All Market Singapore Pte Ltd v Olympian Securities Group Pty Ltd

[2023] ATMO 43

TRADE MARKS ACT 1995

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

Re:Opposition by All Market Singapore Pte Ltd to registration of trade mark application number 2072994 (class 32) – COCO VIO – in the name of Olympian Securities Group Pty Limited

Delegate:

Katrina Brown

Representation:

Opponent: AJ Park

Applicant: Pod Legal Pty Ltd

Decision:

2023 ATMO 43

Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds pursued under ss 42(b), 44 and 60 – no grounds established – trade mark to proceed to registration

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by All Market Singapore Pte Ltd (‘Opponent’) to registration of the following trade mark:

Trade mark number:  2072994

Trade mark:  

(‘Trade Mark’)

Applicant:  Olympian Securities Group Pty Limited (‘Applicant’)

Filing date:  3 March 2020

Goods:Class 32 - Mineral and aerated waters and non-alcoholic drinks and beverages; bottled coconut water; coconut milk (beverages); fruit drinks and fruit juices; vegetable drinks and vegetable juices; isotonic beverages; fruit nectars (non-alcoholic); soda water; syrups for beverages; table waters; waters (beverages); whey beverages; soft drinks; cocktails (non-alcoholic); aperitifs (non-alcoholic); mineral water; non-alcoholic beverages; smoothies; sorbets (beverage); energy drinks; syrups, concentrates and other preparations for making beverages (‘Applicant’s Goods’)

1. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 4 August 2020.

2. The Opponent filed a Notice of Intention to Oppose, followed by a Statement of Grounds and Particulars (‘SGP’) on 29 October 2020.

3. The Applicant filed a Notice of Intention to Defend on 15 January 2021.

4. The Opponent filed the following declaration as evidence in support:

• Declaration of Lucette Kuhn (Solicitor, AJ Park Law Limited) made on 19 April 2021 with Exhibits LK-01 to LK-14 (‘Kuhn Declaration’).

1. The Applicant filed the following declaration:

• Declaration of James David White (Solicitor, Pod Legal Pty Ltd) made on 23 August 2021 with Exhibits JDW-01 to JDW-04 (‘White Declaration’).

1. The White Declaration was filed after the period for evidence in answer had ended. The Applicant sought an extension of time however it was refused. As such, the White Declaration is material filed out of time. In certain circumstances it may be appropriate to allow material that is filed out of time. The party who has filed the out of time material must make compelling submissions in favour of it being allowed as set out in Part 51.2.5 of the Trade Marks Office Manual of Practice and Procedure. In this matter the Applicant did not make any such submissions. Consequently, I will not have regard to the White Declaration when making my determination in this proceeding.

2. After the extension of time was refused, the Opponent requested that the substantive matter be heard via written submissions. Neither party filed written submissions.

3. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material described in [3] to [5] of this decision.

Grounds of opposition, onus, and relevant date

1. In the SGP the Opponent particularised grounds of opposition under ss 42(b), 44 and 60 of the Act.

2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is 3 March 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Section 44

1. Section 44 of the Act relevantly provides:

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

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

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

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

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

2. To succeed under this ground of opposition, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.

3. In the SGP, the Opponent identified trade mark numbers 1630471, 1656024, 1695148 and 1716670 (‘Opponent’s Registrations’) as the basis for this ground of opposition. The details of the Opponent’s Registrations are as follows:

Trade mark no.	1630471	1695148
Trade mark	ALL MARKET VITA COCO (‘Registration 471 & 148’)
Priority date	31 Dec 2013	21 May 2015
Specification	Class 32 - Mineral and other non-alcoholic drinks, including energy drinks and sports drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; coconut water, drinks based on coconut water; coconut-based drinks; non-alcoholic fruit extracts; extracts for making beverages; waters (beverages); lemonades; non-alcoholic cocktails; all included non-alcoholic beverages are produced on the basis of non-carbonated coconut water (including fruit juices, and/or combinations or ingredients) and without any carbonation and/or carbonated water; all aforementioned goods without content of malt	Classes 3, 29 & 31 Class 33 - Alcoholic beverages (except beers); alcoholic beverages containing fruit, alcoholic beverages containing coconut water; alcoholic beverages containing coconut; alcoholic fruit extracts; alcoholic extracts and decoctions; cocktails included in this class

