Bohemia Marks was not distinctive as at its filing date (being the relevant dates) such that it was not capable of distinguishing BCP’s goods from those of other traders. It submits that the relevant target audience of the Bohemia marks is traders who wish to sell goods within the class for which registration of the Bohemia marks were obtained and consumers who wish to purchase them. It submits that the trade marks were at the relevant dates simply words comprising a geographical name alone (in the case of BOHEMIA) or the word together with a descriptor (in the case of BOHEMIA CRYSTAL). The word “Bohemia” functions in its ordinary signification as a geographical descriptor, and accordingly, to no extent are either of the Bohemia marks inherently adapted to distinguish the designated goods. The addition of the word “crystal” for the BOHEMIA CRYSTAL mark does not make it inherently adapted to distinguish as “crystal” is a recognised term that is apt to describe glassware from Bohemia. As a consequence, Host submits that neither mark is inherently adapted to distinguish goods within subsection 41(3). Host also submits that subsection 41(5) does not apply because to no extent are the Bohemia marks inherently adapted to distinguish the relevant goods. It submits that the Court should adopt the approach taken by the Registrar of Trade Marks and consider the question of registration pursuant to subsection 41(6). However, unlike the Registrar, on the basis of the evidence in the present case it submits that the Court ought to find that BCP is not able to establish that, because of the nature and extent of the use of the BCP marks before their filing dates, they distinguish the designated goods as being those of BCP.

77    BCP disputes Host’s contention that the word “Bohemia”, when applied to goods of the type in respect of which registration was sought, indicates the origin of goods in Bohemia. It submits that the target audience is confined to the “buying public”, citing Mark Foy’s Ltd v Davies Coop & Co Ltd [1956] HCA 41;(1956) 95 CLR 190 (Mark Foy’s) at 195 (Dixon CJ), and that the relevant question is: what is the ordinary meaning of the words to consumers of glassware in Australia as at the relevant dates? It submits that Host has not established that the meaning is that the product is made in a region known as Bohemia, or that it is manufactured in a style, according to a method, or having physical characteristics of glassware originating in a region known as Bohemia. BCP accepts that “Bohemia” may be used as a geographical term, but submits that this does not mean that it is the ordinary signification, as required by the authorities. Rather, the evidence adduced by Professor Moore demonstrates that the word means, to the Australian public, an artistic or unconventional lifestyle.

78    BCP submits that the Bohemia marks are inherently adapted to distinguish within subsection 41(3) or to some extent inherently adapted to distinguish within subsection 41(5).

79    Alternatively, BCP contends that the evidence of use, provided in particular by Mr Hesse, demonstrates distinctiveness in fact. It submits that the use of its marks is like the use demonstrated in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50 (Blount), where in a composite mark the primary feature was the word “Oregon”, and the applicant adduced considerable evidence of promotion in Australia of its goods and the trade mark since 1979. In that case the Court found that the overall effect of the evidence was that persons concerned with the goods in question associated the word “Oregon” with the range of goods of a particular supplier. BCP claims that the evidence of use it relies upon demonstrates longstanding use and high volume. BCP also relies on the evidence of Mr Francis as the only witness who gives direct evidence about the meaning of the words to consumers and whose evidence was not challenged in cross-examination.

2.3    The Bohemia marks

80    The registrability of a mark must be assessed by reference to the mark itself. Here, each mark is simply the words BOHEMIA and BOHEMIA CRYSTAL. BCP did not in its registration seeks to limit the mark by stylistic or device elements. As a consequence, the rights conferred by registration are that BCP is entitled to the exclusive use of those marks rendered in either a stylised form or plain form, with or without capitalisation.

81    Further, the registrability of a mark must be assessed by reference to the specification of the goods or services for which registration is sought. The BOHEMIA CRYSTAL mark is registered in respect of goods in class 21 being “Glassware being tableware, stemware and decorative items including crystal glass figurines, glass jewellery holders and trophies”. The BOHEMIA mark is registered in respect of goods in class 21 being “Glass and glassware, crystal and crystal ware of all kinds not included in other classes including vases, figurines, bowls, wine glasses, goblets, drinking glasses, ornaments, giftware, decorated glass, painted glass; china, porcelain and earthenware”. Except where it is otherwise apparent from the context, the goods for both of the Bohemia marks are referred to below collectively as the relevant goods.

2.4    Are the Bohemia marks inherently adapted to distinguish - Subsection 41(3)?

2.4.1    The relevant law – subsection 41(3)

82    Section 41 of the TM Act was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), which, for the most part, commenced on 15 April 2013. It is common ground that the pre-amendment form applies in this case. At that time, s 41 read as follows:

41 Trade mark not distinguishing applicant’s goods or services

(1)    For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

(2)    An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

(3)    In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)    Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)    If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)    the Registrar is to consider whether, because of the combined effect of the following:

(i)    the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)    the use, or intended use, of the trade mark by the applicant;

(iii)    any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)    if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)    if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

(6)    If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)    if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)    in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:    Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)    the time of production of goods or of the rendering of services.

Note 2:    Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

83    The dates for considering whether or not the ground for removal of the trade mark may be made out pursuant to s 41 is the filing date of each of the registrations, being the relevant dates; Unilever Aust Ltd v Karounos [2001] FCA 1132; 113 FCR 322 at [13] and [55].

84    The central requirement of s 41 is articulated in subsection 41(2). A trade mark must be rejected if it is not capable of distinguishing the applicant’s goods from those of others. Subsections 41(3) – (6) provide a framework for deciding that question; Blount at 56.

85    Subsection 41(3) requires that in deciding whether or not a trade mark is capable of distinguishing the designated goods from the goods of other persons the Court must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods from those of other persons.

86    In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; (2014) 254 CLR 337 (Cantarella) the High Court considered “inherently adapted to distinguish”. The plurality (French CJ, Hayne, Crennan and Kiefel JJ) said (footnotes omitted, emphasis in original):

[26] In considering s 26 of the 1955 Act in Clark Equipment, Kitto J explained that whether a trade mark consisting of a word is "adapted to distinguish" certain goods is to be tested [at 514]:

"by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it." (emphasis added)

…

[28] Cantarella relied on the emphasised passage to support the proposition that the inherent adaptability of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is, the "ordinary signification") of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods, characterised by Cantarella as "the target audience".

87    In Cantarella the Court was concerned with whether or not the marks ORO and CINQUE STELLE were laudatory epithets that were not inherently adapted to distinguish coffee and coffee related products. They are Italian words which when translated into English mean “gold” and “five stars”. The plurality considered the history of subsection 41(3). At [30] it accepted as correct Cantarella’s submission at [28] (quoted above). It is to be noted that the submission was that the relevant meaning of the words is to be considered by anyone ordinarily purchasing, consuming or trading in the relevant goods.

88    Emphasis was placed in the course of submissions in the present proceedings upon the reference to the “ordinary meaning” of a word. BCP submitted that this was to be understood by reference to ordinary consumers only. However, the submission accepted by the plurality in Cantarella demonstrates that the perceptions of traders are also of significance. Indeed, the focus historically of the inquiry as to whether a mark is inherently adapted to distinguish is whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark or some mark nearly resembling it in connection with their goods; Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 at 635 – 636. As the plurality in Cantarella noted at [44], the requirement that a proposed trade mark be examined from the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business, and from the wider point of view of the public, has been applied for at least a century. Where the authorities refer in this context to the importance of the meaning of a word to persons who are “concerned” with them (eg Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd [1946] HCA 15; (1946) CLR 175 at 185 (Dixon J); FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72; (1965) 112 CLR 537 (Faulding) at 557 per Kitto J), or who wish to “describe their goods” (Mark Foy’s at 201 – 202 (Williams J)), they plainly mean other traders who perceive a need or have a legitimate desire to so use the words in relation to their goods.

89    In Faulding, Kitto J said (in a passage endorsed by the plurality in Cantarella at [56]) at 556 – 557:

[A]t least by the year of the initial registration of the appellant's trade mark (1943) the word Barrier had caught on as a word peculiarly apt, according to its ordinary signification, for descriptive use in connexion with skin protective creams, so that any trader in such creams would be very likely indeed, in the ordinary course of business and without any improper motive, to desire to use the word in order to distinguish such creams in general from creams intended for other purposes ... What matters is that at all material times the word has had such a place in the vocabulary of persons concerned with skin protective creams that according to the principle which must be applied under the Trade Marks Acts the appellant cannot be allowed a monopoly of its use in connexion with such creams.

90    Naturally, the desire of traders to use a word may depend on the perception of consumers’ understanding of it. This leads to the result that consideration is to be given to both. In Cantarella the plurality concluded at [59] (emphasis added):

The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the "ordinary signification" of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a "direct reference" to the relevant goods (prima facie not registrable) or makes a "covert and skilful allusion" to the relevant goods (prima facie registrable). When the "other traders" test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods.

91    At [57] the plurality observed that directly descriptive words, like geographical names, are not prima facie suitable for registration because use of them as trade marks will rarely eclipse their ordinary meaning. It said (footnotes omitted):

In Clark Equipment, Kitto J considered for the purposes of registration in Part B the word "Michigan", which had acquired distinctiveness through 20 years of use in respect of the applicant's goods despite the fact that it was a geographical name of a State in America. After approving Lord Parker's test in Du Cros and Hamilton LJ's observation in R J Lea, his Honour explained that directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly because use of them as trade marks will rarely eclipse their "primary" (that is, ordinary) signification. Such a word, his Honour said, "is plainly not inherently, ie in its own nature, adapted to distinguish the applicant's goods". Traders may legitimately want to use such words in connection with their goods because of the reference they are "inherently adapted to make" to those goods. Kitto J's elaboration of the principle, derived from Lord Parker's speech in Du Cros, applies with as much force to directly descriptive words as it does to words which are, according to their ordinary signification, geographical names.

92    The reference to Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 (Clark Equipment) picks up a celebrated passage from the reasoning of Kitto J at pages 514 – 516, to the following effect:

It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur: see per Lord Simonds in the Yorkshire Copper Works Ltd v Registrar of Trade Marks (1954) 71 RPC 150, at p 154. This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as "North Pole" in connexion with bananas: A Bailey & Co Ltd v Clark, Son & Morland Ltd (the Glastonbury Case) (1938) AC 557, at p 562; (1938) 55 RPC 253, at p 257 (see also the Livron Case (1937) 54 RPC 327, at p 339), or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification. Compare the case of a descriptive word: Dunlop Rubber Co's Application (1942) 59 RPC 134. But the probability that some competitor, without impropriety, may want to use the name of a place on his goods must ordinarily increase in proportion to the likelihood that goods of the relevant kind will in fact emanate from that place. A descriptive word is in like case: the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer. This may seem at first blush a paradox, as Lord Simonds and Lord Asquith suggested in the Yorkshire Copper Works Case (1954) 71 RPC 150, at pp 154, 156, but surely not when Lord Parker's exposition of the subject is borne in mind.

The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, ie in its own nature, adapted to distinguish the applicant's goods; there is necessarily great difficulty in proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting registration will not be to deny the word to a person who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make. The leading authorities on the subject include the Yorkshire Copper Works Case (1954) 71 RPC 150 (the judgment of Lord Evershed in that case when it was in the Court of Appeal (1953) 70 RPC 1 contains a valuable discussion of the topic), the Glastonbury Case (1938) AC 557; (1938) 55 RPC 253 and the Liverpool Electric Cable Co Case (1929) 46 RPC 99. These cases show, as the Registrar said in the Dan River Case (1962) RPC 157, at p 160, in a decision which was endorsed by Lloyd-Jacob J, that there is a category of words which are so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration, and that among such words are the names of large and important industrial towns or districts, and also of smaller towns or districts if they are a seat of manufacture of the goods for which registration is sought.

93    Accordingly, in a case such as the present, it is necessary to consider the ordinary signification of the words “Bohemia” and “Bohemia Crystal” in the context of the “target audience”, being traders and consumers of the relevant goods, to determine whether at the relevant dates other traders might legitimately desire to use these words or something similar in connection with their goods, for the ordinary signification which they possess. To this may be added the following observation of Yates J in Apple Inc. v Registrar of Trade Marks [2014] FCA 1304; (2014) FCR 511 (Apple) at [11] which reflects well established principle (emphasis added):

What does it mean to say that a trade mark is inherently adapted to distinguish the goods or services of one person from the goods or services of another? The notion of inherent adaptation is one that concerns the intrinsic qualities of the mark itself, divorced from the effects or likely effects of registration. Where the mark consists solely of words, attention is directed to whether those words are taken from the common stock of language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade.

2.4.2    The ordinary meaning of “Bohemia” and “Bohemia Crystal”

2.4.2.1    The evidence and admissions

94    The parties adduced a significant body of evidence relating to the meaning to be ascribed to the terms “Bohemia” and “Bohemia Crystal”. Set out below is a summary of the evidence and my findings in this regard.

The agreed facts

95    There is no dispute between the parties that there is a region in what is now known as the Czech Republic (or, more recently “Czechia”) that was known as “Bohemia” and that glassware was produced in that region. Nor is there any dispute as to the meaning of “crystal” in the context of glass. Specifically, the parties agreed to the following facts in an Agreed Statement of Facts.

96    First, that “glass” is a term that includes normal glassware and fine quality glassware known as crystal (which contains lead oxide and other materials to enhance strength and malleability) and other fine quality glassware that contains a variety of additional materials, including lead, to enhance brilliance or other features of the glass. The term “crystal” refers to clear, colourless glass, but not only lead crystal. Accordingly, while there may be a tendency to use “crystal” to refer to high quality glassware, and “glass” to refer to normal quality glassware, the terms may be interchanged to refer to any sort of clear glass product.

97    Secondly, glass and crystal products were manufactured for several hundred years in a region known, prior to 1914, as Bohemia. It is now part of the Czech Republic.

98    Thirdly, from about the 16th century the generic geographic descriptive terms “Bohemian Crystal” and “Bohemian Glass” were used by various manufacturers in the region then known as Bohemia to indicate that their products had been manufactured in that region so as to distinguish them from glass coming from other parts of the world.

