Aldi Foods Pty Ltd v Alda Communication Training Company LLC

[2019] ATMO 18

TRADE MARKS ACT 1995

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

Re:Opposition by ALDI Foods Pty Ltd to extension of protection to Australia of International Registration Designating Australia 1353760 (35, 41) – ALDA COMMUNICATION TRAINING COMPANY (Australian Trade Mark Application No. 1856893) - in the name of Alda Communication Training Company, LLC

Delegate:	Nicholas Smith Decision on the Written Record
Representation:	Opponent: Spruson & Ferguson Holder: Macpherson + Kelley
Decision:	2019 ATMO 18 Opposition under regulation 17A.33 of the Trade Marks Regulations 1995: ground under s 44 pressed and considered –ground of opposition not established – protection of IRDA to be extended to Australia

Background

1. This decision concerns an opposition brought by ALDI Foods Pty Ltd (‘Opponent’) pursuant to regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) to the extension of protection in Australia for the International Registration Designating Australia (‘IRDA’) details of which appear below in the name of Alda Communication Training Company, LLC (‘Holder’): 

Application Number:	1856893
IR Number:	1353760
Priority Date:	12 September 2016
Filing Date:	16 December 2016
Services:	Class 35: Business consulting and information services; business development services Class 41: Educational services; communication and leadership training services in science, healthcare, and environmental initiatives (‘Holder’s Services’)
Trade Mark:	ALDA COMMUNICATION TRAINING COMPANY	(‘Trade Mark’)

2. Following the advertisement on 10 August 2017 in the Australian Official Journal of Trade Marks of IP Australia’s intention to extend protection to Australia for the IRDA, the Opponent filed a Notice of Intention to Oppose on 10 October 2017.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 26 October 2017, which was, following a notice from this office that the SGP was inadequate, rectified on 7 November 2016. The SGP (as rectified) raised grounds of opposition under ss 42(b), 44, 58A, 59 and 60 of the Trade Marks Act 1995 (Cth) (‘Act’).  The Holder filed a Notice of Intention to Defend on 18 December 2017. 

3. Neither party filed any evidence or submissions in respect of the opposition.

4. 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, at the end, 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 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, which in this case consists of the SGP and other formal documents.

The Parties

5. As neither party has provided any evidence, I cannot provide any information about the parties other than what is set out on the Register, namely that the Holder is a company based in the United States that has applied to extend protection in Australia for its IRDA. 

6. The Opponent is owner of the Defensive Trade Mark set out below (‘Opponent’s Trade Mark’).  The Opponent’s Trade Mark is registered for a very wide variety of goods and services in all classes, so for brevity I have simply listed the services in classes 35 and 41 for which the Opponent’s Trade Mark is registered.

Number	Trade Mark	Priority Date	Class 35 and 41 Services
1585399	ALDI	11 October 2013	Class 35: Advertising; business management; business consultancy services; business advice; business administration services; promotional services; incentive scheme and customer loyalty program services; accountancy; promotional services; auditing services; auctioneering services; arranging shows and exhibitions for commercial purposes; association services being the promotion of interests of members of the association; benchmarking; book clubs; brand creation services; business appraisals; business development services; business data analysis services; business information services; business surveys; call centre services (telephone answering); retail services; wholesale services; distribution services in this class; commercial information and advice for consumers (consumer advice shop); demonstration of goods; distribution of samples; document reproductions; economic forecasting; employment recruitment and consultancy services; import-export agency services; inventory control services; lobbying services; opinion polling; ordering services (for others); Organisation and management of customer loyalty programmes; organization of prize draws for promotional purposes; public relations; rental of office equipment Class 41: Education; providing of training; entertainment; sporting and cultural activities; prize draw services; provision of entertainment, sporting or cultural services from customer loyalty and frequent buyer schemes; rental of amusement apparatus; rental of audio visual apparatus; rental of DVDs and other media stored in electronic form; rental of sporting equipment; audio-visual editing services; organisation of wine tasting events

Grounds of Opposition, Onus and Standard of Proof

7. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58A, 59 and 60 of the Act. To successfully oppose the application to extend protection for the IRDA the Opponent needs to establish at least one of those grounds.

8. The onus of proof in an opposition 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 the rights of the parties are to be determined is 12 September 2016 (‘relevant date’), being the priority date.[3]

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

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

9. With the exception of ss 44, as the Opponent has filed no evidence and provided no submissions I have no hesitation deciding that the Opponent has not discharged the onus on it and has consequently not to any extent established any of the remaining grounds of opposition nominated in the SGP. The ground of opposition under s 42(b) as particularised requires evidence of reputation. Similarly, the grounds of opposition under ss 58A, 59 and 60 cannot be established in the absence of evidence relevant to those grounds. The mere filing of the Notice of Opposition without any supporting evidence or submissions does not serve to place the onus on the Holder to defend its application.[4]

[4] Medley Distilling Co v Croakers Gully Australia (2000) 53 IPR 430, 433.

