Actron Industries Inc v United Brands Products Design, Development and Marketing, Inc
[2024] ATMO 106
•11 June 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by United Brands Products Design, Development and Marketing, Inc. to extension of protection to Australia of International Registration 1630441 (29) – WHIPPIT (Fancy) (Australian Trade Mark Application No. 2233179) – in the name of ACTRON INDUSTRIES INC.
Delegate:
Nicholas Smith
Representation:
Opponent: Spruson & Ferguson
Holder: Henry Hughes IP Ltd
Decision:
2024 ATMO 106
Trade Marks Act 1995 (Cth) - Reg 17A.33 opposition: ss 42(b), 44, 58, 58A, 60 and 62A considered – none established – protection of the IR to be extended to Australia
Background
Trade mark number 2233179 is the Australian designation of a request made under the Madrid Protocol by ACTRON INDUSTRIES INC (‘Holder’) to extend protection of the trade mark subject of International Registration 1630441 to Australia. The request is known as an International Registration Designating Australia (‘IRDA’). This decision relates to an opposition to the extension of protection brought United Brands Products Design, Development and Marketing, Inc. (‘Opponent’) pursuant to reg 17A.33 of the Trade Marks Regulations 1995 (Cth). Details of the IRDA are as follows:
Application Number:
2233179
IR Number:
1630441
Priority Date (Convention) and Filing Date[1]
27 August 2021
Goods:
Class 29: Instant non-dairy whipping cream.
(‘Holder’s Goods’)
Trade Mark:
(‘Trade Mark’)
[1] Also known in this decision as the ‘relevant date’.
Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Following the advertisement of IP Australia’s intention to extend protection to Australia for the International Registration, the Opponent filed a Notice of Intention to Oppose extension of protection followed by a Statement of Grounds and Particulars on 12 May 2022 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44[2], 58, 58A, 60 and 62A. The Holder filed a Notice of Intention to Defend on 19 July 2022.
[2] As the Opponent relied on a protected international trade mark as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A of the Regulations rather than s 44 of the Act. However, as the terms are substantively identical for all relevant purposes and for ease of reading, I have retained the reference to s 44 in this decision. References to s 44 as considered in the present decision should be taken to read reg 4.15A and the Opponent’s Trade Mark (as defined later in the decision) should be recognised as a protected international trade mark.
Evidence
The parties filed the following evidence in this matter:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support
Nesser Zahriya, President and CEO of the Opponent (‘Zahriya declaration’)
18 October 2022
NZ-1 to Confidential NZ-24
Evidence in answer
Joanna Therese C. Duenas, Executive Vice President for Sales and Marketing for the Holder (‘Duenas declaration’)
23 August 2021
1
Evidence in reply
None filed
On 8 May 2023 the Holder requested a hearing by written submissions. The matter was set down for a hearing in Canberra on 5 March 2024. This matter was originally allocated to another hearing officer however was re-allocated to me on 6 May 2024. In line with usual practice, a notice was sent to the parties on 16 January 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 20 February 2024 (‘Opponent’s Submissions’). The Holder filed written submissions on 27 February 2024 (‘Holder’s Submissions’).
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by reg 17A.34N which provides that, unless the proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the the IRDA was opposed has been established. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.
The Opponent
The Opponent is a United States company, established in 1998, involved in the import and distribution of specialty products such as compressed nitrous oxide and carbon dioxide gas systems including cream dispensers, torches, soda siphons and stoves.
The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’). The goods and services for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’.
Number
Trade Mark
Priority Date
Goods
2251540
21 July 2021
Class 1: Nitrous oxide chargers, for use in whipping canisters for whipped cream; carbon dioxide cartridges, as used in soda water dispensers.
Class 4: Canisters containing butane fuel.
Class 11: Butane torches for cooking.
Class 21: Whipping cream dispensers; soda water dispensers
The Opponent’s Trade Mark has the following endorsement: The mark consists of a lime green asterisk outlined in blue, followed by the word whip-it in blue, followed by an exclamation mark in blue; the entirety of the foregoing is outlined in white. The color(s) blue, lime green, white is/are claimed as a feature of the mark. The mark consists of a lime green asterisk outlined in blue, followed by the word whip-it in blue, followed by an exclamation mark in blue.
The relevant claims/statements in the Zahriya Declaration can be summarised as follows:
· The Opponent has used the Opponent’s Trade Mark and the plain word Whip-It! (‘Word Mark’) (collectively ‘Whip-It! Marks’) extensively since 1998 in relation to its whipped cream system, which includes cannisters and chargers for whipping cream dispensers. The Opponent uses and promotes the Whip-It! Marks on its website, social media, product packaging, product catalogue, print and digital advertising, through a network of distributors and retailers through international tradeshows.
