7-Eleven, Inc v *Harry Petridis & Simon Wittaker

[2006] ATMO 12

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by 7-Eleven Inc to registration of trade mark application 920401(30),(32) SLUDGEE & Device, proceeding in the name of Harry Petridis & Simon Whittaker.

Delegate:

Ian Thompson

Representation:

Opponent

Peter Hallett of Griffith Hack

Applicant

Did not appear or put in written submissions

Decision:

1.s52 opposition: deceptive similarity – sections 44 and 60 opposition not established

2 Costs ordered against opponent.

Background

1. Harry Petridis and Simon Whittaker, ('the applicants') have filed an application to register a trade mark, current details of which are:

   App No:  920401

   Filing Date:  22 July 2002

   Acceptance Date:  19 February 2004

   Goods: Class: 30 Frozen beverages, ice drinks.

   Class: 32 Syrups, concentrates.

   Trade Mark:  

2. On 12 May 2004, 7-Eleven Inc ('the opponent') filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The Notice cites most of the available grounds under the Trade Marks Act 1995 (‘the Act’).

3. Evidence in support and further evidence in support were served and filed by the opponent as allowed by the Act and Regulations thereto. There is no evidence in answer or reply from the applicant.

4. A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Melbourne, on 12 September 2005.  Peter Hallett of Griffith Hack, Patent & Trade mark Attorneys represented the opponent.  The applicants did not appear and did not file submissions.

5. At the hearing the opponent relied on sections 41, 44 and 60 of the Act and I now find that those other grounds mentioned in the Notice have not been established.

   Evidence

6. The opponent’s evidence comprises two declarations.  The first is by Mr Michael Davis a Vice President of the opponent.  The second is by Concettina Oudyn, a business investigator.

7. Mr Davis attests that the stores that his company owns or franchises (it is not clear which) 322 stores which operate under the trade mark 7-ELEVEN in Eastern Australia.  The first of these stores opened in 1987.  These stores sell (amongst other convenience items) a frozen beverage under the trade mark SLURPEE. 

8. While Mr Davis attests to the public recognition of the trade mark SLURPEE, it is unclear to me what some of his claims actually mean.  For instance, Mr Davis states that in a survey by Cadbury Schweppes, 53% of respondents had purchased semi-frozen beverages at 7-Eleven stores, with the next highest frequency being 33% who purchased such beverages at food courts.  I am not sure if this survey claims that 53% of all respondents had purchased the opponent’s frozen beverages or that 53% of respondents who had purchased frozen beverages had purchased those of the opponent.

9. Whatever the correct interpretation is, the opponent supplies sales figures for the last three years of sales under the trade mark SLURPEE – these are in the many millions of dollars.

10. Concettina Oudyn attests to a survey in a food court of the public recognition of a frozen confection in a container with the trade mark SLURPEE obliterated.  The results appear to suggest that the beverage might either be identified by some of the respondents as originating, or being expected to originate, at a 7-ELEVEN store.

11. There are obvious problems with putting much weight on such a survey.  It seems to me that the survey might only show that the public knows that one of the most logical places to purchase frozen beverages is at 7-ELEVEN stores.  It seems to me to say little about the public recognition of the SLURPEE trade mark per se. 

12. However, it appears, from the evidence of Mr Davis, that the opponent’s trade mark SLURPEE has a reputation within Australia – it is widely promoted and advertised and has achieved considerable sales.[1]

    [1] McCormick and Co Inc v. McCormick (2000) 51 IPR 102

13. The opponent also has trade mark registrations in Australia which comprise or include the word SLURPEE.  These are:

    Reg Number  302512

    Priority date:  25 November 1976

    Goods/Services:  Class: 32  Semi-frozen soft drinks; flavoured slushes of ice and soft drinks, all being beverages included in Class 32

    Trade Mark:  SLURPEE

    Reg Number  800649

    Priority date:  19 July1999

    Goods/Services:  Class: 30  Frozen confections

    Trade Mark:  SLURPEE X-TREME ICE

    Reg Number  951549

    Priority date:  23 April 2003

    Goods/Services:  Class: 30 Semi-frozen soft drinks

    Trade Mark:  BRAINFREEZE SLURPEE

14. As the opponent has registrations which date from before the priority date of the opposed application, and its SLURPEE trade mark had a reputation at the priority trade of the opposed application, and at least some goods which are similar to those on the opposed application, the issues in terms of sections 44 and 60 resolve themselves to issues surrounding the similarity of the trade mark.

15. I will discuss the ground under section 41 first.

    Section 41

16. Section 41 provides, insofar as it is relevant to these proceedings:

    41  Trade mark not distinguishing applicant’s goods or services

    (1)…

    (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.

    Note:For goods of a person and services of a person see section 6.

    (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.

17. If the Registrar is unable to decide whether the trade mark is inherent adapted to distinguish the goods of services, subsections (5) and (6) come into play, as per subsection 41(4).

18. The inherent adaptation of a trade mark is assessed by reference to the test in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, which has been described as "probably the best known Australian authority on the notion conveyed by the phrase 'inherently adapted to distinguish'"[2].  Kitto J noted:

    “... the question whether a mark is adapted to distinguish [is to] be tested 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”.