Trade mark no.	1656024	1716670
Trade mark	VITA COCO STUPIDLY SIMPLE (‘Registration 024’)	(‘Registration 670’)
Priority date	3 Nov 2014	25 Aug 2015
Specification	Class 32 – various non-alcoholic beverages, similar to the goods set out above for trade mark number 1630471	Classes 3 & 29 Class 32 – various non-alcoholic beverages, similar to the goods set out above for trade mark number 1630471[3]

[3] Full claims of TM 1656024 & 1716670 in class 32 are set out in Annexure A to this decision.

1. From the information set out above, it is evident that each of the Opponent’s Registrations are held in a name other than that of the Applicant, and each has a priority date which is earlier than the Relevant Date. Furthermore, the Opponent’s Registrations are registered for a variety of non-alcoholic beverages in class 32, or broad claims in class 33 for alcoholic beverages, which, in applying the well-established tests,[4] are similar goods to the Applicant’s Goods.  

   [4] Jellinek’s Application (1946) 63 RPC 59 (Romer J).

2. My next consideration is whether the Trade Mark is substantially identical with, or deceptively similar to, any of the Opponent’s Registrations.

Substantially identical

1. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   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.[5]

   [5] [1963] HCA 66, [12] (Windeyer J).

2. The Trade Mark consists of the words ‘Coco’ and ‘Vio’ in a stylised manner. Whilst the Opponent’s Registrations also contain the word ‘Coco’, each contains additional elements. Registration 471 & 148 begin with the words ‘All Market Vita’, and Registration 024 contains the words ‘Vita’ and ‘Stupidly Simple’. Registration 670 is a composite trade mark combining the additional words ‘By All Market’ and ‘Vita’ with the device elements of a tree, coconuts and water drops.  

3. A total impression of resemblance does not emerge from the required comparison. There are differences between the trade marks that are likely to be noticed on a side by side comparison. Consequently, I do not consider the Trade Mark to be substantially identical with any of the Opponent’s Registrations.

Deceptively similar

1. Section 10 of the Act defines deceptively similar as:

   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.

2. In Shell, Windeyer J provided the following insights on deceptive similarity:

   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].[6]

   [6] Ibid [13].

3. As such, I must estimate the impression that a person of ordinary intelligence and memory would have of the Opponent’s Registrations and of the Trade Mark. I must consider the look, sound, and idea conveyed, allowing for imperfect recollection.

4. Each of the Opponent’s Registrations and the Trade Mark contain a two-syllable word beginning with the letters ‘vi’ and the word ‘coco’. However, shared elements do not automatically amount to deceptive similarity. The question to be considered is whether the similarity gives rise to a real, tangible danger of confusion. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) O’Bryan J stated:

   That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[7]

   [7] [2021] FCA 328, [245].

5. The fact that each of the trade marks contains a word beginning with ‘vi’ and ‘coco’ is not, in this instance, a sufficient basis to conclude that the trade marks are deceptively similar. A consumer of ordinary intelligence is likely to read the words within the Trade Mark from top to bottom, namely as ‘Coco Vio’, with the likely pronunciation being ‘koh-koh vye-oh’. Whilst the relevant element in the Opponent’s Registrations would be read as ‘Vita Coco’, with the likely pronunciation being ‘vye-tah koh-koh’.  As such, the order of the shared elements (for want of a more convenient way to describe them) is not the same, and there are both aural and visual differences. These differences are not only due to the reverse order of the shared elements, but also due to the dissimilarity in look and sound of the letters ‘o’ and ‘ta’ in ‘vio’ and ‘vita’.