· The Opponent started selling its goods through its website, accessible to Australian consumers, in 2014, under the Whip-It! Marks.
· The Opponent has used the Whip-It! Marks in connection with its product range in Australia since 2008 through its distributor Finewhip Australia and then through additional distributors. The Opponent has successfully registered the Whip-It! Marks as trade marks in over 60 countries.
The annexures to the Zahriya Declaration display various marketing materials that use the Whip-It! Marks. The evidence of online marketing material is of limited value since the Opponent’s evidence of views or engagement is global rather than Australia-specific.[3] The same can be said for evidence about the Opponent’s participation at international trade shows. The Opponent provides evidence of its (apparently) global spend on marketing and trade mark protection, but absent a country-level breakdown this is of little assistance. The Opponent also provides a confidential sales figure for its sales revenue, both globally and in Australia, from 1998 to 2022. The global figure is quite impressive, even given the 24-year period, however the Australian figure is unimpressive. Furthermore, it is curious that the Opponent has chosen to provide a single figure to represent all its Australian sales from (presumably) 2008 to 2022 rather than providing an annual breakdown that would assist this office in better establishing reputation at the relevant date. The Opponent does not provide, for example, any evidence of the numbers of its products sold to its distributors in Australia which would have assisted in determining the degree of market penetration.
[3] The Opponent’s Submissions appear to assert that Exhibit NZ-7 shows visits to the Opponent’s Website from Australia but a closer look indicates that such figures show global usage, and indeed appears to suggest that over 80% of the visitors come from the United States.
The Holder
The relevant claims/statements in the Duenas Declaration can be summarised as follows:
· The Holder is a Filipino company founded in 1982 that uses the Trade Mark in relation to a non-dairy cream paste, mainly used as icing and filling for cakes and pastries and as a fondant for cakes. The Holder does not sell non-food products under the Trade Mark.
· The market for the Holder’s WHIPPIT product is home bakers and professional bakeshops and the product has been offered in the Philippines since 1995. It has pending and registered trade marks for the Trade Mark in various jurisdictions.
· There is a significant Filippino community in Australia who would be familiar with the Holder’s products, including the Holder’s WHIPPIT product as they would buy the product in the Philippines and bring it to Australia in order to share, sell and distribute with their community.
The annexures to the Duenas Declaration display various examples of the marketing and packaging of the Holder’s WHIPPIT product, where the Trade Mark is used alongside the Holder’s Bakersfield brand. There is no evidence of the Holder seeking to sell or distribute its WHIPPIT product outside the Philippines.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A. To successfully oppose the IRDA the Opponent needs to establish one of the nominated grounds.
The onus of proof in an opposition rests upon the Opponent.[4] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[5] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[6]
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[5] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).
Discussion
Section 44
The relevant provisions of s 44 are reproduced below:
Section 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)it 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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
(2)…
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
Section 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.
To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Holder:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and
· is in respect of similar goods, and/or services which are closely related to, the Holder’s Goods (‘the third requirement’).
In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Holder has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. In the present case as I am unsatisfied that the Holder has any evidence of use of the Trade Mark in Australia prior to the relevant date or other circumstances that would make registration of the Trade Mark proper, it is not necessary to consider these provisions.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark. The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.
Similar goods
Section 14 relevantly provides:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Marks are registered are goods of the same description as the Holder’s Goods as follows:
Whether the relevant goods are of the same description is essentially a question of fact.
The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’: Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.
On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [7]
[7] [2000] FCA 1335, [17] (Kenny J).
The Holder’s Goods are foodstuffs, namely non-dairy whipping cream. The Opponent’s Goods include kitchen products that can be used, as their primary purpose, to make whipping cream. There is an obvious relationship between the particular goods. However, this does not necessarily imply that the goods are similar. The products are of a different nature – one being a consumable and one being a white good (and characters and cannisters for these white goods).
I refer to the decision in Canterella Bros. Pty Ltd v Sunbeam Corporation Ltd[8] (‘Canterella’) in which the Registrar concluded that ice cream and gelato making machines were not similar goods to ice cream and gelato. I consider that similar reasoning applies in this case. The trade channels of the goods are quite different, with the Holder’s Goods in Class 29 being sold through a supermarket or a specialist retailer of baking consumables, while the Opponent’s Goods generally being sold through a white goods retailer. The manner in which they are purchased are quite different, with the Holder’s Goods being regularly purchased like any other consumable while the Opponent’s Goods being a significant, one off purchase (other than the chargers and cannisters however they would only be purchased by people who have a detailed knowledge of the Opponent). In Canterella the delegate stated ‘I can not expect the average consumer to go shopping for an ice cream but return home with an ice cream maker instead – and even if they did, I am not satisfied that they would make any connection between the trade origin of the two.’[9] I consider the same logic applies here and do not find that the Opponent’s Goods and Holder’s Goods are similar.