99    Fourthly, from 1925 until about the start of World War II (in 1939), the terms “Bohemian Crystal” and “Bohemian Glass” were also used to refer to a particular Art Deco style of highly decorative and colourful glassware.

An admission

100    In [10] and [11] of its Defence to the Cross-Claim, BCP states the following “in further answer” to the Statement of Cross-Claim as a whole:

(b) [BCP] says that prior to about 1975 [each of the Bohemia marks] was not to any extent inherently adapted to distinguish the designated goods of the cross-respondent from the goods of other persons;

The defence goes on to say that because of the extent to which BCP used those trade marks, it did as at the relevant dates distinguish the relevant goods as being those of BCP.

The Australian evidence

101    The parties tendered and draw attention to a number of dictionary definitions of the word “Bohemia” and “Bohemian”.

102    The Macquarie Dictionary, 3rd edition, 1997 provides the following:

bohemia … noun a social milieu in which a bohemian atmosphere is prevalent. …

Bohemia … noun a region in the Czech Republic in the western part; in the Middle Ages an independent kingdom, later part of the Austrian Empire (1526 – 1918); …

Bohemian … 1 a person with artistic or intellectual tendencies or pretensions who lives and acts without regard for conventional rules of behaviour…2 a gipsy – adjective 3 relating to or characteristic of bohemians [from BOHEMIA, in medieval times thought of as the original home of the gipsies]

Bohemian Forest …a low forest-covered mountain range on the boundary between the south-western part of the Czech Republic and south-eastern Germany…

103    For the capitalised word “Bohemian” the Macquarie Dictionary, 6th edition, 2013 provides:

Bohemian … 1. a native or inhabitant of Bohemia. 2. The Czech language – adj. 3. relating to Bohemia, its people or their language.

104    For the word “bohemian” the same dictionary provides:

bohemian … 1. a person with artistic or intellectual tendencies or pretensions who lives and acts without regard for conventional rules of behaviour … 2. a Romani person. – adj. 3. relating to or characteristic of bohemians. [from Bohemia, a region in central Europe, now part of the Czech Republic, in medieval times thought of as the original home of the Gypsies]…

105    The Oxford English Dictionary 2nd edition, 2004, provides the following:

Bohemia … 1. A kingdom of central Europe, forming part of the Austrian Empire … 2. Gipsydom … 3. The community of social “Bohemians”, or the district in which they chiefly live . …

Bohemian … 1. A native of Bohemia…2. A gipsy. … 3. A gipsy of society; …

Bohemian glass, a fine kind of glass, originally made in Bohemia, in which potash is the alkali used. …

106    The Australian Oxford Dictionary, 1st edition, 1999, provides:

Bohemia … a region forming the western part of the Czech Republic. Formerly a Slavonic kingdom, it fell under Austrian rule in 1526, and by the Treaty of Versailles in 1919 became a province of the newly formed Czechoslovakia. Prague was the capital of Bohemia from the 14th century.

Bohemian … 1. a native of Bohemia. 2. (also bohemian) a socially unconventional person, esp. an artist or writer. adj 1. of, relating to, or characteristic of Bohemia or its people. 2. socially unconventional. …

107    These definitions (which are largely repeated in the other dictionaries which were tendered) indicate that the word “Bohemia” used as a proper noun means a place or region in the place where the Czech Republic is now to be found. In context, it might alternatively refer to a place from where Bohemians (being people from a social milieu in which a bohemian atmosphere is prevalent or persons with artistic or intellectual tendencies or pretensions who live and act without regard for conventional rules of behaviour) come or a place where a bohemian atmosphere is prevalent.

108    In this context BCP relied heavily on the evidence of Professor Moore. It submits that his evidence demonstrates that “Bohemia” in its ordinary signification describes artists or people living an unconventional lifestyle. Professor Moore has spent much of his career as an academic devoted to studying the culture of bohemia and bohemians in Australia. He says that “Bohemian” is a term used to describe “artists, or people living an unconventional lifestyle, accentuating freedom from middle class norms and the work a day world”, and “Bohemia” is a place from where Bohemians come. He gives evidence that in the early 1800s it was referred to as a conceptual, mythical country and that the origin of “bohemian” is a reference to Romany people or gypsies, whose nomadism, non-conformity and spontaneity inspired young artists in France to use the term. In Australia the term was picked up within literary and artistic circles in the mid-1800s, where the terms had essentially the same meanings. Professor Moore gives evidence that the words have continued in use in Australia, and in 1997 he was responsible for a documentary produced on the ABC called “Bohemian Rhapsody: Rebels of Australian Culture” in which Australians who had been part of various bohemian sub-cultures over many years were interviewed. They used the words “bohemia” or “bohemian” to describe themselves and those sub-cultures.

109    Host relies on the evidence of several witnesses to contend that, in the context in which the Bohemia marks were used during the relevant period, such use is more likely to indicate that the word “Bohemia” is a reference to geographical origins or a type of glassware from Bohemia.

110    Mr Conley is an antique and 20th century furniture dealer. From about 1995 to 1998 he and his wife operated an antique (that is, over 100 years old) and 20th century furniture and small ware business in London and since 1998 he and his wife have operated a similar business in Double Bay, New South Wales. Throughout his career he has regularly attended antique fairs and markets and he has dealt in vintage and modern homewares, including glass and crystal products. Prior to 2001 he sold vintage, antique and modern items of glassware that he considers to be accurately described as “Bohemian glass”. This includes glassware produced since approximately 1857 by the company Moser a.s., based in the area known as Bohemia, whose product is referred to as “Bohemian Crystal”. As at the relevant dates he understood “Bohemia”, when used in relation to glassware, to be a reference to a region in the Czech Republic renowned for the manufacture of glassware. He also understands (and understood) that “Bohemia” is used to refer to the origin of a particular style of glassware, which has certain stylistic features including cut glass, coloured glass, etched glass and/or certain shapes and styles.

111    Mr Conley explains that as a dealer in glassware in London (1995-1998) and since he began his business in Sydney (1998 to date), when he has identified and labelled glassware from Bohemia for sale, he has used the words “Bohemia” or “Bohemian Crystal” or “Bohemian Glass” to describe them. He gives evidence (which was not challenged in cross-examination) that as at the relevant dates the name “Bohemia” in the glass trade conveys a sign of quality due to the reputation of that region for glass-making. He regards the reputation of the region as an important selling point for customers and, where he sells glassware that is from the region of Bohemia, he advertises its provenance to his customers. Mr Conley exhibits documents from various third party sources, including Miller’s Guide (a descriptive guide book of auction valuations and results which contains terminology relevant to the items listed in the book), where the word “Bohemia” or “Bohemian” was used to designate glassware that originated from a geographical region called Bohemia. My examination of the printouts from the guide show a sample of a number of pieces of ornate glassware described in 2001 to be “Bohemian”, which (Mr Conley’s evidence supports) is used to designate the geographical origins of the work in question. Mr Conley also exhibits a selection of printouts from the website catalogues from the auction house Christie’s, which include references to antique or elaborate glassware from Bohemia, or being of “Bohemian” origins.

112    Mr Conley also gives evidence that if he sees the words “Bohemia Crystal” in relation to the relevant products, they convey to him that it is manufactured in the region of Bohemia in the Czech Republic, that it probably has certain stylistic characteristics, that it probably contains lead oxide or a modern substitute and that it is probably quite heavy.

113    Mr Cook gives evidence to similar effect to that of Mr Conley. He is an antique dealer who has been working full time in his family business, Grafton Galleries, since 1986. Mr Cook has been a member of the committee of the New South Wales chapter of Australian Antiques and Art Dealers Association (AAADA), the leading industry body representing Antique and Fine Art dealers in Australia, for over 20 years and has since 2013 been the president of the New South Wales chapter. One of the tasks of AAADA members is to vet descriptions of the wares exhibited at its antiques fairs to ensure that they are accurate.

114    According to Mr Cook, the region of Bohemia in the Czech Republic has been known since at least the 18th century as a producer of glass and that reputation has continued into modern times. He considers that traditional or “classic” glass and crystal from Bohemia has stylistic elements such as ornate craftsmanship, coloured glass, multiple layers and cut glass. However, glassware from Bohemia does not have to have these features. Where Mr Cook ascertains that an item that he is selling is from the Bohemia region, he gives its attribution as “likely to be from Bohemia” (noting that identification of a piece’s origin is not an exact science). He exhibits definitions from books (such as “An Illustrated Dictionary of Glass” (Harold Newman, Thames and Hudson, 1987) and “The Antique Buyer’s Handbook for Australia” (Peter Cook, Reed Books, 1988)) which contain references to “Bohemia” and “Bohemian glass”.

115    Mr Cook gives his opinion that as at the relevant dates “Bohemia”, when used in connection with glass and crystal, refers to a geographical location in the Czech Republic which is well known for manufacturing glass and crystal. When the words “Bohemia Crystal” are used in connection with glass and crystal, they have the same meaning, “crystal” being a reference to a type of glass containing lead. He gives evidence that he has seen many examples of glassware described as “Bohemian” and “from Bohemia” and has done so in relation to products in Grafton Galleries since the mid-1970s.

116    Mr Edwards has experience as a senior curator of the National Gallery of Victoria and a curator and director of the Geelong Art Gallery. He has a specialist interest in glassware and crystal. As at the relevant dates he was aware that “Bohemia” is a region associated with the present Czech Republic that, in his opinion, is celebrated worldwide for its glassware which is made with highly refractive crystal glass that is coloured – most notably in a rich ruby colour – and that is elaborately cut or engraved. He has used that word to describe the region from where such glassware originated in the context of his work as a curator and an author of works about glassware. Mr Edwards refers to a number of works, including his own book “Art of Glass: Glass in the collection of the National Gallery of Victoria”, which was published in 1998, and refers to glass from the Bohemia region.

117    In its submissions, BCP emphasises the highly specialised knowledge of Mr Edwards as being irrelevant to the present inquiry. I accept that his evidence is less useful than that of Mr Cook and Mr Conley in developing an understanding of the ordinary understanding that traders and consumers would have of the meaning of the Bohemia marks. However, it does provide further historical verisimilitude for the matters to which those witnesses refer.

118    Mr Sullivan is, of course, the second respondent and also a trader in modern glassware. He is able to give relevant evidence going to the question of the perception of those in the relevant field, being purchasers and traders dealing in contemporary glassware. He has traded in such goods in Australia as a vendor, importer and distributor since before 2001. His evidence is that as at the relevant dates he was aware of Bohemia as an area within the Czech Republic from where glassware was manufactured. He has attended the Ambiente Trade Fair in Frankfurt since 2002 and has since then been aware of manufacturers of glassware in the Czech Republic who use the word Bohemia in their names and who describe their product as “Bohemia” or “Bohemia Crystal”. I am satisfied that this reflects the knowledge of Mr Sullivan at the time and that it may be representative of knowledge of similar traders in Mr Sullivan’s position. To this end, I have also had regard to the fact that the objective evidence of the list of manufacturers of glassware who present their wares at the Ambiente Fair demonstrates that at least from 2006, many who originated in the Czech Republic used the word “Bohemia” in their trade names. A number of those named were also named by Mr Sullivan. I find that at least some of these exhibitors listed, and probably many, were present at the trade fair before the relevant dates. This is supported by the evidence of the Czech witnesses, to which I refer above. Mr Hesse’s evidence is that he too attended the Ambiente Fair and was (naturally enough) aware of the manufacturers. Indeed, BCP imported goods manufactured by two of them, being Crystalite and Crystal BOHEMIA a.s (also known as Sklarny Bohemia).

119    Mr Sullivan considered Bohemia as a geographical region to be a desirable source of origin for glassware that is and was reputed to be of a high quality.

120    Mr Hesse also gave evidence relevant to this subject. He has been intimately involved in the promotion and sale of glassware from the Czech Republic since before 1980. In this context, I note that Mr Hesse has for a long time had close personal ties to BCP, as an employee for BCP from 1980 and a director of that company from 1990. Bohemia Trading is the sole shareholder of BCP and Mr Hesse is its principal shareholder through shares held by a trust company. In a number of respects I found his evidence to be somewhat coloured by his desire to ensure that BCP succeeded in this litigation. In general I consider that he had an acute understanding of the issues in this case and found it difficult to distance his role as a witness from his position as an instructor and part-owner of the company. In spite of some self-serving statements, the following aspects of his evidence provide strong indications that “Bohemia” was regarded, in its ordinary signification, by Mr Hesse before the relevant dates to refer either to a geographical region in the Czech Republic known for its glassware or to glassware of a “Bohemian” style that is from Bohemia, or both.

121    The shares in BCP were until 1999 owned by Skloexport, a state-owned company within the CSSR. The nominal shareholders of Skloexport were, according to Mr Hesse, state-owned enterprises engaged in the production of glassware in the CSSR such as factories, manufacturers and mould suppliers. Skloexport’s role was to export glassware from the CSSR. BCP was set up as a vehicle to distribute glassware from the Czech Republic, taking over that role from an individual who had been Skloexport’s selling agent until then.

122    In 1962 and 1978 the 034 and 701 marks were (respectively) registered by Skloexport in classes of goods described as being glassware of all kinds “being products of Bohemia, Czechoslovakia” or “produced in the Bohemian region of Czechoslovakia”. A similar description was applied to the class of goods for the 332 mark when it was registered in 1980. These limitations indicate, insofar as Skloexport was concerned (and, I infer, BCP), that Bohemia was a region within the former Czechoslovakia and that the goods sold under those trade marks were produced in that region.

123    In his oral evidence, Mr Hesse sought at times to deny that he was aware of a region within the Czech Republic called Bohemia, either in the present day or before the relevant dates. He sought to draw a distinction between political boundaries and regions known less formally, and appeared to adhere to a view that only the former would be relevant when considering what the word “Bohemia” might mean to consumers or traders. That resistance found expression in a number of answers given in cross-examination where he protested that he did not know where the region of Bohemia now is to be found and discounting the relevance of historical usages of the expression, even uses that he acknowledged were as recent as World War II (the “Protectorate of Bohemia”). However, ultimately Mr Hesse acknowledged that he was aware of a geographical region known as Bohemia that is to be found in the Czech Republic.

