A.I.A. Agricola Italiana Alimentare S.p.A v Borgo Developments Pty Ltd as trustee for the L Borgo Trust

[2018] ATMO 184

TRADEMARKSACT 1995

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

Re:Opposition by A.I.A. Agricola Italiana Alimentare S.p.A to registration of trade mark application number 1809076 (29, 35, 43) – BORGO Logo – in the name of Borgo Developments Pty Ltd as trustee for The L Borgo Trust

DELEGATE:

Debrett Lyons

REPRESENTATION:

Opponent: no representation; no submissions

Applicant: Mark Metzeling of Macpherson Kelley, Solicitors

DECISION:

2018 ATMO 184

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 58, 60 and 62A of the Trade Marks Act 1995 considered – none established and opposition unsuccessful.

Background

1. This matter concerns an opposition brought by A.I.A. Agricola Italiana Alimentare S.p.A (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark appearing below which is the subject of application 1809076 made by Borgo Developments Pty Ltd as trustee for The L Borgo Trust (‘the Applicant’).

(‘the Trade Mark’)

1. Application 1809076 was made on 14 November 2016 (‘the filing date’, or as the context requires, ‘the priority date’, those dates being the same in this case) and had previously been examined by this Office as mandated by s 31 of the Act. Following examination, the application had been advertised in the Australian Official Journal of Trade Marks on 6 April 2017 as accepted for possible registration for the following goods and services:

   Class 29: Meat, including processed meat products, smallgoods and Salumi; meat extracts

   Class 35: Retail and wholesale services, namely the retail and/or wholesale of meat (including processed meat products, smallgoods and Salumi), meat extracts

   Class 43: Services for providing food and drink; restaurant services, including Salumi bar services

   (‘the Goods and Services’)

1. On 6 June 2017 the Opponent filed a Notice of Intention to Oppose the registration and filed a Statement of Grounds and Particulars (‘the SGP’) on 5 July 2017. The SGP nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 28 July 2017.

1. The parties each filed evidence (described later) after which they were invited to be heard in Canberra on 3 September 2018. The Opponent advised that it would not attend the hearing and would not be filing submissions.  The Applicant asked to be heard and provided me with a written outline of its submissions in accordance with the pre-hearing timetable I set. At the hearing the Applicant was represented by Mr Mark Metzeling of Macpherson Kelley who attended by telephone.

Grounds of Opposition, Onus and Standard of Proof

1. Since there are no submissions from the Opponent I must assume that its intention is to rely on all grounds of opposition listed in the SGP and mentioned above. The onus of proof to establish at least one of those grounds rests upon the Opponent.1 The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.2 The date at which grounds are to be determined is 14 November 2016, being the filing (and priority) date of the application.3

1 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

2 Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

3 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Evidence

1. The parties filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’). The Opponent’s Evidence in Support of its opposition comprises the declaration of Donato Didone made 31 October 2017 with Annexures 1 to 20 (‘Didone’). It includes the declaration of Ninel Mollinari (‘Mollinari’).

1. The Applicant’s Evidence in Answer comprises the declaration of Luigi Victor Borgo made 18 January 2018 with exhibits LB-00 to LB-22 (‘Borgo’). The Opponent’s Evidence in Reply comprises the declaration of Lisa Catherine Neilson made 22 March 2018 with Annexures LCN1 to LCN3 (‘Neilson’).

1. The Applicant filed evidence pursuant to regulation 21.19 of the Regulations being a further declaration of Luigi Victor Borgo made 7 April 2018 with exhibits LB-23 to LB-30 (‘the Reg 21 Evidence’). After further consideration of the opposition I have determined that the Reg 21 Evidence has no impact on my decision as it has been reasoned and thus I do not need to consider its admissibility.

