Aceto Balsamico del Duca di Adriano Grosoli SrL v Registrar of Trade Marks
[2008] ATMO 2
•10 January 2008
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International registration designating Australia 1165188 (International Registration No. 913154)(30) - SQUIZITO & DEVICE- in the name of Aceto Balsamico Del Duca di Adriano Grosoli S.r.l.
| Delegate: | Rachel Dunn |
| Representation: | Applicant: Dawn Logan Keeffe of Spruson & Ferguson Patent and Trade Mark Attorneys of Sydney |
| Decision: | 2008 ATMO 02 Section 38 - acceptance to be revoked |
Background
Aceto Balsamico Del Duca di Adriano Grosoli S.r.l (“the holder”) requested protection in Australia for the following international registration designating Australia (‘IRDA’):
Application Number: 1165188
Priority Date: 11 October 2006
Trade Mark:
Acceptance advertisement: 19 April 2007
Following receipt of a letter from a third party, P&T Basile Imports Pty Ltd (“P&T”)[1], a delegate of the Registrar has proposed revocation of the acceptance of this IRDA, according to the provisions of section 38 of the TradeMarks Act 1995 (“the Act”). The holder invoked the right to be heard on the matter of the proposed revocation. I was delegated to hear the matter which came before me on 10th December 2007. Dawn Logan Keeffe of Spruson & Ferguson in Sydney appeared for the applicant by telephone.
[1] P&T Basile Imports Pty Ltd has lodged a notice of opposition to the protection of this IRDA.
The IRDA file shows the trade mark was researched and reported on in the normal fashion. No substantive matters were raised, and the IRDA was accepted at first report for possible protection. During the examination, the examiner performed searches for conflicting trade marks, and the search strategy used appears to be thorough and all encompassing. Amongst the other searches conducted the examiner searched trade marks containing the part word ‘squi’ and also searched phonetic equivalents of the word ‘squizito’; both of these searches were appropriate and should have raised trade marks of interest to the examiner for further consideration.
P&T’s agent, Allens Arthur Robinson, sent a letter to IP Australia pointing to the perceived shortcomings of the examination and requesting that acceptance be revoked because ‘an error occurred during the course of examination’. In particular, the letter referred to the following trade mark registration, carrying an earlier priority date. The agent postulated that this earlier registration appeared not to have been considered by the examiner as it did not appear in the extract list appended to the search strategy.
Trade mark registration: 714911
Owner: P& T Basile Imports Pty Ltd
Goods Specifications:
Class: 29
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats
Class: 30
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, including pasta and pasta products, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice
Trade Mark:
The trade mark registration bears the following endorsement:
Endorsements: When the trade mark is used for items in the specification of goods other than ORECHIETTE, the word ORECHIETTE in the trade mark will be changed to accord with those other items. * The applicant has advised that the translation of the ITALIAN word appearing in the trade mark is EXQUISITE.*
P&T’s letter was considered by a senior officer who then reviewed the file. A letter was sent to the holder proposing revocation because the examiner had not taken into account all the circumstances that existed at the time 1165188 was accepted, and it was reasonable to revoke the acceptance.
The holder then requested to be heard on the issue of the revocation.
Holder’s submissions
The holder’s submissions at the hearing addressed the two arms of the revised section 38, being firstly whether the IRDA should have been accepted, and secondly, whether it is reasonable to revoke considering all the circumstances. Ms Logan Keeffe claimed that the examiner was in fact correct not to have cited 714911. This view was presumably based on the supposition that registration 714911 had been considered by the examiner. The agent argued that the recent amendments to the Act did not change the circumstances that existed previously in relation to revocation, i.e. that a simple change of opinion was insufficient to allow revocation. Ms Logan Keeffe maintained that there needed to be ‘an error of judgement or omission on the part of an examiner’ when accepting an application for registration.
10. The submissions then went on to demonstrate that the trade marks in question were not deceptively similar. The agent referred to the fact that the word ‘squisito’ is an Italian word, commonly known in Australia, which may be translated into English as the word ‘delicious’. Despite the fact the words ‘squizito’ and ‘squisito’ are phonetic equivalents, the agent contended that the examiner was correct in not citing the earlier trade mark on the basis that both contain descriptive matter and that when considered as wholes are not deceptively similar.