    [2] Kenman Kandy Australia v Registrar of Trade Marks (2002) AIPC 91-817

19. The opponent argues that the word ‘sludge’ (although it has pejorative overtones) is one which describes the semisolid, finely broken or half-formed ice in frozen beverages such as those in which the parties trade.

20. I agree that this may be so.  However, it is not clear to me why another trader would need to use the word ‘sludge’ in the normal course of trade as the word conjures to mind more immediate meanings such as, “Semisolid material such as the type precipitated by sewage treatment” and, “Mud, mire, or ooze covering the ground or forming a deposit, as on a riverbed” or, “An agglutination or aggregation of blood cells forming a semisolid mass that often impedes circulation”.[3]

    [3] The American Heritage Dictionary of the English Language, Fourth Edition

21. In the Internet searches of the word ‘sludge’ provided by the opponent in its evidence, there is no use by any trader in relation to the relevant goods – although the search results suggest that it could have an allusive function.

22. However, not only does the word ‘sludge’ have pejorative overtones – it does not actually appear in the trade mark.  Rather the word SLUDGEE is the dominant feature of the opposed trade mark.  I consider that the fact that the word ‘sludge’ has such unfortunate meanings and connotations combined with the fact that the derivative SLUDGEE is the word that actually appears in the trade mark suggests that the word is one which other traders would be most unlikely to innocently require to describe a quality or characteristic of their frozen beverages in the normal course of trade.

23. Further, of course, the word SLUDGEE does not appear on its own in the trade mark and, whatever its inherent capacity to distinguish the goods, account must be taken of the inherent capacity to distinguish of the trade mark as a whole.  In other words, the assessment should be not of the word SLUDGEE on its own but of the trade mark as a whole, whatever the inherent capacity of the separate components may be.[4]  The honest requirement of other traders to use the word SLUDGEE superimposed over a stylized representation of a bucket or cup of frozen beverage is, I consider, quite remote.

    [4] Diamond T. Motor Co's Appn (1921) 38 RPC 373 (Ch.D.).

24. The opponent has not established the ground of opposition under section 41.

    Deceptive Similarity

25. Section 10 of the Act defines ‘deceptive similarity’ in the following terms:

    10  Definition of deceptively similar

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

26. The start point for the consideration of deceptive similarity is the familiar one of trade mark law.  In Shell Company of Australia Co Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (reversed on appeal but not on this principle) Windeyer J said:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

27. This test is similar to that applied by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, at page 658:

    In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

28. The “impression or recollection which is carried away and retained”, referred to above, include the effects of any ‘imperfect recollection’ of the trade mark: Aristoc Ltd v Rysta Ltd [1945] AC 68, (1943) 60 RPC 87.

29. The comparison is to take place in the context of the likely marketplace for the goods and the surrounding circumstances are to be taken into account.  In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, Parker J said:

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

30. Further, I am to consider the likely effect of the use of the trade marks in a fair and normal manner as per the following from Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8:

    Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.

31. Accordingly, what I am to consider is the trade marks:

    ·     Not side by side but the impression of the marks

    ·     Used in a fair and normal manner

    ·     Whether they have an essential feature

    ·     The idea of the trade marks

    ·     The trade marks as wholes

    ·     The effects of imperfect recollection

    ·     Within the relevant marketplace

    ·     Taking account of the surrounding circumstances

32. The consideration is one which is on the balance of probabilities, although the opponent should clearly establish its opposition to my satisfaction.[5]

    [5] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, Lomas v Winton Shire Council [2003] AIPC-91-839, Kowa Company Ltd v N V Organon [2005] FCA 1282 paragraph [139].

33. The trade marks are, although derived and constructed in a similar way, different and distinct from each other.  The major features of the trade marks are words which are derived from different dictionary words which have different meanings and allude obliquely to distinct qualities of the goods. 

34. The trade marks are thus likely to be remembered and recalled in quite different ways. 

35. That said, it is quite probable that the applicants have coined their trade mark with the opponent’s trade mark in mind.  The two words begin with the same three letters and end with the same two letters and both have two syllables.  However, coining a trade mark with another person’s trade mark in mind is permissible as long as the new trade mark will not deceive or confuse.  As noted in Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 318 at 331:

    ‘The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them and a proprietor of a mark is not entitled to a complete monopoly of all words conveying the same idea as that mark: [Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536] Cooper Engineering at 539. This fact can, however, be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive: Cooper Engineering at 539. The presence of a common idea may be a determining factor because the idea is more likely to be recalled that [sic] the precise details of the mark (Jafferjee v Scarlett (1937) 57 CLR 115 at 121-2 (Jafferjee)) but the suggestion of differing ideas may serve to reduce the risk of confusion (Johnson & Johnson v Kalnin (1993) 114 ALR 215; 26 IPR 435 at 440 (Johnson & Johnson)). The idea that is relevant is the idea that the mark will naturally suggest to the mind of one who sees it: Jafferjee at 121.’

36. I am not satisfied that the trade marks are deceptively similar.

37. The opponent has not established its grounds of opposition under sections 44 and 60.

    Decision

38. Section 55 of the Act provides:

    55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or
    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:  For limitations see section 6.

39. No ground of opposition has been established and the trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

40. Costs may follow the event and, should the applicant’s have encountered claimable costs I order costs against the opponent at the official scale.

    Ian Thompson

    Hearing Officer

    Trade Marks Hearings

    31 January 2006