1. In outline, the declarations lay claim to the following histories.

The Opponent

1. The Opponent is a charcutier which makes its meat products in Italy and sells them internationally by reference to several brand names.4 The Opponent’s business grew out of a single delicatessen established in Cremona, Italy by a Pietro Negroni in 1907.5 The Opponent asserts rights in the mark which appear below which it says enjoy the status of common law trade mark in Australia:

(‘the Common Law Mark’)

4 Didone [7], [8].

5 Ibid., [7].

1. The Opponent is the owner of the following Australian trade mark registrations:

Number	Priority date	Trade mark	Goods
Regn. 735849	2 June 1997	NEGRONI	Class 29: Meat and meat products, including cooked, cured and smoked sausage, ham, salami, mortadella; jellies, jams, milk products, edible oils and fats
Regn. 1176139	11 May 2007	Class 29: Meat, fish, poultry and game; meat extracts; charcuterie,             sausages, preserved meats; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products;  edible oils and fats
Regn. 1459583	21 Sep 2011	Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

(‘the Registrations’)

1. The Opponent states that the Common Law Mark and the trade marks of the Registrations have  been  continuously  used  in  Australia  since  2007.6  The  Opponent  refers  to obstacles to the use of these marks in Australia prior to 2007 when its smallgoods were “prohibited from being imported into Australia due to Australia’s strict food importation laws.”7 Didone goes on to  state that  “[w]hilst  there are currently still obstacles to the importation of a large range of the NEGRONI products, [the Opponent] is very eager to import the [f]ull [r]ange of NEGRONI [p]roducts into the Australian market as soon as it becomes possible.”8

The Applicant

1. Borgo declares that “the Applicant exclusively licenses Borgo Smallgoods Co. Pty Ltd to use the Trade Mark in relation to the Goods and Services”9 and that “the Applicant, its licensee and its predecessors in title have used the Trade Mark extensively in Australia since the late 1970’s.” The reference to predecessors in title is a reference to a business, Borgo Smallgoods Company, established by the declarant’s parents in Brisbane in or about 1966 which branded its products with a mark “that consisted solely of the star without the surrounding circles”.10 Borgo declares that in the late 1970s or early 1980s he updated that logo by adding “the Italian flag colours as three circles (green, white and red) around the star logo”11 together with his “signature inside the star to arrive at the logo as it is depicted today.”12 Borgo declares that since that time the Trade Mark has been used on a range of Italian smallgoods

   such as prosciutto, mortadella, coppa, pancetta, baked hams, sausages, sopressa and salami, all sold in Australia.

Consideration

1. I note here that whilst the Opponent was not represented at the hearing and did not provide written submissions, the Neilson declaration is largely argumentative, taking issue with the

6 Didone [22].

7 Id.

8 Didone [23].
9 Borgo [5].
10 Borgo [16].
11 Borgo [17]-[18].

12 Borgo [19].

Evidence in Answer, and I have considered those arguments, together with the SGP, in reaching this decision.

Section 44

1. Section 44 of the Act provides, inter alia:

44  Identical etc. trade marks

(1)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

(2)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)    it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

1. In its SGP the Opponent asserts that the Trade Mark is substantially identical with or deceptively similar to trade mark registrations 1176139 and 1459583 detailed above13 (‘the Opponent’s Registrations’) and that those marks are registered “in relation to the same or similar goods as the goods/services for which the [Trade Mark] is sought to be registered.” I note here that the assertion is wrongly put as the Trade Mark is filed in respect of goods and

13  There is reference to Regn 1414432 but it has been removed from the Register and need not be considered further.

services and so the formulation of registered goods being “the same or similar goods” is not complete.   In fact, the Opponent must show that:

(1)    the Opponent’s Registrations have a priority date which is earlier than the priority date of the Trade Mark (the first requirement’); and

(2)    the Opponent’s Registrations are in respect of at least some goods which are similar/closely related to at least some of the Goods and Services (‘the second requirement’); and

(3)    one or more of the trade marks of the Opponent’s Registrations is substantially identical with or deceptively similar to the Trade Mark (‘the third requirement’).

1. The Opponent’s Registrations have earlier priority dates than that of the Trade Mark and so the first requirement is satisfied. Further, I find that the goods of the Opponent’s Registrations are either similar or closely related to the Applicant’s Goods or Services and so

   the second requirement is satisfied.  Concerning substantial identity, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J stated:14

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J.

(1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

21.More recently, the Federal Court has looked to what it called the “dominant cognitive cues” within the trade marks under consideration15 but that exercise is much the same as that of determining the essential features – in both cases it requires identification of those parts of the trade marks which are, or go to form, their distinguishing characteristics.