124    It is of significance that on 26 June 1992 Mr Hesse signed the Registered User Agreement (summarised in section 1.5 above) on behalf of BCP, whereby BCP was made the sole registered user in Australia in respect of the Skloexport trade marks. The schedule to the agreement records, in respect of each of the 034, 701 and 332 marks, that the goods in respect of which they are registered are goods produced in “Bohemia, Czechoslovakia” or the “Bohemian region of Czechoslovakia”. The Registered User Agreement was signed by Mr Hesse at a time when he was not attuned to the issues in the present controversy, and I consider that the statements of geographical signification in that document more accurately reflect the view that he held then and held at the relevant dates, namely that Bohemia was a recognised geographical region from where glassware of repute was produced. I further find that the aims of BCP, under licence from Skloexport, included the promotion of the region of Bohemia as a source of the quality glassware that it sold.

125    In this regard, the terms of the Registered User Agreement made it an obligation on the part of BCP as sole Australian distributor to promote that region as the source of its glassware, by reference to the marks to which the agreement refers. It is apparent that BCP sought to fulfil its obligation by the use of those trade marks in relation to products from that source. When Mr Hesse was asked questions about the application of the following stickers to products by BCP since 1981, he gave the evidence set out below (emphasis added):

And in these examples the use of Bohemia are descriptive, in the sense that they are telling the consumer of the quality and excellence of the product coming from the Czech Republic, aren’t they? ---Yes, that’s right, that’s the pearl necklace one that you referred to previously.

That’s right. But in these examples, the Bohemia describes the quality and the high – high quality of the product that comes from the Bohemia region in the Czech Republic, doesn’t it? --- Yes. It does.

And that’s – the – what the applicant did, as a faithful distributor of these products for all the years up until 1999, was to do that: was to educate the Australian consumers that they were selling high-quality lead crystal of fine quality, evoking the tradition of the Bohemia as a source of glass and crystal manufacture? – Quality. Yes

And Bohemia as reinforcing that quality by – ? --- Correct

By reference to its origin? --- The Czech Republic. Yes.

And the – until 1999, it was all about the – reinforcing a connection with the motherland, the Czech Republic, and still is, really, isn’t it? --- Yes. It is.

And that’s – that connection is reinforced by the presence of the word Bohemia? --- It’s by the presence of many things, including commitment and long term regard.

Including the word Bohemia? --- Including the word Bohemia.

126    In 2014 Crystalite applied to register a trade mark in Australia (via the Madrid Protocol based on an application made in the Czech Republic in 2010) in relation to inter alia glass products in class 21 and glass processing services in class 40 for the words rendered in the following logo form (2010 Crystalite mark):

127    Also in 2014 Crystalite applied to register a trade mark in Australia (via the Madrid Protocol based on an application made in the Czech Republic in 2014) in relation to the same glass processing services in class 40 for the words rendered in the following logo form (2014 Crystalite mark):

128    I collectively refer to the 2010 Crystalite mark and the 2014 Crystalite mark as the Crystalite marks. BCP and Bohemia Trading filed a Notice of Opposition to the registration of the Crystalite marks and on 4 April 2016 lodged a Statement of Grounds and Particulars which included the following in relation to grounds of opposition filed under s 41 (emphasis added):

[s 41] … For example, Trade Mark Application No 1625447 consists of the words CRYSTALITE BOHEMIA CZECH REPUBLIC. These verbal elements are descriptive of goods having a crystal or crystal-like composition or appearance from the Bohemia region of the Czech Republic, or services relating to crystal and glassware products in that region.

… The emphasis of the visual representation is the geographical indication of BOHEMIA.

129    A s 43 objection was also raised. In the Statement of Grounds and Particulars it states “Trade Mark Application No. 1648929 contains contradictory geographical indications, namely BOHEMIA and CZECH REPUBLIC referring to the Czech Republic and CERVA referring to a place in Italy. The use of this mark would be likely to deceive or cause confusion as to the geographical origin of the goods or services associated with the mark”.

130    Mr Hesse freely acknowledged that it is he who gives instructions to solicitors on behalf of BCP, that he signs off on communications with the trade mark office and that he instructed BCP’s solicitors to oppose the marks on these grounds. I find that the paragraphs just quoted accurately reflect the view held by Mr Hesse as to the meaning he attributes to the word “Bohemia” in relation to the relevant goods as at 2016, when that meaning is divorced from considerations of the current controversy and when that word is not considered in the context of the effects of any registration by BCP. To the extent that he sought, after being confronted with this material, to distance himself from its content, I reject that evidence.

131    Mr Hesse also gave evidence that in his view the words “Bohemian glass” refer to red-coloured glass that was known for its use of cutting, painting and etching, that is, as a description of a style of glassware. After being shown images from BCP’s current website he gave the following evidence:

When you say things like “crafted in the factories of the Czech Republic” and “still decorated using traditional techniques”, that’s intended to evoke the Bohemian glass traditional manufacture, isn’t it? –Yes, it is.

And that has been known for centuries? --- A lot of those technologies…available centuries.

132    BCP also adduced evidence from Mr Francis on this issue. The evidence of Mr Francis is that since 2000 he has been employed by Peter’s of Kensington as a retail buyer based in a shop in Kensington, Sydney. In a letter of instruction he was informed that the solicitors for BCP acted in relation to the Bohemia marks and asked to indicate what he understands “…the terms ‘Bohemia’ and ‘Bohemia Crystal’ to mean to buyers of glass and crystal ware”. He is responsible for buying merchandise in the categories of tabletop goods (which includes glassware), as well as cutlery and travel goods, which includes buying across tens of thousands of product lines. Mr Francis has attended the Ambiente Trade Fair in Frankfurt annually since 2002 and in the course of cross-examination recalled seeing several manufacturers at that fair selling glassware under or by reference to names that include the word “Bohemia”. His observation in that context is that the “brand name” Bohemia stands out when walking past the trade stands at the fair. His reference to “brand name” was a reference to the word “Bohemia” as it appeared in the names of several different manufacturers, none of which was BCP.

133    In his written evidence, Mr Francis states that he is familiar “with the brands ‘Bohemia’ and ‘Bohemia Crystal’” (meaning, it seems, the Bohemia marks) and that he has seen them since about 1991, when he worked for Royal Doulton in a sales role. Peter’s of Kensington does not stock those brands at present, although he recalls that it did stock a range of plain vases (he purchased about 12 to 18 pieces of each item) from around 2007 – 2008. Mr Francis states that he spends a number of hours each day on the shop floor interacting with customers and that about once a month since he started working at the store he has had a customer asking “do you stock Bohemia products?” or “do you stock Bohemia Crystal products?”. He does not recall a customer asking for products from a place or region called Bohemia. He does not recall ever seeing glassware that was identified on the product or packaging as having been made “in Bohemia” or as being from “Bohemia”. I return below to consider the relevance of this evidence.

134    Host also adduced evidence of the content of various travel publications dated from 1995 to 2003, available in Australia, that indicate that Australian visitors to the Czech Republic can purchase “Bohemian Crystal” and “Bohemian Glassware” in the Czech Republic.

The evidence of the Czech witnesses

135    Host adduced evidence of the current and historical uses made by several manufacturers based in the Czech Republic of the word “Bohemia” in the context of glassware. This evidence was primarily said to be relevant to the question of inherent capacity to distinguish, and to signify that traders, with no improper motive, would desire to use “Bohemia” and “Bohemia Crystal” with respect to their goods for the sake of the signification which these words possess. I accept that evidence of this type can be relevant to whether the words in issue are fanciful or arbitrary terms, like NORTH POLE for bananas, or truly descriptive. I also accept that it may assist the Court in determining whether honest traders trading or contemplating trading in Australia might wish to use those words to describe particular products, and in determining the extent of the common usage of “Bohemia”; see Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297 (Yarra Valley) at [200].

136    Mr Cerva gives evidence that since 2009 his company has made glassware and traded in the Czech Republic under the name “Crystalite Bohemia s.r.o”, a name that he chose in order to convey that the glassware his company manufactures comes from the region known as Bohemia. His company operates manufacturing facilities in the Czech Republic, employing over 950 people. Glassware produced from those facilities accounts for an annual turnover of about 37.5 million euros. His company exports to over 80 countries around the world but no longer Australia, although it would like to do so. In his experience the word “Bohemia” and variations like “Bohemian” are used by manufacturers from all parts of the Czech Republic to describe where their glassware is from, including in popular tourist destinations like Prague. His evidence is that the Bohemia region is all of the Czech Republic, and the word Bohemia is an older form of word used to describe that area, like Galicia or Hispania are older forms of words used to describe France or Spain. Although the political boundaries on a map in evidence identify regions as “South Bohemian Region” and “Central Bohemian Region”, these boundaries do not denote the broader area known from ancient times as “Bohemia”.

137    Mr Kidric gives evidence that from 1993 the business now operated as Bohemia Jihlava was operated by the company Jihlavske Sklarny Bohemia a.s. At some time before 2002, Skloexport, which was the sole exporter for the business (and other glass-making businesses in the Czech Republic), ceased to operate, and therefore ceased its role as Bohemia Jihlava’s exporter. In about June 2002 that business went into liquidation and was taken over by Burson Properties a.s., before it began its current form in 2009.

138    Bohemia Jihlava produces decorated glass objects from glass purchased from other manufacturers. The facilities of the company are not all located within one of the areas identified in a map as Bohemia (the political status of the boundaries and regions in the map upon which the Czech witnesses were cross-examined was not established). Nevertheless, his evidence is that he considered it appropriate to call the glass products sold by his company by reference to the words “Bohemia Crystal” or “Bohemian Crystal” as it identifies where the crystal is made. I accept that Mr Kidric considered this an apt description, that he considers the description to connote products from anywhere in the Czech Republic and that the products sold by reference to that region denote that it is of a good quality. Mr Kidric states that because it is a selling feature and informs his customers of the origin and quality of the goods, it is important to him that he is able to use the words “Bohemia Crystal” and “Bohemia” in relation to Bohemia Jihlava’s products.

139    Further, Mr Kidric exhibits a copy of a document issued by the world intellectual property organisation (WIPO) that states that “Bohemia Glass” and “Bohemia Crystal” are registered as appellations of origin pursuant to the Lisbon Agreement for the Protection of Appellations of Origin and their international Registration (Lisbon Agreement) in relation to areas of production known as “Bohemia, Moravia”.

140    Mr Kidric gives evidence that on 5 May 1998 and 4 September 2002 Bohemia Trading (a company controlled by Mr Hesse and the sole shareholder of BCP) filed trade mark applications in Australia (subsequently granted) for two composite marks used by Bohemia Jihlava in the Czech Republic for glassware. Mr Kidric states that in about 2011 BCP and Bohemia Trading commenced proceedings against one of Bohemia Jihlava’s customers, Mikassa Homewares Chatswood, alleging infringement of the Bohemia marks and the Bohemia Jihlava marks as a result of importing Bohemia Jihlava packaged and branded products into Australia.

141     Mr Barta has been in the Czech glass business since 1995. He gave evidence about the extensive use of the word “Bohemia” by companies in the Czech Republic to designate the place of origin of goods that include glassware. He identified over 20 glass-producing entities located in the region that he considers to be Bohemia that, before October 2001, used the word “Bohemia” in their trading name or registered trade marks, and over 60 which, before October 2001, had trade mark applications or registrations for marks including that word.

2.4.2.2    Analysis of the evidence

142    The following conclusions may be drawn from the entirety of the evidence, including the findings that I have summarised above.

143    First, dictionary definitions indicate that there are two potential meanings of “Bohemia”, one is a geographical location in the modern Czech Republic, another is a place where persons known as “Bohemians” who adopt an unconventional lifestyle live or where they come from. The upshot of Professor Moore’s evidence is that it demonstrates that one meaning for the word “Bohemia” may be a place from where people who adopt a “Bohemian” lifestyle come. That accords with one of the dictionary definitions identified. However, I consider that Professor Moore’s evidence is largely beside the point. The question relevant to the current inquiry is what is the ordinary signification of the relevant words to the target audience in the context of usage in relation to the relevant goods. That usage is to be considered leaving aside the “effects of registration” of the marks concerned (Apple at [11]), but having regard to the likely meaning. In this regard, I do not think it at all likely that persons who consider the word “Bohemia” in the context of glassware will be caused to think of the mythical place of origin for those persons who lead an unconventional lifestyle or the place where such persons live. Notably, Mr Hesse also shared that view.

144    Secondly, the evidence of Mr Cook, Mr Conley and Mr Edwards indicates that goods within the relevant class may be and were, before the relevant dates, labelled as originating from a place or region called Bohemia. It was desirable to do so. Moreover, Bohemian glass or crystal to them also indicated a particular sort of decorative glassware. In that context the name also derives from its geographical origin, being a style from that region.

145    BCP contends that the evidence of Mr Cook and Mr Conley should be regarded as irrelevant to the question of the ordinary understanding of consumers, because it comes from two traders who do not represent the “ordinary consumer”. However, I disagree. The evidence of their understanding indicates how traders in glassware, who form part of the relevant field, understood and used the terms. Their evidence is that they habitually label products from Bohemia with that term, so as to inform their customers as to its provenance. I find that before the relevant dates they would have used either the word “Bohemian” or “Bohemia” to designate the origins of a product from that region.

146    In the context of the present inquiry, it is irrelevant whether the word is used as a noun or an adjective, the geographical meaning remains. Furthermore, given that this is a labelling practice used for the purposes of sales, I find that not only antique traders (with their undoubtedly specialised knowledge) but also the customers of those traders are exposed to such uses in relation to glassware from that region or with the characteristics described above. Mr Conley’s evidence also shows that he sold modern goods described as “Bohemian glass”, indicating that it is not confined to the antiques market. Furthermore, the evidence of travel publications, which refer extensively to “Bohemia” in the context of glassware, confirms that before the relevant dates Australians who travel to the Czech Republic are likely to be familiar with that usage.

