Case Notes, Deceptively similar?, s 44 TMA

“Zombie” marks cannot be cited in s 44 trade mark oppositions

1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12 (21 February 2017)

Registration was sought for the mark HAVANA CLUB ESSENCE OF CUBA in various classes including alcoholic beverages (except beer), entertainment and consultancy services relating to cooking.

Registration was opposed pursuant to ss 42, 44, 61 (TM not an indication of geographic origin) and 62A. No grounds were made out and the application proceeded to registration.

The Hearing Officer found that the s 44 ground was not made out because although the cited mark MATUSALEM EL ESPIRITU DE CUBA was “pending” at the time of the opposed application, by the time of the hearing it had been refused registration (following a hearing).

The HO noted:

In short, what the Opponent wishes me to do is to treat the Refused Application as being a ‘zombie’ application: dead, but still capable of doing damage to a later comer filed during its pendency

Subsections 44(1) and 44(2), he said, are “to be read in the present tense“.  The Opponent did not have a current registration to rely upon and therefore the s 44 ground failed.

Cited marks that are still pending at the time of the hearing will still stand as a barrier to registration, however.   See, for example MHFC Holdings Pty Ltd [2016] ATMO 96.


In relation to s 61, (note that the opponent had had its own mark rejected on this ground – see that decision here) the HO said:

  1. The Opponent’s position here is that because the word ‘Cuba’ appears in its trade marks which were refused registration as a geographical indication that it must follow that, because the word ‘Cuba’ also appears in the Trade Mark, the word ‘Cuba’ must also there be taken to be a geographical indication. I consider that is not necessarily so.
  2. I consider that the correct approach is to consider the Trade Mark as a whole and ask what it is likely to denote to Australians. Here the Trade Mark is comprised of two expressions, firstly the words ‘Havana Club’ and secondly the expression ‘Essence of Cuba’. While it is likely that an Australian seeing the words ‘Matusalem Spirit of Cuba’ on a bottle of rum would understand the expression ‘Spirit of Cuba’ to refer to the spirituous liquors within the bottle as deriving from Cuba, I am not satisfied that an Australian seeing the expressions ‘Havana Club Essence of Cuba’ would be likely to reach the same conclusion….
  1. Here, in the context of goods which are rum, it is obvious that the words ‘Spirit of Cuba’ (and their Spanish equivalent) identify the goods as being spirituous liquors having their origin in Cuba which has a reputation for ‘rum’. In the same context (and in the light of the various definitions of the word ‘essence’ within the Macquarie Dictionary) the expression ‘Essence of Cuba’ does not appear to be amenable to the same understanding.
  2. The expression ‘Essence of Cuba’ thus appears to me to be somewhat indefinite in its denotation. In terms of the definition of ‘geographical origin’, I am not satisfied that the Trade Mark identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.
  3. I further note that the Holder has stated that the goods of interest to it contain Cuban rum. The evidence shows that the goods are various ‘bitters’ that are used to make alcoholic drinks and these various bitters contain Cuban rum. The Holder, had it been necessary, has established a defence under subsection 61(2) of the Act.


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