1. I find that the only, or essential, feature of the Opponent’s Registrations is the word NEGRONI.  A total impression of dissimilarity emerges from a side by side comparison of

14 [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

15 Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205; 124 IPR 264; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2012] FCA 1022, [38]-[46].

the Opponent’s Registrations and  the Trade  Mark.     The compared  trade  marks  are  not substantially identical.

1. As far as deceptive similarity is concerned, in Shell at [13] Windeyer J said of ‘deceptive similarity’:

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. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "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 deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.

1. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd16 referred to earlier authorities and summarised the principles to be applied in  the assessment of deceptive similarity:

Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

16 [2012] FCA 1022; 97 IPR 183

First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths17 at [49]; Australian Woollen Mills18 at 658.

Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s19at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths

at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating20 at 594 – 595.

Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect

17 Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

18 Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
19 Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

20 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].21

1. Applying these principles, I find it impossible to apprehend that an ordinary person exercising an ordinary amount of attention could confuse the parties’ trade marks. To the degree to which the compared marks share elements at all, those elements are commonplace geometric forms. Dominant to those elements are two Italian family names bearing no visual or aural resemblance and otherwise having no apparent suggestion of association with each other. They are not deceptively similar and so it follows that the Opponent has not established its ground under s 44 of the Act.

Section 60

1. Section 60 of the Act provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)    another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)    because of the reputation of that other trade mark, the use of the

first-mentioned trade mark would be likely to deceive or cause confusion.

Note:       For priority date see section 12.

1. Accordingly, the Opponent needs to establish to the satisfaction of the Registrar that:

   (a)   the trade mark(s) upon which it relies had a reputation in Australia at the priority date; and

   (b)   because of that reputation the use of the Trade Mark would deceive or cause confusion.

2. In the SGP the Opponent asserts that “the Opponent’s Marks, and close variations including [the Common Law Mark] have been used in Australia since as early as 2007 in relation to meat and charcuterie”, that those same marks together with “earlier forms” (essentially, minor variants of the Common Law Mark with the star, with and without the concentric ring

21 [2012] FCA 1022, [37] – [46].

element) “have been used in Italy since before 1950” and that these marks have collectively acquired a reputation in the Australian marketplace and a larger reputation in Italy which “has spilled over into Australia.”

1. In McCormick & Co Inc v McCormick22 (‘McCormick’) Kenny J asked:

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

1. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee23 Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)24 was to be:

   ... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   (Implicitly approved by the Full Federal Court (Moore, Tamberlin  and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). 25

2. Regarding the measurement of reputation, in McCormick Her Honour went on to state:26

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91- 560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as

22 [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

23 [2000] FCA 1587; (2000) 50 IPR 1.

24 The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

25 [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

26 Op cit at [86].

well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a

$100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. The Applicant is critical of the Opponent’s evidence of alleged reputation in Australia, rightly in my view, for the principal reason that much of the sales information fails to clearly identify if the use has been simply of the word NEGRONI, or use of that word with the star or star and circles device elements. The Opponent acknowledges that it still has difficulty selling its goods in Australia due to the regulatory environment. The Mollinari declaration states that even those goods that are permitted to be sold by the Opponent are sold through restaurants, delicatessens and fruit barns, indicating to me, if not a narrow range of purchasers, then purchasers who may never be exposed to the branding at all. The claim to a spillover reputation in Australia is not compelling. Further, although the Opponent held for a time an Australian registration for the star and circles device, simpliciter, there is no evidence at all of use of that sign without the word NEGRONI.

1. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi (‘Pottle’) the Registrar’s delegate observed:27

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

1. In my assessment the evidence shows, at best, that the word NEGRONI and the Common Law Mark might have acquired some very modest level of awareness with a small section of

27 [2012] ATMO 124 at [40].

the Australian public. What follows from the observations in Pottle is that a very low reputation is most unlikely to give rise to confusion or deception in the case where there is almost no similarity between the parties’ marks. Here, there is no possibility that use of the Trade Mark would cause confusion or deception having regard to the Australian reputation in the NEGRONI word mark. Moreover, the similarity between the Trade Mark and the Common Law Mark (shown together below for convenience) is limited to non-identical star and circles elements.