11. Ms Logan Keeffe’s submissions then went on to the second arm of section 38, that is, that revocation must be reasonable given the present circumstances. The agent noted that a notice of opposition had been lodged and a first extension of time for the service of evidence-in-support had been requested and allowed. As a consequence of the opposition being ‘well underway’ the agent has argued that the proposed revocation of acceptance by the Registrar is not appropriate and simply represented ‘an exercising of the discretion of the Registrar with caprice and over caution’. Ms Logan Keeffe has argued that the proper course of proceedings would be to allow the opposition to continue and have the validity of the respective parties’ rights resolved in that forum.
The Law
12. Revocation of acceptance is governed by section 38 of the Act, as amended by the Intellectual Property Laws Amendment Bill 2006, and reads as follows:
Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the acceptance, taking account of all the circumstances
13. The amended section 38 clarifies that the Registrar is able to take account of any circumstances that existed which should have prevented acceptance of a trade mark. Contrary to previous provisions, it is important to note that there is nothing in the amended legislation that limits the Registrar in what she may consider. Previously the ambit of the Registrar was construed narrowly and focused on those cases involving ‘error and omission’ or ‘special circumstances’, however, this is no longer the case.
14. My decision in this matter goes only to the issue of whether the original acceptance was unsound taking account of all the circumstances that existed when the IRDA was accepted. Should I find that the acceptance was unsound, as a delegate of the Registrar, I do have the discretion not to revoke, but to allow the opposition already underway to proceed.
Discussion
15. I have reviewed the examination file of application 1165188 in detail. It is worth considering the normal practice of an examiner in relation to the conduct of searches of the register in order to ascertain the basis for any decision made. An examiner builds a search strategy by entering different parameters into either one or two fields of the search facility. Each search request brings up a certain number of ‘hits’. These ‘hits’ are the number of trade mark records matching the search criteria. The examiner then reviews each record one by one, extracting those that immediately appear similar to the trade mark of the application or require further consideration.
16. Once the search is completed the examiner will then look more closely at the list of extracted trade marks. The extracts are then annotated accordingly to show the outcome of the consideration, for example, that the trade mark has been cited, or that it has been considered but not cited with a brief reason why not.
17. In the current case, the search strategy indicated two searches where registration 714911 should have appeared before the examiner due to the search parameters entered. The file shows that this trade mark was not extracted and, in fact, only one trade mark other than the holder’s own appeared on the extract list. It would be normal practice for an examiner to extract trade marks that were, at first glance, considered substantially identical, deceptively similar, contentious, or where the examiner was unsure and wished to extract the trade mark for a further consideration. In this case, what is clear is that the extract for 714911 did not form part of the extract list appended to the search strategy. It is therefore not possible to ascertain whether the examiner assessed registration 714911 in terms of section 44 or not. I will now consider how registration 714911 should have been assessed in terms of section 44 by the examiner.
18. Ms Logan Keefe discussed at length her claim that the trade marks in question were not deceptively similar, drawing on the established authorities for the comparison. The issue of substantial identity was not touched on. Whilst I agree that there are clearly differences between the trade marks I cannot agree that they are not deceptively similar.
19. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415:
‘The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]’
The Court added at 416, that:
‘[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.’
In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.[2]
The principles laid out in these tests have not been challenged.
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
20. I consider that the essential feature of 714911 is the word Squisito, and that of IRDA 1165188 is the word Squizito. The agent’s submissions provide the information that the word ‘squisito’ is Italian for ‘delicious’ or ‘exquisite’ while ‘squizito’ appears to be used in popular culture as an alternative spelling of the Italian word. Both the terms must be considered as phonetic equivalents of each other as they are identical aurally save for the substitution of the ‘z’ and ‘s’ which produce a similar sound. In addition, both words convey the idea of a word of European origin, irrespective of whether an ‘s’ or a ‘z’ appears in the middle of the word. Also, the examiner’s research has shown that the word ‘squizito’ is used on Italian and Spanish language websites.
21. Ms Logan Keeffe has argued that the word ‘squisito’ is descriptive and a well known term in the Australian community. She has argued that this term ‘has become used in common parlance by English speaking consumers as a complimentary term for food and drink, in a similar way that other foreign words are used in relation to food, i.e. ‘delizioso’ or ‘trés bien’.