147    Thirdly, the evidence of Mr Sullivan as to his knowledge of the meaning of “Bohemia” supports the view that it is understood in the same manner more generally by traders in glassware to refer to a geographic location. In 2002 he noted the stalls at the Ambiente fair were operated by companies that use the word “Bohemia” in their titles. Mr Hesse’s evidence supports this, as does that of Mr Francis, who also recalled seeing a number of manufacturers’ stalls at the Ambiente fair, where they displayed the word “Bohemia” in association with their goods.

148    Fourthly, the evidence of Mr Hesse also indicates that he, as a trader, was familiar at the relevant dates with the geographical usage of the term. In cross-examination he eschewed any proposition that the word would be understood as descriptive of persons who adopt an unconventional lifestyle and accepted that at least some uses by BCP of the word Bohemia reflect a description of the geographical origin of the goods. Indeed, as the above summary of his evidence indicates, in my view he was acutely aware of the geographical signification of the word and had in 1992 signed a Registered User Agreement committing BCP to use the 034, 701 and 332 marks in a manner that ensured that goods sold in connection with those marks only originated from the Bohemia region.

149    Mr Hesse’s evidence also supports the evidence given that the terms “Bohemian glass” or “Bohemian Crystal” are used to refer to a type of decorative crystal known to have originated in the Czech Republic or Czechoslovakia.

150    Fifthly, Messrs Cerva, Kidric and Barta provide further evidence, which I accept, that as at the relevant dates (and well before) manufacturers of glassware based in the Czech Republic used, and desired to continue to use, the word “Bohemia” in conjunction with glassware to designate its geographical origin. That simply reflects a continuity of use of a type that the parties agree has been in place for hundreds of years. It is plain that there is a desire on the part of such traders to use “Bohemia” in relation to their goods in Australia. I find that before the relevant dates such a desire would have existed.

151    Further, I have referred above to the admission made in BCP’s Defence to the Cross-Claim. In closing submissions Host drew attention to the admission. BCP did not seek to withdraw or amend that admission in closing submissions. Rather, BCP contended that this pleading amounts only to an admission that, at least as at the date of incorporation of BCP, the marks were not inherently adapted to distinguish but that, by the relevant dates, they were. However, inherent adaptability to distinguish does not rely on distinctiveness by use. To the contrary, the notion of inherent adaptation is one that concerns the intrinsic qualities of the words themselves and the meaning accorded to them as part of the common stock of language. The admission alone may be sufficient to dispose of the question under subsection 41(3). However, I have set out more fully the factual basis upon which it may be found that the admission was properly made.

2.4.3    Conclusions in relation to subsection 41(3)

152    The decision whether a mark is inherently adapted to distinguish “requires a practical evaluative judgment about the effects of the relevant mark in the real world”; Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494 at [47].

153    I find that the relevant “target audience” for both Bohemia marks includes consumers as well as traders such as commercial vendors, distributors and buyers of glassware, both modern and antique. That will include traders such as Mr Hesse and Mr Sullivan, who deal in contemporary glassware and traders such as Mr Cook and Mr Conley, who deal in antique and 20th century glassware (noting that trade mark use, for the purposes of the TM Act, includes second-hand use; subsection 7(4)).

154    In my evaluation, the word “Bohemia” when used in relation to the relevant goods at either of the relevant dates would ordinarily signify to traders, and also to many consumers, a region from where glassware is manufactured. I reach the same conclusion in relation to the words “Bohemia Crystal”. For some, the reference to “Bohemia Crystal” is likely also to denote a particular style of glassware that originates from Bohemia.

155    I am unable to accept BCP’s submission that the ordinary signification to members of the wider public or “consumers” of the relevant goods is the only class of persons that is relevant to the present inquiry. As set out above, Cantarella makes clear that the question posed includes the ordinary signification to consumers or traders. The fact that traders are likely to want to use the word to describe the origin of the goods to their customers will have significant weight, because it is they who will use the word on or in relation to their goods. BCP’s submission is similar to one that was rejected by the Full Court in Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 (Primary Health) which Katzmann J (Greenwood J agreeing at [2]) rejected in the following terms at [85]):

The applicant further submitted that evidence to the effect that the expression was not widely understood by the public meant that it had no ordinary meaning. This submission must also be rejected. It is a non sequitur. That an expression may not be widely understood does not mean that it has no ordinary meaning. In Eutectic Corporation v The Registrar of Trade Marks (1980) 32 ALR 211; 1A IPR 550, cited with apparent approval by Gageler J in Cantarella at [91], Rogers J accepted that the word “eutectic” was not in ordinary use by members of the community, that most users of the applicant’s goods did not know or had forgotten its meaning, and there was no evidence of its use by other traders. Nevertheless, he found that it was an English word and a basic term in metallurgy, meaning melting at low temperature or melting readily. He concluded at 220 that as long as “there remains a need and use for that word by other traders in an honest description of their goods and the word retains its primary and technical meaning, it should remain free in the public domain”, citing Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514. Accordingly, he dismissed an appeal from a decision refusing to register the word as a trade mark in respect of certain goods for welding, soldering and brazing.

156    Once it is established that the meaning of the relevant words will ordinarily be understood to be a geographical reference, the prospect that the trade mark is nevertheless considered to be inherently adapted to distinguish is low, as Bennett J observed in Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428; (2009) 177 FCR 300 at [66].

157    BCP submits that even if the ordinary signification of the words is directly descriptive that is not the end of the matter. An inquiry should be made into whether traders might legitimately need to use the words in respect of their goods. It submits that in the present case there is no such need, because other traders can use modern words such as “Czech Crystal” or the like to describe the origin of their goods. In this regard BCP submits that the evidence adduced from the Czech witnesses Mr Cerva, Mr Barta and Mr Kidric is irrelevant to the inquiry. BCP submits that the businesses of Mr Barta, Mr Cerva and Mr Kidric did not commence manufacturing until well after the relevant dates, they were not located in a geopolitical region now known as Bohemia and, in any event, neither Mr Cerva nor Mr Kidric gave evidence that they needed to use the word “Bohemia”.

158    However, as indicated above, the question is not one of “need” but whether traders are likely, with no improper motive, to desire to use words for the ordinary signification which they possess. I find that they would (both before the relevant dates and now).

159    BCP points to the evidence of Mr Francis concerning statements made to him in his store by customers seeking goods. However, I do not consider that Mr Francis’ evidence was sufficient to displace the weight of the evidence of the other witnesses. His evidence did not address the meaning of the relevant words, setting to one side the effects or likely effects of registration. It amounted to a hearsay account of evidence of unnamed third parties recalled from many years ago. Whilst I have no doubt that Mr Francis gave his evidence honestly, I do not accept that his recollection in 2016 of casual conversations that took place before 2004 may be regarded as reliable evidence of what those persons believed or understood, or indeed that these conversations took place before the relevant dates.

160    The evidence summarised above, taken as a whole, also demonstrates that persons concerned in the trade of the relevant goods are likely, with no improper motive, to desire to use the word “Bohemia” for the ordinary signification that it possesses, namely as the name of a region in the Czech Republic. In this regard, it is very clear from the evidence of Messrs Cerva, Kidric, Barta, Sullivan and Hesse, and the admitted facts, that Bohemia has been a region from where glassware has been produced for hundreds of years. The name “Bohemia” is a selling point for goods that come from that region, both in Australia and in the Czech Republic, and traders go out of their way to promote the fact that their glassware is from Bohemia. This may be seen, inter alia, from the evidence of Mr Conley, the Miller’s Guide, the Christie’s catalogues and also from the evidence of BCP’s own use identified in section 2.6.2 below.

161    It is not to the point that “Bohemia” is not a contemporary name for a particular region. The history of the sovereign state now known as the Czech Republic demonstrates that over the years it has been known by different names, such as being part of Czechoslovakia. In 2017, a further name, “Czechia”, was adopted as another formal name by which the Czech Republic may be known. In the face of such changes, it is hardly surprising that a name of historical usage has been consistently adopted over the years to denote the region from where the glassware originates. The facts of the present case have an affinity with those in Yarra Valley, where Middleton J found that PERSIAN FETTA was a descriptive term that was not inherently adapted to distinguish despite the fact that Persia is an antiquated usage for the modern Iran. In that case, his Honour also noted (at [211]) that names such as “Peking” and “Ceylon”, whilst historical, have as their main signification the name of a place. The same is applicable in the present case in the context of the relevant goods.

162    The words “Bohemia Crystal” taken together might not be considered to be entirely grammatically correct insofar as their geographical usage is concerned. An adjective to describe goods from Bohemia may be “Bohemian”. However, I do not consider this difference to be material to a finding (which I make) that the words “Bohemia Crystal” in this context are also likely, as at the relevant date and in relation to the class of goods for which this mark is registered, to be understood as geographically descriptive. Once the ordinary signification of Bohemia is recognised, there is little doubt that “Bohemia Crystal” would be understood to mean crystal from Bohemia. The word “crystal” in conjunction with “Bohemia” does not serve to diminish the geographic connotation of the word. To the contrary, it tends to emphasise the descriptive nature of the word, being crystal from Bohemia, crystal being a product known to be produced in that region.

163    Furthermore, as the evidence demonstrates, the words “Bohemian Crystal” are also descriptive of a style of crystal. Plainly this is a similar usage to “Bohemia Crystal”, and traders with no improper motive would desire to use it in this way.

164    Accordingly, I find that traders were, as at the relevant dates, likely, without improper motive, to desire to use “Bohemia” and “Bohemia Crystal” in relation to the relevant goods and for the signification that they ordinarily possess.

165    I am fortified in my overall conclusions by the fact that the Lisbon Agreement identifies the terms “Bohemia Glass” and “Bohemia Crystal” as appellations of origin for Bohemia, Moravia. Australia is not a signatory to this Treaty and it is not legally binding. But it is at least indicative that the signatories regard the terms to be geographically descriptive and that Bohemia is a term also understood outside of Australia to be indicative of origin in relation to glass and crystal ware.

166    Accordingly I consider that the Bohemia marks were not at the relevant dates inherently adapted to distinguish the goods in respect of which it is registered within subsection 41(3) of the TM Act.

2.5    Are the Bohemia marks to any extent adapted to distinguish - subsection 41(5)?

167    If a trade mark is to some extent inherently adapted to distinguish the designated goods from the goods of other persons but the Court is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the goods, then it is to consider the factors set out in subsection 41(5)(a) of the TM Act.

168    For the reasons set out in section 2.4.3 above it is also my view that neither of the Bohemia marks is to any extent inherently adapted to distinguish. In the case of the BOHEMIA mark, it is the name of a region from where glassware has been produced for hundreds of years. There is no aspect of it which is adapted to distinguish. In relation to the BOHEMIA CRYSTAL mark the word “crystal” is apt to describe the produce of the region and the combination of these words are not to any extent inherently adapted to distinguish.

169    Given this finding it is unnecessary to consider evidence going to use, or the other requirements of subsection 41(5). However, if, contrary to the view that I have expressed, the BOHEMIA CRYSTAL mark were to some extent inherently adapted to distinguish, then subsection 41(5)(a) requires attention to the combined effect of the extent to which the trade mark is inherently adapted to distinguish the designated goods, the use or intended use of the trade mark by the applicant and any other circumstances to determine whether the trade mark does or will distinguish. These factors must demonstrate that the trade mark had the capacity to distinguish as at the relevant dates; Primary Health at [224].

170    BCP relied in its written submissions on what it characterised as the evidence of extensive and long-standing use of the marks before the relevant dates. It also drew attention to the use that it made of the words “Bohemia” and “Bohemia Crystal” within the existing Skloexport marks and to the evidence of Mr Francis concerning his understanding of the perceptions of certain customers in his store.

171    I have reviewed the evidence concerning the asserted use of the Bohemia marks before the relevant dates in the context of subsection 41(6) in section 2.6 below, including the use within the Skloexport marks and the evidence of Mr Francis. Having regard to those materials, were I to have concluded that the BOHEMIA CRYSTAL mark was to some extent inherently adapted to distinguish, I would nonetheless have not been satisfied that it was capable of distinguishing BCP’s goods within subsection 41(5).

2.6    Is there factual distinctiveness – subsection 41(6)?

2.6.1    The relevant law - subsection 41(6)

172    There is no dispute that the onus lies on Host to establish a relevant ground of invalidity; Yarra Valley at [39] – [41]; Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239 at [211] (Beach J); Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823 at [238] (Katzmann J). It may be seen that subsection 41(6) provides an internal onus whereby it states that if the trade mark is found not to be to any extent inherently adapted to distinguish, the applicant must establish that because of the extent of use of the mark, it does distinguish. In the context of a revocation action this suggests that the onus might well lie upon the trade mark owner once it is found that subsection 41(6) applies. That onus would make sense, given that the owner of a trade mark has conferred upon it valuable monopoly rights that it ought to be in a position to defend. Furthermore, it is likely to be the only party in a position to adduce evidence of pre-filing date use. However, in the present case no practical issue of the onus of proof arises, as all of the evidence relevant to subsection 41(6) is before the Court and is considered in its entirety; as was the case in Yarra Valley at [220]. I have reviewed the evidence and reached a view that the position is clear.

173    Subsection 41(6) calls attention to the extent to which BCP has used the trade mark. The authorities emphasise that this requires analysis as to whether the use is “as a trade mark” or non-trade mark use. In Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132; (2006) 154 FCR 97 (Woolworths) the Full Court said at [79]:

Before examining the evidence, it is important to appreciate that it is the use of the trade mark, as a trade mark, before the application date that determines what can be registered. The trade mark that is the subject of the application must conform with the trade mark that was used before the relevant filing date, because it is the extent to which that prior use has distinguished the designated goods or services as being those of the applicant which must be assessed. It is only where the extent of that prior use has had the consequence that the trade mark does distinguish the applicant’s designated goods or services from those of other persons that the trade mark is “taken to be capable” of so distinguishing the applicant’s goods or services: s 41(6)(a). If the prior use has not had that consequence, the trade mark is taken not to be capable of distinguishing the applicant’s goods or services and the application for registration must be rejected: s 41(2) and (6)(b). Under s 41(6), there is no wider inquiry into the capacity or adaptability of the mark to distinguish the applicant’s goods or services.