[8] [2007] ATMO 3 (Hearing Officer Dunn).
[9] Ibid, [15].
I fail to identify any of goods for which the Opponent’s Trade Mark is registered that are similar to the Holder’s Goods. I find that the Opponent has failed to establish the ground of opposition under s 44.
Section 58 – Applicant not owner of trade mark
Section 58 is reproduced below:
Section 58. Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
· that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[10]
· that the Holder’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[11] and
· that a person other than the Holder has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Holder (‘the third factor’).[12]
[10] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J)..
[11] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[12] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
The ground based on s 58 was particularised in the SGP as follows:
The Opponent commenced use of its WHIP-IT! trade mark in Australia around 1986 in relation to the same goods as those covered under the Applicant’s Trade Mark. It is, therefore, the Opponent and not the Applicant that is the owner of the Applicant’s Trade Mark in Australia.
In respect of the second factor the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[13] stated as follows:
The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[14].
[13] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14]-[18] (Hearing Officer Worth).
[14] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.
Given that I have found that the Opponent’s Goods are not ‘of the same description’ as the Holder’s Goods, I must necessarily reach a similar conclusion with respect to the s 58 ground of opposition, namely that the Holder’s Goods are not the ‘same kind of thing’ as the goods for which the Whip-It! Marks were used.
As the Opponent has failed to establish the second factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.
Section 58A
Section 58A is reproduced below:
Section 58A – Opponent’s earlier use of similar trade mark
(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a)subsection 44(4); or
(b)a similar provision of the regulations made for the purposes of Part 17A.
Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a)first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b)has continuously used the similar trade mark in respect of those goods or services since that first use.
Note: For predecessor in title see section 6.
For s 58A to apply, the trade mark must have been accepted by the examiner under the provisions of s 44(4), or a hearing officer finds during an opposition that it is appropriate to apply the provisions of s 44(4). In this matter the Trade Mark was not accepted by the examiner under the provisions of s 44(4) nor have I applied this provision. As such this ground of opposition is not available to the Opponent.
Section 60
Section 60 is reproduced below:
Section 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.
To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.
Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:
The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.
The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[15]
[15] [2023] FCA 487, [20]-[21] (Kennett J)
In McCormick & Co Inc v McCormick[16], Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[17] Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[18]
[16] [2000] FCA 1335.
[17] Ibid, [81].
[18] (1992) 33 FCR 302, 343.
On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[19]
[19] (1999) 47 IPR 423, 436.
As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[20] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:
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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[21]
[20] [2000] FCA 1587.
[21] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
The Opponent has particularised the ground of opposition in the SGP in the manner set out below:
The Opponent has been using WHIP-IT! trade mark worldwide, including in Australia since at least 2011 in connection with the goods, or similar goods, covered under the Applicant’s Trade Mark. The use of the Opponent’s WHIP-IT! trade mark has been extensive in relation to those goods.
As a result of the extensive use of the Opponent’s WHIP-IT! trade mark, the Opponent has acquired a reputation in that mark and, because of that reputation, the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.
As discussed in paragraph 11 above, there is very little evidence of use of the Whip-It! Marks in connection with the Opponent’s products in Australia. The Opponent’s Australian sales figures, expressed as a single figure over a 14-year period, some of which postdates the relevant date, is unimpressive. Moreover, much of its remaining evidence consists of assertions of extensive reputation, promotion and spending in Australia supported by documentary evidence of such activities on a global basis. It does not assist an opponent to provide evidence that states, as the EIS does, ‘The Opponent has invested significantly in promoting the Relevant Goods in Australia’ and support that by providing what is clearly a figure showing global marketing expenditure over a 24-year period. The only evidence of the Opponent’s marketing that appears to be targeted at Australia is a single collaboration between the Opponent and Australian pâtissier Adriano Zumbo.
While noting the limited evidence provided by the Opponent, I am satisfied that the Opponent’s Trade Mark had before the relevant date, acquired a very limited reputation in Australia for its whipped cream system, sufficient for the requirements under s 60(a). I reach this conclusion noting the length of time the Opponent has used the Trade Mark in Australia as well as the considerable evidence of international use, some of which may have diffused to Australia.
It is not sufficient that the Opponent merely establish that its trade mark had a reputation. I must also be satisfied that, because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning trade mark infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
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 usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[22]
[22] (1937) 58 CLR 641, 658.