22. Whilst I agree that it is likely that the word is well known and used in certain pockets of the population, for instance, the Italian restaurant community, I cannot agree that this word and its meaning would be well known in the general population, even in connection with food related goods and services. The evidence provided by the agent demonstrating this widespread knowledge relates exclusively to use in menus and descriptions of Italian restaurants where non Italian speaking customers may be able to surmise a general meaning from the context of use. However, I do not see this as indicating a common knowledge of the meaning in the population at large as one expects to find for terms such as ‘al dente’, ‘bon appetit’ or ‘cuisine’. Were the term ‘squisito’ as well known as claimed I would expect it to appear in the Macquarie Dictionary as do the three examples just mentioned.
23. In addition to the words the two trade marks contain graphical elements that the holder’s agent has argued provide significant visual differences between the trade marks. The registered trade mark contains a small crown device containing a smaller letter ‘s’ above the words. The font I would describe as a standard cursive style for the word ‘squisito’ and a standard block style for the descriptive element ‘orecchiette’. There also appear to be some faint oblique stripes behind the word, although it is not entirely clear that these form part of the trademark or are part of the packaging. The holder’s trade mark is written in a standard font. The letter Z is much enlarged and twisted in such a way that the ‘arm’ and ‘foot’ of the letter hook around the letter ‘i’ that sit on either side. The Z is depicted in two shades of grey which again separates it from the rest of the word which appears in black.
24. Clearly there are visual differences between the trade marks. However, it is my opinion that the strong visual and aural similarities in the predominant words ‘squisito’ and ‘squizito’, coupled with the idea that they both will be seen and remembered as words of foreign origin, creates the impression that goods bearing the two trade marks emanate from the same trade source. This is entirely in keeping with the High Court in Cooper Engineering at 539[3]:
‘… the fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.’
Clearly a registration does not give a monopoly in an idea where there is nothing else in the mark to suggest that confusion may occur, but where several elements within the trade marks give an overall impression of similarity there is a danger of confusion and the trade marks must be considered deceptively similar.
[3] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952)86 CLR 536
25. For me to decide that a ground for rejection applies under section 44 I must also consider the goods to which the two trade marks will be applied. The goods of the IRDA 1165188 are as follows;
Class: 30 Coffee, tea, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, Balsamic vinegar of Modena, sauces (condiments); spices; ice.
The registered trade mark is applied to goods in class 29 in addition to the following goods in class 30:
Class: 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, including pasta and pasta products, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
26. Clearly the majority of the respective specifications of goods overlap. These goods are not particularly specialised or expensive but would rather be considered ‘everyday’ purchases by most consumers. Consequently, these are not the sorts of goods that one would expect a customer to give a great deal of thought to or to deliberate over their purchase. It could be expected that the majority of consumers of these goods in Australia would be less than familiar with the Italian language and so the slight variation in spelling of the words ‘squisito’ and ‘squizito’ would go largely unnoticed.
27. I agree with Ms Logan Keefe that it is necessary to consider ‘notional use’ in assessing the circumstances under which the two trade marks may be used. Considering notional usage for goods of this nature, I would expect that they may be purchased through delicatessens, supermarkets, convenience stores and the like. In addition to self service, where the visual aspects of the marks may be more noticeable, these goods may also be purchased over the counter by request, online or by telephone order. In such circumstances, the visual differences between the trade marks are not necessarily apparent. However, when considering the circumstances of use, the visual differences are not of such significance that the overall impression of similarity, as discussed above, will be removed.
28. It is my conclusion that the trade mark of registration 714911 and IRDA 1165188 are deceptively similar. In addition, the registration bears an earlier priority date, and the goods to which both trade marks are applied are the same and similar. That being the case, it is clear that the extract for the registration belonging to P&T should have appeared in the examination record and should have been given full consideration by the examiner.
29. In my overall consideration of the material on file I am not satisfied that the examiner has either considered, or at least given adequate consideration to, the potential citation of registration 714911. This view is supported by the fact that, had the examiner at least considered the earlier registration carrying a translation endorsement, the fact that the word ‘squisito’ was a foreign word would have been noted. This should have led the examiner to consider that IRDA 1165188 may also have required investigation as to any meaning in a foreign language. No such investigation regarding the foreign meaning has been noted. In fact, the examiner’s own research does not appear to have assessed any foreign significance or use of the word. These other deficiencies would tend to indicate that a full examination has yet to be made.