174    The principles relevant to ascertaining “use as a trade mark” are set out more fully in section 5.2.2 below.

175    In Woolworths at [117] the Full Court also said that to establish distinctiveness through use, the proprietor must have done something in its use to identify the sign as being a trade mark; the use of the sign, without more, does not necessarily create the perception that the products originate from a particular trade source. As the Court said:

Evidence of promotion and use does not, without more, demonstrate distinctiveness: see Blount v Registrar of Trade Marks at 61G, citing with approval Jacobs J in British Sugar plc v James Robertson & Sons Ltd at 286 and 302; and Koninklijbe Philips Electronics NV v Remington Products Australia Pty Ltd at 101 [13]. It is necessary for BP to establish that the association is referable to the use of the mark as a trade mark. The learned authors of Kerly’s Law of Trade Marks and Trade Names (14th ed) at [8-025] state, albeit in the European context, that to establish distinctiveness through use the proprietor must have done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source: cf Unilever plc’s Trade Mark Applications [2003] RPC 35 at [31].

176    In this context, the correlation between use and distinctiveness requires careful consideration. In British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 302 Justice Jacobs explained:

There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example; no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods.

177    See also Yarra Valley at [232]-[233].

2.6.2    Review of the evidence of distinctiveness

178    BCP relies primarily upon the detailed evidence of Mr Hesse. As in many such cases, it is necessary to pay close attention to particular aspects of the evidence. Amongst the key issues will be the manner in which the trade marks of BCP are used, whether they are used alone or in conjunction with other marks, whether the use is as a trade mark or descriptive and when that use took place. In several respects the evidence of Mr Hesse is wanting when attention is paid to these matters. I mean no criticism of Mr Hesse in that respect. There are obvious difficulties in producing materials that date back many years. Nevertheless, scrutiny of the evidence reveals some significant deficiencies.

179    The following general observations may be made.

180    First, in his written evidence Mr Hesse referred at various points compendiously to the use of the “Bohemia marks”, by which he meant one or all of the Skloexport marks. Early in his written evidence he erroneously stated that the trade marks “BOHEMIA CRYSTAL” and “BOHEMIA GLASS” were formerly owned by Skloexport. In cross-examination it was quickly apparent that by this he meant the Skloexport marks, not the Bohemia marks under consideration. The ambiguity inherent in these comments undermined the weight that can be put on general assertions in his written evidence as to use of the Bohemia marks.

181    Secondly, to address a point made in BCP’s submissions, the use of one or other of the Skloexport marks, and in particular the 701 mark (which the evidence reveals was the mark most ubiquitously applied and used by BCP) does not assist BCP in the present context. Although most of those trade marks include the word “Bohemia” in them (it will be recalled that the 310 mark is a device mark only and that the balance of the Skloexport marks are composite trade marks which include the word “Bohemia” as one element) the question of distinctiveness in fact is not satisfied by reference to other marks, particularly composite marks. The question is not whether component parts are adapted to distinguish an owner’s goods, but whether the mark in its totality does so. I return to this point in section 2.6.2.1 below.

2.6.2.1    Financial statements

182    Mr Hesse exhibits extracts from the financial statements for BCP from 1983 to 2016. These BCP relies upon to demonstrate longstanding and high levels of use of its trade marks before the relevant dates. In its submissions it draws particular attention to the advertising spend to reinforce its submissions as to trade mark use.

183    I have reviewed the confidential financial records in evidence. They reveal that significant sales were achieved before the relevant dates and that the yearly advertising spend varied markedly from year to year in the period from 1999 to 2016, but had steadily decreased in the 5 years before 2016.

184    Taken alone, these figures are not particularly helpful. The evidence provides no correlation between income from sales and particular products sold or, more importantly, the trade marks applied to such products. Nor do the global figures concerning the amount spent on advertising identify the particular advertisements or, more importantly, the Bohemia marks used in the advertisements in relation to products. It is to be noted that after 1992 and before 1999 BCP was bound by the Registered User Agreement, which entitled BCP to use each of the Skloexport marks. Accordingly, BCP was obliged until 1999 to use one or other of those trade marks on or in relation to goods that it distributed but not either of the Bohemia marks. Indeed, in cross-examination Mr Hesse agreed that all of BCPs print advertising in the period before 1999 adduced into evidence featured the 701 mark, which is a composite mark as depicted in section 1.5 above, and that BCP’s advertising before 1999 which was adduced into evidence featured that mark “almost invariably”, unless the size of the promotional material prohibited it. Furthermore, Mr Hesse confirmed that the sales and advertising figures were not specific to any particular trade mark use and may have related to use of any of BCP’s trade marks, whether alone or in combination.

185    Three matters emerge from these observations. First, that prior to 1999 none of the advertising materials of BCP appeared to use the Bohemia marks by themselves. This renders it difficult to reach a conclusion that the Bohemia marks were used as trade marks before 1999. Secondly, a crucial period for consideration, in light of these points, is the period between 1999 and 2001 (or May 2003 in the case of the BOHEMIA mark) when there is a prospect that the words “Bohemia” and “Bohemia Crystal” may have been used in a trade mark sense and without the additional use of one of the other marks owned by Skloexport. Thirdly, in the context of these points, global sales and advertising figures such as those supplied in the financial statements are, by themselves, likely to be of little assistance.

2.6.2.2    Packaging uses

186    Mr Hesse in his written evidence states that the packaging of all Bohemia branded products sold by BCP in Australia has “since 1981” borne one or both of the Bohemia marks. Later, he states that at pages 1 to 55 of his exhibit PH 4 are “examples of packaging for a small range” of BCPs glassware, which consist of photographs of limited parts of packaging said to have been used. Nowhere does he provide evidence of the dates when the packaging exhibited was first used, or the quantities used. Some packaging exhibited in pages 1 – 55 does not disclose the use of any BCP trade marks (including the Bohemia marks and the 701 mark) at all.

187    Mr Hesse accepted in cross-examination that at least until 1999 all of the packaging utilised by BCP exhibited the distinctive logo or device mark, being the 701 mark.

188    The absence of an accurate means by which to date the various packaging types used is problematic. Some of the packaging within the exhibit was obviously not packaging used before either of the relevant dates. In this respect, within this part of his exhibit is an image of packaging of crystal wine glasses bearing a composite trade mark of a crown atop the words ”Bohemia Royal Crystal”. In cross-examination Mr Hesse explained that some products were imported by BCP bearing other traders’ trade marks in the period from 2009-2011. He explained that Bohemia Royal Crystal is a company that buys blanks from Bohemia Crystalex and puts its own decorations on them and then applies its own trade mark to their products. BCP imported these products to sell to the antique market. Accordingly, not only were these particular uses identified not before the relevant dates, they were also uses of “Bohemia” to denote a different trade source.

189    One is left in the position that in relation to the packaging uses, Mr Hesse has not deposed to any of the dates upon which they were available and none of those pages provides any assistance with dating. Needless to say, BCP distributing glassware sourced from the Czech Republic using the word “Bohemia” that does not emanate from BCP is antithetical to the word gaining distinctiveness as a mark for BCP in Australia. It reinforces, rather than distinguishes, its descriptive meaning.

190    Furthermore, the exhibiting of incomplete packaging means that it is not possible to assess the manner in which particular words are used, having regard to the entirety of the relevant context. This is important in considering whether a particular use has been use as a trade mark within s 17 of the TM Act, for educating consumers that it is a trade mark, or for a descriptive or other purpose.

191    I have noted that it is of particular relevance to consider packaging used after 1999 and before each of the relevant dates. Yet the bulk of the advertising and packaging material does not appear to relate to those dates.

192    In cross-examination Mr Hesse said:

…you can’t tell, Mr Hesse, what, if any, of the examples of your use in the exhibit took place between 1999 and 2001, can you? - - - 1999 —

Nine? – and 2001.

And 2001, when you applied for the mark ----? It was a difficult period, but if it was advertising, we would have – I would have had the invoices, etcetera, but it would have been difficult because we would have had two masters: BCT and Skloexport Group.

But the fact is you can’t point to any precise examples of advertising between that period: 1999 to 2001? I haven’t been able to easily, but ---? --- I thought I could have, but if I didn’t include it, then that’s an oversight. There wasn’t a great deal of it because the time was spent in travel and working through that.

193    Other aspects of the packaging evidence warrant brief observations.

194    First, on some glassware the product itself has etched into the glass the word “Bohemia” by itself. I find that this is descriptive, not trade mark use.

195    Secondly, Mr Hesse states in his affidavit that since 1976 BCP’s full lead crystal products have been sold in blue boxes with one or both of the Bohemia marks ordinarily shown in gold, silver or white printing. Products other than full lead crystal products were packaged in different boxes. Other evidence supports the conclusion that boxed products were sold prior to the relevant dates in the following composite manner:

196    It will be seen that within the double lined rectangular outline are: the 701 mark, the word “Bohemia” between two lines and the words “Crystal of Distinction” above other words, which appear to include “Made in the Czech Republic”. The word “Bedford” also appears underneath the rectangular outline. In my view, this gives little assistance to BCP as evidence of distinctiveness for the mark “BOHEMIA” because of its proximity to the 701 mark and use as part of a composite form of packaging. It gives no assistance in relation to the BOHEMIA CRYSTAL mark.

197    Thirdly, Mr Hesse gave evidence that since 1981 products with higher lead content will have a sticker as set out below:

198    In cross-examination Mr Hesse accepted that the reference to “Bohemia” here was descriptive in the sense that it educated consumers that the product originated in Bohemia, a place from where high quality lead crystal could be found. Plainly Mr Hesse’s own view is not determinative, but I agree with his characterisation. A similar observation may be made of the sticker said to have been applied to glass with a small amount of lead in it since 1981, which reads “Bohemia Crystal Made in the Czech Republic”. This type of composite branding tends to support the submission, made by Host, that BCP’s own branding often served to educate or remind consumers that Bohemia is a region in the Czech Republic.

2.6.2.3    Catalogues, pamphlets and bags

199    Mr Hesse gives evidence that since 1978, BCP has published or funded the publication of catalogues. He exhibits copies dated 1978, 2004, 2010, 2011, 2013 and 2014. He says that the catalogues are printed and distributed to BCP’s third party retailers and BCP stores and are available on its websites.

200    The 1978 catalogue is entitled “125 Years Anniversary Giftware Catalogue” and is branded “S. Hoffnung & Co. Ltd” – Mr Hesse’s former employer before he joined BCP. There is no evidence as to the breadth of distribution of the S Hoffnung catalogue. It depicts photographs of glassware in association with the words “BOHEMIA – made in Czechoslovakia” prominently displayed. None of the Skloexport trade marks appear in the catalogue. On one page is a photo display of glassware that is variously coloured ornate red or blue with the words “Simplicity Bohemia”. On another are the words “Claudia Famous Bohemia Crystal”. The absence of any Skloexport trade mark indicates that it is doubtful that this catalogue reflects any use by reference to BCP at all.

201    The 2004 catalogue has “2004” handwritten on it. No evidence indicates when in 2004 it was published, or how many were printed, but I find that this was not published before either of the relevant dates and accordingly its content is not relevant to the present enquiry. The 2004 catalogue has the 701 mark on each page. On most pages, the words “Bohemia Value for Lifetime” in a box are also featured.

202    Mr Hesse gives evidence of paper pamphlets distributed at BCP stores from prior to 1995 to at least 2005 (copies of examples of which are said to be located at pages 63 – 132 of exhibit PH-4). However, those pages coincide with pages of the 2004 catalogue to which I have referred. To the extent that there is an overlap between the two, the comments that I make above apply.

203    Mr Hesse also gives evidence that when glassware is purchased at BCP stores it is placed in bags branded with the words “Bohemia Value for Lifetime”. On the rear of each bag is the 701 mark. Mr Hesse first estimates that 47,000 of these bags were distributed to customers each year from 1991 to 2005. Later in his evidence Mr Hesse gives evidence that these bags have been provided from “approximately 2003 onwards”. The inconsistency in dates was not clarified in Mr Hesse’s oral evidence. One is left in a position of uncertainty as to which is correct.

2.6.2.4    BCP stores

204    BCP operated a store in Pitt St, Sydney from 1989 – 1996 and Birkenhead Point, New South Wales from 2002 – 2012. Nine other stores were opened after the relevant dates, five of which remain in operation.

205    Mr Hesse gives evidence that he was instrumental in setting up the Pitt Street store in 1989. Two photographs in evidence show an elegant store with a large plate glass window and two glass doors. On the window and second door, in gold stencil, are the words “Bohemia Crystal” with the same words appearing on the door mat of the first door and on the lintel above it. Immediately beneath the words as they appear on the window is a large rendition of the 701 mark, which also appears in a large form as the push handle for the first door.

206    Behind the plate glass window is a display of some ornate glassware made by the Czech manufacturer Moser. That brand of product was not sold under any BCP mark, but under its own brand name. Mr Hesse accepted in cross-examination that the words “Bohemia Crystal” so used on the store were describing what was available in the store, being products from the Czech Republic. His acceptance, again, is not determinative, but I agree that in this context the trade mark being used is the 701 mark and not the words “Bohemia Crystal”, which are descriptive.

2.6.2.5    Showroom

207    Mr Hesse gives evidence that since 1995 BCP has marketed glassware to its commercial customers from a showroom in Marrickville, New South Wales. He estimates that between 1995 and 2003 about 40 people per month attended the showroom. He exhibits copies of photographs taken of the showroom in November 2004 and states that the showroom then looked similar to how it was from 1995.