In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:
(ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[23]
[23] [1999] FCA 1020, [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:
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.[24]
[24] [2012] ATMO 124, [40] (Hearing Officer Thompson).
While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[25]
[25] [2016] FCA 729, [142] (Yates J).
Finally, I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Mark by the Holder, rather than actual use or any reputation in the Trade Mark held by the Holder.[26]
[26] See, for example, McCormick & Company Inc v McCormick [2000] FCA 1335 where it was established that the fact that the Applicant might have been an honest concurrent user is not relevant to the operation of section 60.
In the present case, for the reasons set out in paragraphs 22 and 23 above it is unlikely that consumers aware of the Opponent’s (very limited) reputation in kitchen products would be caused to think that it had branched out into provision of the Holder’s Goods, which are foodstuffs. Furthermore, to such an extent that confusion would arise by reason of the similarities between the trade marks, such confusion would be further limited by the fact that the similarities arise by reason of the use of the ‘whip’ and ‘it’ elements to describe goods connected to whipped cream. I refer to the statements made by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[27] regarding the risk of confusion that must be accepted as a price to be paid for the advantages of a descriptive trade name. In the present case I am not satisfied that any confusion that could arise between the Trade Mark and the Opponent’s Trade Mark would arise because of the (very limited) reputation of the Opponent’s Trade Mark, as opposed to the shared use of the descriptive elements ‘whip it’ in respect of goods connected to whipped cream.
[27] (1978) 140 CLR 216, 229.
I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.
Section 42
Section 42 is reproduced below:
42 - Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)). The onus is on the Opponent to establish that use of the Trade Mark by the Holder would be, rather than could be, contrary to law on the balance of probabilities.[28] The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[29]
[28] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[29] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).
The Opponent has particularised the ground of opposition in the SGP as follows:
The Opponent has been using WHIP-IT! trade mark worldwide, including in Australia since at least 2011 in connection with the goods, or similar goods, covered under the Applicant’s Trade Mark. The use of the Opponent’s WHIP-IT! trade mark has been extensive in relation to those goods.
As a result of the extensive use of the Opponent’s WHIP-IT! trade mark, the Opponent has acquired a reputation in that marks. Therefore, the use and registration of the Applicant’s Trade Mark, which is substantially identical, or deceptively similar, to the Opponent’s WHIP-IT! trade mark, is likely to result in consumer deception or confusion in breach of the Australian Consumer Law, or in passing-off at common law.
As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[30] and consequently I find that the Opponent has also failed to establish that the Holder’s use of the Trade Mark would be contrary to s 18 of the ACL.
[30] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[31], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[32] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:
The scope for the operation of s 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 s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[33]
[31] [2014] ATMO 65, [50] (Hearing Officer Wilson).
[32] [2003] FCA 104, [107] (Beaumont J).
[33] [1989] FCA 506, [40] (citations omitted).
For these reasons I am not satisfied that use of the Trade Mark by the Holder would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).
Section 62A
Section 62A is reproduced below:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[34]:
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
… The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[35]
[34] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).
[35] [2012] FCA 81, [147].
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[36]
[36] Ibid [165]-[166].
The Opponent has particularised this ground of opposition in the SGP as follows:
The Opponent has been using WHIP-IT! trade mark worldwide, including in Australia since at least 2011 in connection with the goods, or similar goods, covered under the Applicant’s Trade Mark. The use of the Opponent’s WHIP-IT! trade mark has been extensive in relation to those goods.
As a result of the reputation in the Opponent’s WHIP-IT! trade mark, the Applicant would have been aware of the Opponent’s WHIP-IT! trade mark at the time of the filing of the Applicant’s Trade Mark and has, therefore, acted in bad faith by applying to register he Applicant’s Trade Mark, which is substantially identical, or deceptively similar, to the Opponent’s WHIP-IT! trade mark.
The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[37] There is clear evidence before this office that the Holder has sought to register the Trade Mark because it has used the Trade Mark for the Holder’s Goods since 1995 in the Philippines. The Opponent’s allegation of bad faith here does not rise above an assertion of prior knowledge of its mark by the Holder. This ground of opposition is not established.
[37] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).
Decision and Costs
Regulation 17A.34N provides:
17A.34N Decision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
(2) The Registrar must notify the International Bureau of the Registrar’s decision.
The Opponent has not established the grounds on which the IRDA was opposed and it is appropriate that the Registrar decides to extend protection to the IRDA.
The IRDA may proceed to protection 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 protection shall not occur until the appeal has been decided or discontinued and the protection of the IRDA be subject to any orders of the Court.
The International Bureau will be notified of the Registrar’s decision.
The Holder has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
11 June 2024
0
26
8