1. The resemblance that does exist must be offset by the facts that (i) the “shared” elements are commonplace geometric forms; (ii) the coloring of the concentric circles are the colours of the Italian flag, and (iii) dominant to those elements are two very different Italian family names. I find that each of the trade marks under consideration has its own identity and are likely to be apprehended by the public as such. On this basis, there was no real likelihood of confusion or deception because of the reputation of the Opponent’s Common Law Mark at the priority date of the Trade Mark.

1. The Opponent has not established its ground under section 60 of the Act.

Section 42

1. In its SGP the Opponent asserts that by reason of its use of “the Opponent’s Marks and close variations” as previously claimed, use of the Trade Mark would be “contrary to ss 18 and 29 of the Australian Consumer Law … or alternatively, constitute the common law tort of passing off or constitute infringement of the Opponent’s Marks under the Australian Copyright Act 1968(Cth).”

1. Subparagraph 42(b) of the Act relevantly provides:

42  Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

[…]

(b) its use would be contrary to law.

1. The onus is on the Opponent to establish on the balance of probabilities that use of the Trade Mark would, rather than could, be contrary to law.28 The Opponent has failed to establish the ground of opposition under s 60 of the Act and it is well recognised that the test for “misleading or deceptive conduct” under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for “deception or confusion” under s 60.29 Accordingly, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL. Further, where use of a trade mark does not contravene s 18 of the ACL, neither will it contravene s 29 of that Act or constitute passing off at common law. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered – in connection with the now superseded Trade Practices Act 1974 (‘the TPA’) – that “the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53(c) and (d)”.30 Section 53(d) of the TPA was the equivalent provision to section 29(1)(h) of the ACL. In Re Equity Access Pty Ltd v Westpac Banking Corporation Hill J also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:31

   The scope for the operation of section 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under section 52 or section 53 will invariably mean that proceedings for passing off would likewise fail.

1. Furthermore, there is no evidence of copying and the uncontradicted evidence is that the Trade Mark is an original work of Luigi Borgo. I find there is no basis for a complaint that use of the Trade Mark would infringe any copyright. It is for these reasons I am not satisfied that use of the Trade Mark would be contrary to law.

1. The Opponent has not established the ground of opposition under s 42 of the Act.

28 Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

29  See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

30 [2003] FCA 104, at [107].

31 [1989] FCA 506.

Section 58

1. Section 58 requires that, at the filing date, the Applicant was the owner of the Trade Mark. In Shell Co. (Aust) Ltd v Rohm and Hass Co.32 it was held that, to succeed under s 58, an opponent must demonstrate use in Australia by a person other than the applicant, before the priority date of the applied-for trade mark, of a trade mark which is at least substantially identical in relation to goods or services which are the same as, or the same kind of thing as, those for which registration is sought. I have already found that none of the trade marks

   registered or used by the Opponent is substantially identical to the Trade Mark and so it follows that the Opponent has not established this ground of opposition.

Section 62A

1. Section 62A states:

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

1. The Borgo declaration provides a detailed account of the evolution of the Applicant’s branding up to the creation of the Trade Mark, all prior to the filing date of the application for registration. The Opponent has not provided any compelling evidence demonstrating that the application was made in bad faith. Had the evidence from both sides been more fulsome a question may have arisen as to the adoption by both parties of a star and circle element to their marks but in the absence of further information, and given what I have already said about those design elements, there is nothing which concerns me about the Applicant’s behavior or its account of the facts.

1. I find that the Opponent has not established a ground of opposition under s 62A.

Decision

1. Section 55 of the Act relevantly provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)    to refuse to register the trade mark; or

32 [1948] HCA 27.

(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.

1. The Opponent has not established a ground of opposition.

1. 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 and the disposition of the application should be in accordance with the court’s order or direction.

Costs

1. The Applicant sought its costs in the event it was successful in this matter and I accordingly award costs against the Opponent at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995, noting here that the Applicant had before the hearing successfully obtained an order for security for costs.

Debrett Lyons Hearing Officer

Hearings and Oppositions 7 November 2018