208    The photographs exhibited show glassware displayed on shelves on or near their packaging boxes, no doubt to enable commercial customers to see how they are packaged. The exhibited photographs do not clearly depict the packaging, which renders the task of determining the context of any displayed words (and whether they amount to trade mark use) impossible. So far as one can tell (having regard to the images in their electronic form, and utilising the magnification function) the displayed packaging includes:

(a)    boxes which are predominantly white with a dark blue diamond shaped logo. The photographs do not enable the writing to be read, with the exception of the word “Bohemia” followed by some other words which are rendered in smaller type. Immediately beneath the diamond is the 701 mark;

(b)    navy blue boxes with a white label bearing the word “Bohemia” followed by some indecipherable writing;

(c)    navy blue boxes mixed with white boxes, each of which has in reverse colour a rectangular box bearing the words “Bohemia Value for Lifetime”;

(d)    4 coloured boxes labelled on their lid “Bohemia” and on their front the words “Fleur”; “Julia”; “Vivien”; and “Vintage”; and

(e)    white boxes with the word “Bohemia” and another stylized word that cannot be discerned but may be either “Collection” or “Celebration” and line drawings of the glass contained within (for example, a flute). The words and line drawings appear to be in either gold or black, though again it is difficult to discern from the photographs in the evidence.

209    The boxes identified in (d) emanate from a different company, Bohemia Crystalex, to promote their own lines of product. This is apparent from other advertising contained in the materials exhibited by Mr Hesse, which were catalogues from products that were made and packaged in the Czech Republic by Bohemia Crystalex. In cross-examination Mr Hesse explained that BCP promoted these Bohemia Crystalex products with Bohemia Crystalex’s own branding. Mr Hesse’s evidence is also that BCP distributed brochures for these and other Bohemia Crystalex products. The evidence is not clear whether the distribution and promotion by BCP was before or after the relevant dates although I note that during cross-examination Mr Hesse indicated that in 2009-2011 BCP imported products from other manufacturers that bore their own marks “to keep the company going”. The fact that BCP sold other trader’s goods that bore “Bohemia” is also supported by the care card which contains the Bohemia Crystalex trade mark. Plainly the prominently displayed “Bohemia” on the top of each box identified in (d) above is not a use of that word that is helpful to distinctiveness in respect of the Bohemia marks. It is to contrary effect.

2.6.2.6    Website

210    Mr Hesse gives evidence that since about 2002, BCP has used a website accessible from the domain names bohemia.com.au and bohemiacrystal.com.au to promote its materials. The former website provides a log-in portal for commercial customers to access pricelists and submit orders. He exhibits print-outs from the website made in May 2005 and also from later dates (which are not presently relevant). The 2005 print-outs depict at the top portion of each page a modified form of the 701 mark and beneath it an image of the product type being promoted.

211    The modified 701 mark uses the “W” shaped logo of the 701 mark and the words “Bohemia Crystal”, but the word “Australia” supplants “Made in Czech Republic”. Beneath this composite mark is an image that contains the words “Bohemia value for life” and also the 701 mark rendered in the lower right portion of the image.

212    Mr Hesse also gave evidence about a separate website (crystalandglass.com.au/purchase-bohemia-crystal-products-online-today/1:1/) that has been used since about 2013. This use is not relevant to s 41 (being after the relevant dates) but is discussed further below in relation to the ACL claim.

2.6.2.7    Advertising stands

213    Mr Hesse gives evidence that from 1985 until 2005 BCP set up advertising stands containing magazines and promotional leaflets that were set up in-store in places such as Myer and Prouds, where its products were sold “from time to time”. He exhibits some 27 pages of images of those advertising stands and brochures. None of that advertising is dated. Two pages are apparently from magazines (“Australian House and Garden” and the ABC’s “delicious”) but are undated and refer to “Bohemia” prominently and also the 701 mark. The balance contains brochures of the Bohemia Crystalex products to which I have referred above.

2.6.2.8    Print media

214    Mr Hesse gives evidence of samples of print media advertising by BCP prior to and after the relevant dates. This evidence was more useful for present purposes in that (unlike some of the other evidence identified above) it provided some samples of the magazine advertisements used and contemporaneous invoices that serve to verify the approximate dates upon which the advertisements were placed. The evidence indicates 27 different magazine titles or publications featuring advertisements for BCP. A representative sample, which appeared in “Table & Kitchen” magazine as a full page colour spread in or about May 1996, is set out below (BCP representative sample):

215    It may be seen that the headline words “Bohemia Crystal” appear, accompanied by “The decision to buy Bohemia is Crystal Clear” and, in the lower right hand corner, the 701 mark. The interested trade buyer is directed to the company, BCP. During cross-examination Mr Hesse conceded that the phrase “The decision to buy Bohemia is Crystal Clear” was not used to refer to the origin of the product. Rather it was used to refer to quality, namely because the Bohemia region is famous for making quality crystal.

216    From perusing the numerous examples in evidence, together with their invoices, I find that advertisements of this type appeared in some magazines from 1987 or so (Vogue Entertaining, Bride Magazine, Australian Gourmet) and thereafter appeared from time to time in other magazine and newspaper publications before the relevant dates. I infer, based on the available evidence, that these advertisements were placed on a fairly regular basis in that period.

2.6.2.9    Trade fairs

217    Mr Hesse explains that since 1985 BCP has displayed its glassware at trade fairs. He provides photographs of the displays and copies of the promotional material used at those fairs. The only uses relevant to the present inquiry are the West Australian Home Show Excellence Awards in 1985 and another, the Reed Gift Fair in August 2003 (other fairs identified clearly post-date the relevant dates).

218    The photograph of the 1985 fair shows the words “Bohemia Crystal” and “Bohemia Glass” above displays of glassware and proximate to the 701 mark. I consider that such use is not trade mark use but descriptive use. The August 2003 fair quite closely follows the May 2003 filing date for the BOHEMIA mark. On a single page of the August 2003 fair brochure are five advertisements in two columns, with three on the left hand side of the page and two on the right. Three concern BCP. The first features the prominent use of the 701 mark, the second the words “Bohemia value for lifetime” accompanied by the name “Bohemia Crystal Pty Ltd” and the third is similar to the BCP representative sample.

2.6.2.10    Sponsorships

219    Mr Hesse gives evidence that BCP has also advertised its glassware by sponsoring various sporting and community organisations, community services and events. The following aspects of the sponsorships before the relevant dates may be noted:

(a)    many plaques and certificates of sponsorship and appreciation awards mention the name of BCP, however, that is not promotional use or trade mark use but a rendition of the corporate name of the recipient of an award or the like;

(b)    from 1979 – 2000 BCP sponsored the Sydney Kings basketball team. Images exhibited show prominently displayed around the court the words “Bohemia Crystal” sometimes with the 701 mark, sometimes without. Similar signage was used in about 1991 for BCP’s sponsorship of the Women’s National Basketball League;

(c)    a newspaper article dated 1994 mentions a gift pack “courtesy of Bohemia Crystal” (words only) and a competition to win a “hand crafted Bohemia Crystal, priceless Basketball Boot” in proximity to the 701 mark; and

(d)    similar displays, with mixed use of the words “Bohemia Crystal” alone, or with the 701 mark, appear in photographs for various sponsored events including: the Commonwealth Cycle Classic from 1989 – 1999, soccer events and teams (1991 –2003), tennis events (1985 – 2004, including the NSW Tennis Open and the Hopman Cup), Women’s Hockey Australia from 1994 – 1998, the 2000 Sydney Olympics (1998 – 2000), and the Ju Jitsu World Championships (2000).

2.6.2.11    Stationery and other business materials

220    Mr Hesse gives evidence of a miscellaneous group of other promotional materials that are said to have been made available. One such class of materials are “product care cards” said to have been handed out for the period 1989 to 2003. Unfortunately, he does not identify the particular pages of his exhibit where such care cards are to be located, other than by general reference to some 50 pages of exhibited material. I deduce that he is referring to 6 pages.

221    A sample of the first such page is set out below:

222    It will be seen that the product is apparently a Bohemia Crystalex product, not a BCP product.

223    In other examples of care cards the word Bohemia is closely accompanied by the 701 mark (in a similar way to the complex packaging depicted in section 2.6.2.2) as in the following:

2.6.3    Consideration of factual distinctiveness

224    In light of the matters set out in 2.6.2 above, I now turn to summarise my conclusions in relation to factual distinctiveness under subsection 41(6) of the TM Act. These involve considering and weighing the whole of the evidence that was adduced on the subject and forming a practical evaluation as to whether subsection 41(6) is satisfied.

225    First, as discussed above, Mr Hesse conceded during cross-examination that the Bohemia marks were almost invariably never used on their own in any of the advertising adduced into evidence, without an accompanying Skloexport trade mark, prior to 1999. BCP nevertheless submits that the use of the words “Bohemia” and “Bohemia Crystal” where those words appear as elements of the Skloexport trade marks should be taken into account as material and supportive of factual distinctiveness. It will be recalled that these are device or composite marks:

226    Analysis of the whole of the evidence reveals that of these, it is the 701 mark (the second from the right) that was the mark most frequently used before the relevant dates in association with goods sold by BCP. This was not only prior to 1999, but also prior to the later of the relevant dates, being May 2003. Sometimes the 701 mark was modified, either by the removal of the words “Made in Czech Republic” (before 1991 the words were “Made in Czechoslovakia”) or, as is the case of the website, the use of “Australia” in lieu of “Czech Republic”. In these reasons I refer to such renditions as the modified 701 mark.

227    The 701 and 332 marks each consist of a dark coloured, rounded rhomboid in which there are three elements; the word “Bohemia” in block type, the word “Crystal” in stylised cursive font and a ribbon or bow in roughly a “W” shape with arrows at each end sitting above a 4 pointed star, all inside a circle (below, I refer to this as the “W” device). Beneath the rhomboid and going up one side are the words “Made in Czech Republic” (prior to the formation of that Republic, the word “Czechoslovakia" was used). The 034 mark replaces “glass” for “crystal” and does not have the words “Made in Czech Republic”. The 310 mark is simply the “W” device inside the circle. The 337 mark consists of the word “Bohemia” in block type above a smaller “Czechoslovakia”, and beneath these words is a complicated device set in a circle consisting of a square containing a dark coloured bold letter “B” with 3 x 5 pointed stars on its top, set against a light background. The square is surrounded by rounded triangle shapes that abut the circle.

228    I have some difficulty with the proposition that the words “Bohemia” or “Bohemia Crystal” should in this context be regarded as having separate trade mark signification beyond the combination in which they appear in the composite marks described above. In my view, it is the combination of elements that is distinctive. The trade mark should be viewed as a whole and not dissected into parts. Although this is likely to be a matter of fact for each case, it is notable that several cases have cautioned against the proposition that separate elements should be so distilled; see Diamond T Motor Car Company [1921] 2 Ch 583 at 588, Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 201 FCR 565 at [61], [63].

229    To my eye, the whole of the 701 mark is to be regarded as creating a complicated image that taken collectively represents a sign, or badge of origin. I do not think that the elements within it may be dissected or that they would be dissected by an ordinary consumer of goods within the relevant classes. In any event, I consider that the words “Bohemia Crystal” and “Made in Czech Republic” within the 701 mark tend to reinforce the descriptive, geographical signification of those words. The same may be said of the other composite marks. A consumer, seeing the combination, including the circular “W” device, is informed that a particular trader supplies these goods. In the time before 1999 it was Skloexport who licenced the use of the mark to BCP. Of course, that usage may be taken into account to BCP’s benefit, because the 701, 034 and 332 marks were in July 1999 assigned to BCP; subsection 7(3) of the TM Act. However, the marks tend to emphasise Bohemia as part of Czechoslovakia, or (later) the Czech Republic.

230    As a consequence of these matters, I do not place significant weight on the use by BCP of the composite marks that include the word “Bohemia” or “Bohemia Crystal” within them as a means of demonstrating distinctiveness in fact of the Bohemia marks.

231    Secondly, I have found that the words “Bohemia” and “Bohemia Crystal” are not by themselves inherently capable of distinguishing BCP’s goods. It is necessary for BCP’s use to serve, directly or indirectly, as a means of educating consumers that these words have the signification of trade marks. Mere use is not enough. Use together with other, recognised trade marks (such as the 701 mark) is unlikely to serve that purpose. This is because there will necessarily be an ambiguity tied up in the effect of such use. To what extent is the advertising material merely to reinforce the significance of the established trade mark as a badge of origin? In the present case, for the most part, the evidence of use of the words of interest is in conjunction with the 701 mark. In such circumstances it is difficult to ascribe significant weight to that evidence; see Woolworths at [79], [117], Yarra Valley at [232].

232    Thirdly, Mr Hesse’s affidavit evidence exhibits voluminous materials. In the body of his affidavits he makes a number of generalisations about, and gives summaries of, that content. I have remarked above upon a number of discrepancies as to the accuracy of each. I accept the submission made by Host that little weight should be given to the summaries by Mr Hesse or to his assertions as to dates except where it is supported by the material exhibited. This is in any event common sense. Where the key issue is whether factual distinctiveness has been established, it is material to give close attention to the particular manner in which use has been made.

233    Fourthly, a number of uses relied upon (such as in relation to sponsorships) are not made in relation to the relevant goods. Others, such as in relation to the BCP stores, promote BCP as a retailer of glassware which originates not from a trade source of goods bearing the 701 mark, but also trade sources such as the company Moser.