6. Furthermore, the trade marks must be considered in their entirety.[8] Each of the Opponent’s Registrations contain elements in addition to the words ‘Vita Coco’ which are further points of differentiation between the trade marks.

   [8] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92] (Keane CJ, Stone and Jagot JJ).

7. For the above reasons, I am not satisfied that there is a real, tangible danger of deception or confusion. Given the differences in the overall impression of the trade marks, I do not consider it likely that an ordinary consumer would mistake the Trade Mark for any of the Opponent’s Registrations. Nor do I consider that the shared presence of ‘vi’ and ‘coco’ is likely to cause an ordinary consumer to wonder whether the goods come from a common trade source.   

8. Any likelihood of confusion is even further reduced in respect of goods which are coconut based. Both the Applicant’s Goods and the specifications of the Opponent’s Registrations contain specific claims for coconut-based beverages or have broad claims which would include coconut-based beverages. On those goods, a consumer of ordinary intelligence is likely to view the word ‘COCO’ as being a reference to ‘coconut’ and is even less likely to assume a common trade source based on the shared element.

9. The ground of opposition under s 44 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. The Opponent relies on the reputation in the Opponent’s Registrations and in a common law trade mark for VITA COCO as the basis for this ground of opposition.

Reputation

1. For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[9] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[10] number of people or potential consumers but this is tempered by the nature of the relevant market. In the current matter, the goods are non-alcoholic beverages. The relevant market for such goods would be a wide cross section of the population.

   [9] McCormick & Company Inc v McCormick [2000] FCA 1335 [81] (Kenny J).

   [10] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

2. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent[11] and it must exist at the Relevant Date in Australia. In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[12]

   [11] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

   [12] [2019] FCA 923 [83] (O’Bryan J).

3. Turning to the Opponent’s evidence in this matter, it is stated in the Kuhn Declaration that the Opponent began using the VITA COCO brand in 2005 in the United States of America. It is stated that goods (predominantly coconut water and other coconut-based beverages) bearing the VITA COCO brand have been distributed in Australia since 2013. The VITA COCO brand includes the following trade marks:

1. It is declared that the Opponent has approximately 40% of the market share of coconut water worldwide. However, the evidence contains very little material to substantiate this statement. Furthermore, the evidence does not identify the market share in Australia, nor does it provide any indication of sales revenue, marketing expenditure, or retailers of the goods in Australia. Importantly, the evidence does not demonstrate how much of the reputation in other jurisdictions had transferred into the Australian consciousness at the Relevant Date.  

2. It is stated in the Kuhn Declaration that products bearing the VITA COCO brand are promoted on the Opponent’s websites. Exhibit LK-11 to the Kuhn Declaration contains a capture of the website, ‘vitacoco.com.au’. This capture is undated. However, there is a copyright statement within the capture dated 2003 to 2021. This suggests to me that the screen capture is after the Relevant Date, and the Kuhn Declaration is silent as to whether this capture reflects the content of the website before the Relevant Date. Additionally, even if it were before the Relevant Date, the Opponent has not provided any means to quantify the exposure of the website in the Australian marketplace, such as views or hits. This deficiency also applies to the captures from the Opponent’s website targeted at other regions such as the United Kingdom, Philippines, Singapore, and South Korea.

3. The Opponent also promotes its products via social media. The Kuhn Declaration contains a list of 6 social media platforms that are used by the Opponent, and an indication of the number of followers, views, or posts ‘to date’. I take ‘to date’ to mean up to the date that the Kuhn Declaration was made, some 12 months after the Relevant Date. I accept that social media posts were made prior to the Relevant Date. Exhibit LK-14 to the Kuhn Declaration contains approximately 8 social media posts from 2018 showing the VITA COCO brand which appear to be specifically targeted at the Australian market. Except for these 8 social media posts, which have a very modest following, the Opponent has not provided any means to quantify the social media exposure of its products within the Australian market prior to the Relevant Date.  