30. It is my view that IRDA 1165188 should not have been accepted.
Discretion of Registrar
31. Turning now to the second arm of the section 38 provisions, I note Ms Logan Keeffe’s view that the dispute between the parties is better served by the opposition forum. I cannot agree with this view. Certainly an action under section 38 must be carefully considered as the Registrar’s delegate has already exercised their delegation to accept the IRDA for possible protection. The holder is also entitled to a presumption of registrability and Ms Logan Keeffe directed me to the Woolworths Metro[4] case in this regard. The facts of the matter must therefore be of sufficient weight to overturn the existing decision.
[4] Registrar of Trade Marks v Woolworths Limited 45 IPR 411
32. Ms Logan Keeffe has also stated that the Registrar is bound by the case law resulting from the pre amended legislation in regard to a ‘change of opinion’. Here I was referred to the Smooth and Silky[5] decision. Her submissions address the point that clearly the examiner knew of the existence of registration 714911 but decided against raising a ground for rejection. At some later time the original examiner or a reviewing officer has changed their opinion. I am unsure as to how she came by this view of events as there is nothing on the file to indicate that this is what occurred.
[5] Re Application by Remington Products Inc (1990) 18 IPR 251
33. As stated earlier, the Registrar is not bound by what information she considers relevant in her assessment of whether to revoke. Clearly revocation on the basis of a change of opinion is to be avoided at all costs. A delegate of the Registrar has already exercised their discretion to accept and, in addition, the validity of all acceptances would be more tenuous if they could be overturned so readily. However, the current case involves more than a simple change of opinion. The facts of the matter support the view that an examiner has overlooked or discounted information that, had it been properly considered, would have resulted in a ground for rejection being raised. Under the amended legislation it is not necessary to identify where or how the error has occurred, only to establish that the application should not have been accepted considering all the circumstances.
34. Ms Logan Keeffe has argued that as the opposition matter is well underway it is more appropriate to allow the opposition to progress rather than revoke acceptance of her client’s trade mark. This may have been a consideration if evidence had already been served by the opponent and/or the matter was more advanced. To revoke an acceptance where evidence is already served and later evidence stages are afoot would only serve to disadvantage both parties who will have committed considerable resources to the process by that stage. However, in this case the notice of opposition has been filed and an extension of time granted for the filing of evidence in support. This opposition is therefore only in its early stages and, where revocation is correct and reasonable, I see it as the preferable course of action.
35. The decision to revoke involves potentially more than the holder and opponent in this matter. As the initial decision making process appears to have been flawed, my view is that the case should be returned to the examination area for a full review. This should involve consideration of all formalities and possible grounds for rejection and may potentially raise additional citations, perhaps belonging to other parties. The holder is entitled to know that a full and thorough examination has been conducted on their IRDA, and the owners of trade marks incorporating the word ‘squizito’ or its phonetic equivalents, are entitled to know that their prior rights have been taken into consideration.
36. In addition there is also a public interest consideration that this trade mark be returned to examination for a full review. Quite aside from the risk of confusion and deception in the marketplace, the public interest is not served by maintaining a defective acceptance which would lead to the register containing readily apparent aberrations. Rather, the interests of all parties are better served by returning the trade mark to examination and allowing the holder the normal and legitimate opportunity to overcome any grounds for rejection that may be raised.
Decision
37. I am not satisfied that all relevant information was considered by the examiner before exercising the Registrar’s delegation to accept the IRDA. Under these circumstances I conclude that the holder’s trade mark should not have been accepted. I consider it appropriate in this case to revoke acceptance under the provisions of section 38 and return the IRDA to an appropriate examination section for re-examination.
38. I therefore direct that the acceptance of IRDA 1165188 be revoked 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 the revocation shall not occur until the appeal has been discontinued or in the event of an order by the court, the IRDA be subject to that order.
39. The International Bureau is to be notified of this decision as soon as practicable after the appeal period has ended. Once revoked, in accordance with Regulation 17A.27, the IRDA is taken never to have been accepted and thus the International Bureau is to be advised that additional grounds for provisional refusal within the 18 month period are to apply.
Rachel Dunn
Hearing Officer
Trade Mark and Design Hearings
10 January 2008
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