234    For the reasons set out above, I consider that:

(a)    the evidence concerning the financial statements of BCP can be given little weight;

(b)    the evidence of packaging used by BCP is of no assistance to it in considering factual distinctiveness. To the contrary, the uses identified indicate that in a number of respects the descriptive aspect of the words “Bohemia” and “Bohemia Crystal” are reinforced;

(c)    the evidence of catalogues, pamphlets and bags and also the advertising stands can be afforded little weight. As to catalogues, the S Hoffnung & Co Ltd catalogue indicates descriptive use of “Bohemia” and no other catalogue was published before the relevant dates. The evidence of use of the carry bags is confusing and of no real assistance;

(d)    the evidence of the BCP stores is only relevant insofar as it concerns the Pitt St, Sydney store. It indicates descriptive use. The showroom evidence is of marginal or no assistance for the reasons given;

(e)    the website evidence shows the use of domain names with the words “Bohemia” and “Bohemia Crystal” and the home page for each (as at 2005) shows use of a modified form of the 701 mark in conjunction with the words;

(f)    the print media evidence includes magazine advertisements, demonstrated by the representative sample. The use of the words “Bohemia Crystal” may be understood by some to allude to a trade source, although in my view many are likely to regard the 701 mark with which these words appear, as the sign of BCP. I give this material some weight favourable to BCP, because the breadth and scope of the print media campaign suggests that it was of some significance and extended over a good number of years before the relevant dates and because of the prominent use of the words “Bohemia Crystal”. However, the presence of the 701 mark on the representative sample attenuates the significance of this use.

(g)    I afford the evidence of trade fairs and stationery and business material little weight, for the reasons stated; and

(h)    the evidence of sponsorships shows some use of the words “Bohemia Crystal” alone and some use of those words in conjunction with the 701 mark. I afford it some weight.

235    BCP places emphasis on the evidence of Mr Francis. It will be recalled that he gives evidence that since he began working at Peters of Kensington (in about July 2000) about one customer a month has approached him on the showroom floor asking him if he stocks “Bohemia” or “Bohemia Crystal” products.

236    I am cautious about accepting quasi survey evidence from a sample of one, where the witness gives hearsay evidence reaching back some 17 years. This is especially so where that witness stocked only some 18 items of the BCP products and then only once in about 2007. Also, there is an inherent ambiguity in the use of spoken words to convey a request. The evidence of Mr Francis does not identify whether the persons with whom he interacted were asking by reference to the company name, or had in mind one or other of the composite marks when making reference to “Bohemia”. I do not doubt that Mr Francis genuinely believed the evidence he gave to be correct, but it is slender evidence of consumer perception. In this regard the evidence is qualitatively and quantitatively of a lesser order of magnitude than that accepted by the Court in Blount.

237    Finally, I note that the business of BCP has always been to import, distribute and sell glassware. The promotional activities reflected in the print media, sponsorship, trade fair, website, catalogue, pamphlets and bags evidence tends to suggest that BCP has promoted itself as a vendor or supplier of glassware from a number of sources, including Moser and Bohemia Crystalex. It appears to be mainly the common use of the 701 mark on products and in BCP’s promotions that connects BCP to the relevant goods.

238    Taking all of the evidence together, including the points that I have touched upon in this section and section 2.6.2 above, I do not consider that because of the extent to which BCP has used either “Bohemia” or “Bohemia Crystal” before the filing dates of the Bohemia marks, either the BOHEMIA mark or the BOHEMIA CRYSTAL mark does distinguish the designated goods for either mark as being the goods of BCP. Accordingly, by operation of subsection 41(6)(b), neither trade mark was at the relevant date capable of distinguishing the relevant goods as being the goods of BCP within subsection 41(2) of the TM Act.

3.    EXERCISE OF DISCRETION TO CANCEL THE BOHEMIA MARKS – s 88

3.1    The submissions

239    Host submits that the Court ought to exercise its discretion pursuant to s 88 of the TM Act and order that the Bohemia marks be removed from the Register. It contends that a trade mark that was not distinctive at the relevant dates ought not remain on the Register. Host also submits that BCP had engaged in what it characterised as illegitimate and anticompetitive conduct in taking steps to prevent other traders from using their own legitimate names which incorporate the word “Bohemia”, and which serve to describe the origins of their products. This, it contends, is a disentitling factor in the exercise of discretion.

240    BCP submits (without elaboration) that the Court should take into account its long history of use and decide not to cancel the trade marks. It submits in the alternative that a condition or limitation may be entered, depending upon the reasoning that leads to the conclusion that cancellation is appropriate.

3.2    The relevant law

241    Subsection 88(1) of the TM Act provides that, subject to subsection 88(2) and s 89, the Court may order that the Register be rectified by (a) cancelling the registration, or (b) removing or amending an entry wrongly made or remaining on the Register; or (c) entering any condition or limitation affecting the registration of a trade mark that ought to be entered.

242    I have found that Host has succeeded in establishing that each of the Bohemia marks could have been successfully opposed pursuant to s 41 of the TM Act, with the consequence that the ground of rectification under subsection 88(2)(a) of the TM Act is made out.

243    Subsection 88(1) includes within it a discretion for the Court to decline to make an order for rectification; Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; (2004) 61 IPR 212 (Moore, Sackville, Emmett JJ) at [129]. In Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (No 3) [2015] FCA 1436; (2015) 331 ALR 512, Perram J concluded at first instance that upon a finding of a ground of revocation being made out, the prima facie position is that the Register should be kept accurate (or ‘pure’) by an order for cancellation, unless good cause is shown by the registered owner as to why it should not be (at [8]), citing Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590 (Health World).

244    On appeal, in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6 (Anchorage), the Full Court (Nicholas, Yates, Beach JJ) concluded that unless s 89 of the TM Act is engaged (which does not arise in the present circumstances), the discretion under subsection 88(1) is at large, constrained only by the general scope and objects of the Act; Anchorage at [146]. In this context, it found that the correct question to ask when deciding whether to exercise the discretion is whether sufficient reason appears not to order the cancellation of a registered mark once the statutory discretion to make such an order has been enlivened. If the evidence does not disclose sufficient reason not to cancel the mark then it should be cancelled. In the ordinary course of events, it will be for the party that resists the cancellation to persuade the Court that there is a sufficient reason not to order its cancellation; Anchorage at [158].

3.3    Consideration

245    I do not consider that the evidence discloses sufficient reason not to cancel the Bohemia marks. There is a public interest in ensuring that trade mark registrations only be granted in favour of applicants who are entitled to them – for ensuring that the Register is “pure” in the sense that no mark is registered unless valid, and no registration of a mark is to continue if it is not valid; Health World at [27]; Anchorage at [163].

246    In the present case the principled basis upon which a trade mark that is not capable of distinguishing the goods of BCP from those of other traders is to be refused registration is that set out in Clark Equipment. That principle derives from the long standing notion that registered trade mark rights ought not to accrue in respect of marks that, according to their ordinary signification, are for words that other traders may desire to use unless by the relevant dates they have achieved factual distinctiveness within subsection 41(6) TM Act.

247    The evidence in the present case is that, as at the relevant dates, neither of the Bohemia marks was so capable of distinguishing. As a consequence, those trade marks ought not to remain on the Register. I am not satisfied that BCP has established sufficient reason not to order their cancellation.

248    First, BCP may apply for the trade marks now. The TM Act enables a party to apply for a trade mark later in time if it has, by a certain date, become distinctive in fact. The presence of the existing ground of revocation via the operation of subsection 88(2)(a) and s 41 indicates an intention on the part of the legislature to ensure that historical registrations should not remain on the Register where they should not have been granted in the first place. In the present case, to permit such a course would advantage the unmeritorious registrant who has incorrectly had the benefit of the monopoly since the relevant dates. BCP is able to apply to register the Bohemia marks now, should it choose to do so.

249    This is not merely a technical matter. A fresh trade mark application would be filed under Part 4 of the TM Act. The application would be publicly advertised and any person desiring to do so could lodge an opposition to the registration pursuant to Part 5 of the TM Act. In the present case the evidence reveals that a number of interested parties are likely to oppose that registration, not least the companies that Messrs Barta, Kidric and Cerva represent, each of whom expressed a desire to use the word “Bohemia” in Australia and to trade in Australia in relation to the relevant goods. The grounds of any opposition may extend beyond s 41 and into other matters not presently before the Court. Were the discretion to not revoke the Bohemia marks exercised, potential opponents would not be able to raise any grounds of opposition. The policy of the TM Act in seeking to ensure, to the public benefit, that the Register remain pure would be circumvented. In my view, the circumstances of BCP in the present case do not cause me to consider that it should have the benefit of avoiding such scrutiny, should it wish to persist in obtaining a trade mark for these words.

250    Secondly, the asserted evidence of “longstanding use” is far from compelling. I have noted that before the relevant dates such use as there was of the words “Bohemia” and “Bohemia Crystal” was not sufficient to satisfy the requirements of subsection 41(6) of the TM Act. In section 7 below, I make findings in relation to subsequent use in the context of BCP’s ACL claim (allowing for the fact that those findings are made in the different statutory context of the ACL).

251    For these reasons, I decline to exercise my discretion. It is not necessary to consider a condition or limitation to be entered on the Register. None was proposed by BCP and I do not consider it appropriate to impose one in light of these reasons.

252    It is necessary briefly to consider Host’s submission that BCP has made illegitimate and anticompetitive use of the Register.

253    I have referred to the evidence of Mr Cerva in paragraph 136 above. In short, he acquired a business in 2009 that owned two substantial glass factories within the Czech Republic. In June 2009 he changed the company name to “Crystalite Bohemia”. The evidence reveals that Mr Hesse was aware of these developments as they occurred. Crystalite uses various trade marks to promote its products around the world, including CRYSTALITE BOHEMIA and the 2010 Crystalite mark referred to in paragraph 126 above. Unbeknownst to Mr Cerva, on 16 July 2009 BCP applied for the word mark BOHEMIA CRYSTALITE in class 21 of the Register (broadly, for glassware). On 9 April 2010 BCP applied to register CRYSTALITE BOHEMIA in respect of similar glassware type goods in class 21. Both marks were entered on the register during the course of 2010. In cross-examination, Mr Hesse conceded that he authorised BCP to apply for those trade marks to “protect” the BCP Bohemia marks. In other words, the registration was obtained purely for the purpose of ensuring that a substantial concern located in the Czech Republic did not enter the Australian market under a name that included the word “Bohemia”. It is apparent that BCP had not used, and did not intend to use, these marks in relation to its own goods.

254    Also in evidence is an extensive list of the trade mark registrations owned by BCP or Bohemia Trading. One composite mark registered in the name of Bohemia Trading includes the words BOHEMIA CRYSTAL JIHLAVA (No. 761240), another (No. 925982) includes the words X JIHLAVSKE SKLARNY BOHEMIA 1845 (collectively, Jihlava marks). Mr Kidric, has been the Managing Director and Chairman of the board for Bohemia Jihlava since 2009. His company has traded under the name “Bohemia Jihlava” in the Czech Republic and throughout the world for many years. However, it has been unable to do so in Australia under its own name or trade marks because of the combined effect of the registration by BCP of the Bohemia marks and Bohemia Trading of the Jihlava marks identified above. As I have noted in paragraph 140 above, in 2011 BCP and Bohemia Trading threatened to sue an importer of Bohemia Jihlava product for infringement of the Jihlava marks, as well as the Bohemia marks.

255    In cross-examination Mr Hesse accepted that his company would not let any other company use any brand including any elaborate device mark that includes the word “Bohemia” in it. This, he said, was to protect “Bohemia”.

256    It is not the place in these proceedings to make any findings as to the validity of the Jihlava marks or the so-called protective registration of the Crystalite marks identified above. However, it is apparent from this evidence that BCP has a history of utilising the Register as a means to ensure that potential competitors are prevented from using the word “Bohemia” in association with goods which come from that region or in any context at all in relation to the relevant goods. That conduct is antithetical to the policy and purposes of the TM Act. It may have had a distorting effect on the contemporary understanding of the word “Bohemia”. It should not be condoned. However, in light of the conclusions that I have already expressed it is not necessary for me to decide whether this is a further factor that may weigh against BCP in the exercise of any discretion.

4.    REVOCATION PURSUANT TO s 87 OF THE TM ACT

257    Host contends that in the event that the Court finds that the Bohemia marks were capable of distinguishing pursuant to subsection 41(2) of the TM Act, then the Register should nonetheless be rectified by cancelling them pursuant to s 87 because the marks have become generally accepted within the glassware trade as a sign that describes articles of glassware emanating from Bohemia and/or with a particular quality or character.

258    In light of the findings that I have made in relation to the previous ground for rectification it is not necessary for me to consider this ground.

5.    TRADE MARK INFRINGEMENT

5.1    Introduction

259    The conclusions that I have reached above indicate that it is not necessary to consider the question of trade mark infringement. However, in deference to the detailed evidence and skilful arguments that were presented on the subject, and against the prospect that my conclusions as to validity are the subject of a successful challenge, I now proceed to consider the issues raised in the infringement proceeding.

260    BCP alleges that Host has infringed the Bohemia marks by using them in the course of promoting the Banquet products. The 5 different forms of impugned uses are set out in section 1.9 above.

261    The parties helpfully cooperated to identify the following issues as being relevant to the determination of the trade mark infringement case.

262    First, whether or not any of the impugned uses amounted to use of the words “as a trade mark” within the relevant legal principles. This is addressed in section 5.2 below.

263    Secondly, insofar as I find any trade mark use by Host, whether it has established that such use as it makes has been in good faith to describe the geographical origin or quality of Host’s products within subsection 122(1)(b) of the TM Act. This is addressed in section 6 below.

264    Thirdly, whether the website use was inadvertent. This is a small point and can quickly be resolved because not only are the Bohemia marks not valid, but in section 5.2 I find that this was not trade mark use. Accordingly, the point can be addressed in short form. The use took place fleetingly from 16 March 2016 until April 2016 in circumstances set out at paragraph 288 below. Having considered the evidence given on the subject I find it to have been inadvertent.