Discussion

Section 44

1. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

Section 44 - Identical etc. trade marks

1. …

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.

Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. 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.

2. 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.

1. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies:

   ·    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 services, and/or goods which are closely related to, the Holder’s Services (‘the third requirement’).

2. The fact that the Opponent’s Trade Mark is a defensive mark has no bearing on the present ground of opposition.  For “the purpose of assessing the section 33 objection, fair, notional use of the registration in relation to all the specified goods is to be assumed, just as is the case with registrations in other Parts of the Register”[5].

   [5] Chanel Ltd v Chronogem Ltd 19 IPR 21, 24.

3. 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 if the Registrar is satisfied that there has been honest concurrent use of the Trade Mark, other circumstances exist 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, pursuant to ss 44(3) and 44(4) of the Act. As the Holder has not provided any evidence or submissions in this opposition there is nothing before me that could demonstrate that the requirements of ss 44(3) and 44(4) are satisfied.

4. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark, which is registered for services including business consultancy services and educational services. I consider that that those services are similar to some of the Holder’s Services including Business consulting and information services; business development services and Educational services.  The third requirement is, therefore, satisfied.

5. The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The first and third requirements are satisfied. 

Substantially identical or deceptively similar

1. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   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.[6]

   [6] (1963) 109 CLR 407, [12].

2. The Trade Mark and the Opponent’s Trade Mark are set out below:

ALDA COMMUNICATION TRAINING COMPANY                 ALDI

1. On a side by side comparison there is a clear difference between the respective trade marks, in that the Trade Mark includes the additional words ‘communication training company’ (albeit a set of words that is descriptive of the Holder’s Services and hence can be discounted significantly) and the remaining respective elements end with an ‘a’ and an ‘I’.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

2. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   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 [trade mark].[7]

   [7] Ibid [13].

3. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   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.

   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: Woolworths[8] at [49]; Australian Woollen Mills[9] 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’s[10] at [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 Refrigerating[11] 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 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].[12]

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

   [9] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [10] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

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

   [12] [2012] FCA 1022, [38]-[46].

4. It is clear that that the dominant element in the Trade Mark is the word ‘ALDA’. In the context of the Holder’s Services, which include ‘communication and leadership training services in science, healthcare, and environmental initiatives’, the additional elements ‘communication training company’ are descriptive, do not change the meaning behind the Trade Mark and have a very low level of distinctiveness.  In such circumstances the presence of these elements ought to be discounted considerably in considering whether the respective marks are deceptively similar (See: Application by Coles Myer Ltd, (1993) 26 IPR 577, BRATS: BONZA BRATS).

5. It is unlikely that a consumer will seek to purchase the Holder’s Services using the full name of the Trade Mark, being ‘ALDA COMMUNICATION TRADING COMPANY’. Rather the consumer, being a person of imperfect recollection, is likely to focus on the elements ‘alda’ and ‘aldi’ in the respective marks.  At the same time the circumstances in which the marks will be used and the character of the probable acquirer of the Holder’s Services should be considered.  The Holder’s Services are not purchased ‘off the shelf’.  They are ongoing business development services purchased by corporate enterprises seeking to develop their business and improve communications.  In short the Holder’s Services are likely to be purchased by professionals, operating in the course of their employment, and purchased with some care. 

6. The respective marks are not visually or phonetically identical.  While the ‘communication training company’ element can be discounted considerably for the purposes of comparison it cannot be entirely discounted; hence visually the Trade Mark is significantly longer, being 4 words, then the Opponent’s Trade Mark, which consists of 4 letters.  Phonetically the marks share one syllable, being the first ‘al’, and a similar but not identical element in ‘da’ and ‘di’ respectively.  Conceptually, I have been provided with no evidence to conclude that either the ‘alda’ or ‘aldi’ elements have any particular meaning so I cannot conclude that there are particular conceptual similarities in the marks; certainly, to the limited extent that ‘communication training company’ is taken into account, the marks are conceptually different.

1. While I acknowledge the significant similarity between the Opponent’s Trade Mark and the dominant element in the Trade Mark, being ‘alda’ I consider that, in the circumstances in which the Trade Mark will be used (in the sale of business development and communication services to commercial enterprises), even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Opponent’s Trade Mark.  The likely consumer upon being exposed to ‘ALDA COMMUNICATION TRADING COMPANY’, is unlikely to be caused to wonder if the services are offered by the Holder.  As such the respective marks are not deceptively similar.

1. I find that the Opponent has failed to establish the ground of opposition under s 44.

Decision

1. 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.

2. 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.

3. The IRDA may then 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.

4. The International Bureau will be notified of the Registrar’s decision.

Costs

1. 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 section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Marks Regulations 1995.

Nicholas Smith
Hearing Officer
Oppositions and Hearings
6 February 2019