4. In support of the Opponent’s reputation, Exhibits LK-12 and LK-13 to the Kuhn Declaration contain screenshots of Google image search results for ‘vita coco australia’ or ‘coco vita australia’. It is declared that these Google searches were confined to a period before the Relevant Date. The Kuhn Declaration does not contain captures of the actual webpages that the search results relate to.  Without such, it is difficult to ascertain the context of the use of the VITA COCO brand on those webpages, and how it contributes to demonstrating the reputation of the VITA COCO brand in Australia.  

5. Exhibit LK-09 contains screenshots of Google ‘news’ search results for ‘vita coco australia’, confined to the period of 3 March 2015 to 3 March 2020. Once again, captures of the actual media articles that the search results relate to have not been provided. Without such, at best, the results demonstrate that the VITA COCO brand was referenced in media articles in the four years prior to the Relevant Date. However, it does little to demonstrate as a matter of fact that the VITA COCO brand had a reputation in Australia, particularly as many of the articles are by foreign media outlets and the Opponent has not explained the exposure of those media outlets in the Australian marketplace, such as circulation numbers or views of webpages.

6. Overall, the evidence lacks the specificity to establish, as a matter of fact, that any of the Opponent’s Registrations or the common law trade mark, had acquired a reputation in Australia (either through use in Australia or spillover reputation from other jurisdictions) amongst a significant or substantial number of consumers at the Relevant Date. 

7. The ground of opposition under s 60 of the Act has not been established.

Section 42(b)

1. Section 42(b) of the Act provides that a trade mark must be rejected if its use would be contrary to law.

2. The Opponent asserts that use of the Trade Mark would be contrary to ss 18, 29 and 33 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off.

ACL

1. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 of the Act which can be established if the use is likely to cause confusion or wonderment.[13]

   [13] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

2. As already established in respect of s 60, I am not satisfied that use of the Trade Mark in respect of the Applicant’s Goods is likely to deceive or cause confusion. It follows that, on the stricter tests posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.

3. Section 33 of the ACL concerns conduct that is liable to mislead the public as to the nature, manufacturing process, characteristics, suitability for purpose or quantity of the goods. The Opponent has not elaborated on how use of the Trade Mark is likely to mislead the public in respect of any of the aspects specified in s 33 of the ACL. Without such, I cannot be satisfied that use of the Trade Mark would contravene s 33 of the ACL.

Passing Off

1. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

2. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

   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.[14]

   [14] [1989] FCA 506, [40] (Hill J).

3. Section 18 of the ACL is the equivalent of s 52 of the TPA.[15] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

   [15] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).

4. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

Decision

1. Section 55 of the Act relevantly provides:

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

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

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

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

2. The Opponent has not established a ground of opposition. Accordingly, trade mark number 2072994 may proceed to registration one month from the date of this decision.

3. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle.

2. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

31 March 2023

Annexure A

Trade mark number 1656024

Class 32:Mineral and other non-alcoholic drinks, including energy drinks and sports drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; coconut water, drinks based on coconut water; coconut-based drinks; non-alcoholic fruit extracts; extracts for making beverages; waters (beverages); lemonades; non-alcoholic cocktails; all included non-alcoholic beverages are produced on the basis of noncarbonated coconut water (including fruit juices, and/or combinations of ingredients) and without any carbonation and/or carbonated water; all aforementioned goods without content of malt

Trade mark number 1716670

Class 32:Mineral and other non-alcoholic drinks, including energy drinks and sports drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; coconut water, drinks based on coconut water; coconut-based drinks; non-alcoholic fruit extracts; extracts for making beverages; waters (beverages); lemonades; non-alcoholic cocktails; all included non-alcoholic beverages are produced on the basis of non-carbonated coconut water (including fruit juices, and/or combinations of ingredients) and without any carbonation and/or carbonated water; all aforementioned goods without content of malt