265    Fourthly, there is a minor issue that concerns whether the BOHEMIA CRYSTAL mark is infringed by two of the impugned uses, being the October 2015 catalogue use and the January 2016 catalogue use. Host contends that these are not uses of signs that are substantially identical with or deceptively similar to the BOHEMIA CRYSTAL mark within the meaning of subsection 120(1) of the TM Act. This issue is largely academic because I have found both trade marks to be invalid and, even if they are valid, Host accepts that the “Banquet by Bohemia” and “Czech Crystal by Bohemia” uses are at least deceptively similar to the BOHEMIA mark within subsection 120(1) TM Act and so would infringe that mark. Accordingly, I shall also deal with this issue in short form. The principles concerning deceptive similarity are well established, and do not need to be repeated here. I find that “Banquet by Bohemia” is not deceptively similar to the BOHEMIA CRYSTAL mark within the meaning of subsection 120(1) of the TM Act. Half of the mark is absent from that impugned use. Further, I find that “Czech Crystal by Bohemia” is not deceptively similar to the BOHEMIA CRYSTAL mark within the meaning of subsection 120(1) of the TM Act. The word “crystal” in that context (i.e. “Czech Crystal”) is used entirely descriptively and “Czech Crystal by Bohemia” does not so nearly resemble the trade mark BOHEMIA CRYSTAL so as to be likely to deceive or cause confusion: see Australian Health & Nutrition Association Limited trading as Sanitarium Health Food Company v Irrewarra Estate Pty Ltd trading as Irrewarra Sourdough [2012] FCA 592; (2012) 292 ALR 101 at [38] (Jagot J). The same conclusions apply in respect of the use of the words “Banquet Crystal by Bohemia” in the context of the packaging and sticker uses.

266    Fifthly, additional issues arise on the pleadings as to the personal liability of Mr Sullivan, damages and additional damages. These issues would only be relevant in the event that I found the trade marks to be valid and infringed. In light of my other conclusions I do not consider it to be necessary to address these matters.

5.2    The trade mark use issue

5.2.1    The submissions

267    Host submits that the word “Bohemia” as it appears in the alleged infringing uses does not constitute use as a trade mark, but rather is use to describe the origin of the goods and their quality, by directly referring to Bohemia, a region well-known for the production of quality glassware. It contends that in Pepsico Australia Pty Ltd (t/as Frito-Lay Australia) v Kettle Chip Co Pty Ltd [1996] FCA 48; (1996) 135 ALR 192 (Pepsico) the Full Court concluded that the reference to “Kettle” in the context of “Kettle Cooked Potato Chips” was determined by viewing the packaging as a whole and that in this context the word was found to be descriptive. It points to uses of the ® sign following the word “Banquet” and the reference to the “Leona Collection” as indicating those are the trade marks in use, but not the word “Bohemia” which is used only descriptively.

268    In response, BCP submits that the issue is easily resolved by considering whether, in the setting in which the words were presented, they would have appeared to the viewer as possessing the character of brands that Host was using or proposing to use in relation to Host products for the purpose of indicating, or so as to indicate, a connection in the course of trade between the products of Host and Host, citing Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 (Shell Co of Australia Ltd) at 425 (Kitto J).

5.2.2    The relevant law – trade mark use

269    Section 17 of the TM Act provides that a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Subsection 7(4) provides that “use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods)”.

270    Subsection 120(1) of the TM Act provides that a person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

271    The relevant issue is whether or not any of the impugned uses may be characterised, in context, as “use as a trade mark”. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144 at [43] the plurality (French CJ, Gummow, Crennan and Bell JJ, and at [87] Heydon J agreeing) approved the following statement of the Full Court in Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107 (Coca-Cola):

Use “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods. See Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 341, 351. That is the concept embodied in the definition of “trade mark” in s 17 - a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

272    The Full Court in Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd [2016] FCAFC 91; (2016) 243 FCR 152 (Besanko, Nicholas, Yates JJ) observed, citing established authority, that the question of whether there has been use of the sign as a trade mark depends on the context in which the mark is used. The Full Court cited (at [26], [27]) Shell Co of Australia Ltd, per Kitto J (Dixon CJ, McTiernen and Owen JJ agreeing) at 422 and 425:

But the context is all-important, because not every use of a trade mark which is identical with or deceptively similar to a registered trade mark infringes the right of property which the proprietor of the mark possesses in virtue of the registration.

…

With the aid of the definition of “trade mark” in s. 6 of the Act, the adverbial expression may be expanded so that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?

273    See also Nature’s Blend Pty Ltd v Nestle Australia Ltd [2010] FCAFC 117; (2010) 87 IPR 464 (Nature’s Blend) at [31] – [44].

274    In determining whether a sign is used as a trade mark, one does not ask whether the sign indicates a connection between the alleged infringer’s goods and those of the registered owner. One asks whether the alleged infringer has used the sign so as to indicate the origin of the goods. This involves an examination only of the impugned use; Coca-Cola (Black CJ, Sundberg and Finkelstein JJ) at [20], [28], [30]. The contextual use of the impugned sign is examined. If it is trade mark use, then (under subsection 120(1)) infringement will be made out if the sign is substantially identical with or deceptively similar to the registered trade mark of the applicant and used in relation to goods or services in respect of which the trade mark is registered, unless a defence under the TM Act applies. It is accordingly necessary to consider each use in context and consider how those uses would be understood by the typical consumer of goods sold by Host. The relevant question is whether or not, in the setting in which the words “Bohemia” or “Bohemia Crystal” appears, they would have appeared to consumers as possessing the character of a brand in the sense that it indicates a connection in the course of trade between the goods and a supplier. The relevant point in time for such consideration is the date of the alleged acts of infringement.

5.3    Consideration

275    It is necessary to consider each of the alleged trade mark uses, bearing in mind the context in which they are used and the likely perception of the typical consumers of Host products.

276    In relation to the October 2015 catalogue use, I note that it appears as part of a double page spread on pages 2 and 3 of a printed, pamphlet-like catalogue. The cover of the catalogue features the word “HOST” with the ® symbol and “hostdirect.com.au”. There is a banner headline on the first page of the spread containing the words “Banquet Crystal by Bohemia” all in bold and upper case rendered in white against a blue background. Below in smaller letters appear the words “Leona Collection. Exclusive to HOST”. Beneath the banner headline on the left is the Banquet logo, which again states that Banquet is “Crystal by Bohemia”. The ® after the word “Banquet” is barely perceptible. On the second page of the spread, across the top, are the words “made in Czech Republic” followed by some words describing the products (Crystal, Rim Toughened, LEAD Free and so on). Beneath the headings are photos of glasses within the range.

277    In my view, a typical consumer, whether wholesale or retail, would understand the reference to “by Bohemia” as it appears in the banner headline to mean that there is an entity called “Bohemia” that is somehow responsible, as a source of origin, for the products promoted. That is what the word “by” in that context most naturally suggests. The most likely view that a consumer would take of those words is that a range of glasses, perhaps called “Banquet”, was produced by an entity known by the name “Bohemia”. They might have thought that this played upon the reputation of “Bohemia” as a region that produced glassware, but nevertheless, the most likely reaction would have been that the source of origin of the goods was such an entity.

278    The use of the Banquet logo beneath the banner headline does not dispel the impression formed by the banner headline. Even though the logo uses the more prominent word “Banquet®”, followed by the smaller “Crystal by Bohemia”, the use of one obvious trade mark (BANQUET) does not preclude the existence of a further trade mark. In Nature’s Blend at [40] the Full Court (Stone, Gordon, McKerracher JJ) approved the following observations of Allsop J (as the Chief Justice then was) in Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik [2002] FCA 390; (2002) 56 IPR 182 at [191]:

It is not to the point, with respect, to say that because another part of the label (the white section with ‘Budějovický Budvar’) is the obvious and important ‘brand’, that another part of the label cannot act to distinguish the goods. The ‘branding function’, if that expression is merely used as a synonym for the contents of ss 7 and 17 of the TM Act, can be carried out in different places on packaging, with different degrees of strength and subtlety. Of course, the existence on a label of a clear dominant ‘brand’ is of relevance to the assessment of what would be taken to be the effect of the balance of the label.

279    The evidence of Mr Sullivan and Ms Flint, recited above at paragraphs 68 to 70 (concerning the use of the words “by Bohemia”) tends to confirm the view that I have otherwise reached. Each accepted that the words do not comfortably sit with a construction that indicates that the goods in question originate from Bohemia. Although each protested their view that customers are likely nevertheless to understand that the origin of the goods lies in Bohemia, I do not find their evidence in this regard to be persuasive. No evidence was supplied by Host to suggest that consumers – whether from the HORECA industry, or more general retail consumers – would regard the phrases in which those words appear in the impugned uses as indicating the geographical origin or quality of goods from such an origin. Host relies upon the evidence of one trader, Mr Francis, the retail buyer at Peters of Kensington, who it submits understood a similar usage of words (“Maximus – Hand Made by Bohemia, Czech Republic”) correctly to mean that the manufacturer was “Maximus” and “not some other brand”. This, Host submits, was good evidence that ordinary consumers would not understand “Banquet Crystal by Bohemia” to amount to a trade mark use. However, Mr Francis’ evidence did not go so far as to say that he understood “by Bohemia” to designate geographical origin.

280    Host submits that where a trade mark owner has chosen a descriptive word for a trade mark, then it is more difficult for a trade mark owner to establish trade mark use. It correctly cites Lockhart J in Pepsico ALR at 193 for the proposition that in the case where a registered trade mark is a generally descriptive word which has acquired a secondary meaning, so becoming distinctive of the plaintiff’s goods as a badge of origin, there is always inherent in the word the risk that even when it is used by others in trade it will be used in its original descriptive sense. In that case the Full Court found that the expression “Double Crunch Kettle Cooked Potato Chips” did not involve the use of the word “Kettle” in a trade mark sense, but in a descriptive sense. The Full Court emphasised that a finding as to the sense in which the word in question is used is to be determined by having regard to the context of its use (see Lockhart J at 193, Sheppard J at 200-201, Sackville J at 213).

281    In the present case it is apparent from the context that, despite the more general understanding of a geographical meaning to be attributed to the word “Bohemia”, the use of that word does not direct the reader to a geographical meaning. Rather, the word is used in a manner that suggests that the author or progenitor of the glassware promoted is connected to “Bohemia”.

282    In relation to the January 2016 catalogue use, I note that it appears in a publication at page 6 of 132 pages. The cover of the catalogue features the word HOST with the ® symbol and “hostdirect.com.au”. On pages 2 and 3 banner headlines at the top feature the words “New from DURALEX…” and “New from PASABAHCE…”, presenting thereby the words Duralex and Pasabahce as brands. On page 6 the words “CZECH CRYSTAL BY BOHEMIA” are all in upper case and similarly suggest that the word “Bohemia” is presented as a brand, as indeed does the preposition “by”. Beneath the banner headline is the Banquet logo, which again states that Banquet is “Crystal by Bohemia”.

283    In my view, a typical consumer, whether wholesale or retail, would understand the references to “by Bohemia” to mean that there is an entity called “Bohemia” that is somehow responsible as a source of origin of the products promoted.

284    The same conclusion as to trade mark use applies equally to the sticker use, where it appears in the catalogues and also as part of the packaging.

285    The packaging use requires separate consideration. Exhibit F is a representative sample. Images are set out in paragraph 58 above. It may be seen that the box includes a dark blue strip wrapped around its centre. On the front of the box the strip contains writing, in white against the dark blue which includes the product type “Flute” above the words “Leona collection”, next to which is a line-drawing of a champagne flute. Separated by a vertical white line is the word “Banquet” rendered in thick white letters followed by ®. Beneath that are the words “Crystal By”, rendered in very small and thin letters about one quarter of the height of “Banquet”. Beneath these words is the word “Bohemia” rendered in letters approximately the same height as “Banquet” but much thinner in breadth. On the sides of the box, line-drawings of 6 flutes appear in the strip, beneath which are some words in various foreign languages that no doubt identify that it is a 6 piece glass set. At the bottom of the sides appears a dark blue circle against the white of the box containing the words “Quality by Bohemia” in white, and surrounded by the words, rendered in dark blue against the white background, “Lead Free Crystal”. The top of the box includes the same rendition of “Banquet Crystal by Bohemia” and the “Quality by Bohemia” circle. Inside, the glassware has no etching upon it, but each glass has affixed to it the sticker (bearing the Banquet logo).

286    The relevant question, again, is whether or not, in the setting in which the word “Bohemia” appears, it would have appeared to consumers as possessing the character of a brand in the sense that it indicates a connection in the course of trade between the goods and a supplier.

287    In my view, having particular regard to the use of the words “Crystal by Bohemia” and the words “Quality by Bohemia” as they appear on the boxes and the further use of the Bohemia logo as it appears on stickers on the flutes inside the boxes, typical consumers of glassware, including retail and wholesale purchasers, would regard the word “Bohemia” as being used in a trade mark sense.

288    The website use is somewhat different in that the word “by” does not appear before “Bohemia”. The wording employed in the website use appeared only for a short period as a result of a technical fault within Host that resulted in the image of the Banquet logo not loading correctly on the website. This fault was to the benefit of Host. The result is that the website contains the image of the glass, followed by words (for example) “Bohemia Flute 210ml – 24 per box” or “Bohemia Footed Beer 370ml – 24 per box”. Thereafter appears a product code and details of price. In my view this usage is likely to be considered by consumers to be descriptive of the geographic origin or style of the glassware promoted, not a representation of trade source.

6.    THE USE IN GOOD FAITH ISSUE – subsection 122(1)(b)(i) TM Act

6.1    The arguments

289    Host contends that if any of the impugned uses identified in section 1.9 above amount to a trade mark use, then it is able to rely on the defence under subsection 122(1)(b) of the TM Act. It contends that the defence is made out first, because the word “Bohemia” is used in good faith to denote “Bohemia” as the place of origin of the goods and secondly because the word “Bohemia” is used in good faith to denote an aspect of the quality of the goods. As elucidated in Host’s defence, it pleads that if the use of the word “Bohemia” constitutes trade mark use, Host’s use was in good faith to describe the geographical origin where the relevant products were manufactured and from which they were sourced, or alternatively to describe the kind or quality or some other characteristic of Host’s products. It further pleads that any use of the words “Bohemia Crystal” was to describe crystal products that were made in Bohemia and/or which conform to the physical characteristics of goods commonly described as “Bohemia Crystal”.