Arnott's Biscuits Limited v Sharon Pechey & Peter Hand

[2000] ATMO 114

TRADE MARKS ACT 1995

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

Re:Opposition by Arnott's Biscuits Limited to registration of trade mark application 757521(16) - ENJOY! and device- filed in the name of Sharon Pechey and Peter Hand.

Background

Sharon Pechey and Peter Hand jointly filed application 757521 on 19 March 1998. The application, for the composite word and device as shown, claimed, for its specification of goods, 'Printed matter' in class 16.

The application was examined and accepted without objection from this Office. It was advertised as such in the Australian Official Journal of Trade Marks (the Journal) of 16 July 1998. On 29 September 1998, Arnott's Biscuits Limited (the opponent) filed a notice of opposition to that acceptance. The notice listed grounds in terms of s.57 of the Act concerning ss. 41, 42(b) and 43 and also cited ss. 58, 59 and 60. The opponent filed and served its evidence in support by 8 November 1999. The applicant chose not to submit any material in answer to this evidence. The opponent requested to be heard but after paying the hearing fee, decided to simply provide written submissions in the matter. The applicant has also provided written submissions and the matter has now been directed to me for a decision based on the material held in this Office.

The Evidence

The opponent's evidence in support consists of two declarations from Alec Waugh (the first and second Waugh declarations), Intellectual Property Manager for the opponent, the first of which also annexes exhibits 'A' to 'E'. This material sets out the opponent's use of the trade mark 'enjoy'. The opponent has laid claim to having used this trade mark from as early as March 1997, when the opponent introduced it as part of a campaign associated with the recovery of the opponent's business following a national extortion attempt. This extortion attempt saw the removal of Arnott's products from sale nationwide. Copies of the opponent's magazine entitled 'enjoy' indicate that distribution began in April 1998. Other goods, shown in the opponent's evidence as being available for purchase, include coasters, coffee mugs, cups and saucers, T-shirts, tea towels, aprons, oven gloves and teaspoons. These items may be purchased at the opponent's Adventure store at Darling Harbour, via Arnott's Internet website or through Squawk magazine - a publication distributed through the scouting movement in Australia. This magazine has been supported, since November 1998, by a national television program screened on the Nine Network for over 30 episodes. A copy of Squawk magazine, from around February 1998, contains advertisements showing use of the ENJOY trade mark by the opponent, in relation to coasters, aprons and oven mitts. A set of the opponent's television advertisements shows that the word ENJOY is used at the end of many of these advertisements in relation to biscuits. At the conclusion of these advertisements, the words ARNOTT'S and ENJOY appear together and then the word ARNOTT'S fades to leave ENJOY as the final word on the screen. To support this material, the opponent has also provided details on the amount that it states it has spent on the marketing and promotion of the trade mark, with specific figures provided for the television component of that advertising.

The applicant chose not to provide any evidence in answer to this material.

Both parties filed written submissions in the matter. The applicant also submitted an attachment, which arguably could be considered as an attempt to introduce evidence in answer. This material has no bearing on the outcome, however, and I do not intend to refer to it in my reasons that follow.

Submissions

The opponent's submissions indicate that it intends to rely on opposition grounds taken under s.41, s.43 and s.58 of the Act.

In relation to s.58, the opponent claims to have used the trade mark ENJOY on printed matter since 1997 and should, therefore, be regarded as the owner of the mark. For s.43, the opponent claims that the mark ENJOY has become associated with it, in connection with foods and related printed matter, as a result of a massive advertising campaign. The opponent claims that this is similar to the connotation that was found to exist as outlined in the decision of Deputy Registrar Hardie[1], concerning the trade mark BRAVEHEART THE MUSICAL. In connection with s.41, the opponent has argued that the trade mark could not be distinctive of the applicant's goods because it was already distinctive of goods sourced by the opponent.

[1] Durkan v Twentieth Century Fox Film Corporation 47 IPR 651

The applicant submitted that any use of the word ENJOY by the opponent is not trade mark use at all. The opponent has used the word ancillary to the use of its trade marks in television advertisements and on copies of an in-house publication, the applicant has claimed. The applicant has also commented that the publication used by the opponent is not used in the course of trade but merely to inform staff of the progress of the company. In contrast, the applicant claims to have used its trade mark on a 'food and lifestyle periodical magazine' with a circulation in the vicinity of 50 000.

Discussion

The notice of opposition, as filed, listed opposition grounds in terms of ss. 41, 42(b), 43, 58, 59 and 60. The opponent has made no attempt, either in the evidence or in the written submissions to support the grounds under either s.42(b) or s.59, and consequently, I find the opposition under these two grounds to be unsuccessful. The opponent did not argue the ground under s.60 in the written submissions but some material exists within the evidence that could support such a ground, hence I intend to consider all four remaining grounds, under s.41, s.43, s.58 and s.60 in these reasons.

(a) Section 41- Trade mark not distinguishing applicant's goods or services

Under this ground, the opponent has argued that the trade mark could not be distinctive of the applicant's goods because it was already distinctive of goods sourced by the opponent. The relevant portion of the Act reads:

41.(1) ….

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:  For goods of a person and services of a person see section 6.

The capability of a trade mark to distinguish the goods of a particular trader is not assessed by any comparison with the use that another trader is making, or has made, of a trade mark. It is assessed by a consideration of the mark in relation to the goods on which the mark is to be used. The legislation, in terms of s.41, specifically looks at the mark itself for a determination of its capability to distinguish the goods or services as being those of a particular trader, per se - which particular trader is not at issue. The fact that another trader may make the claim that the mark distinguishes THEIR goods or services is not a matter for consideration under s.41 but, more correctly, under other provisions of the Act, such as s.60.

It is the assessment under s.41 that determines the suitability or otherwise of a mark to function properly as a trade mark and not be seen as merely a description of the goods, laudatory epithet or some other feature associated with the goods - such as their country of manufacture.

On this issue, I find that I am in agreement with the examiner, that the present mark is capable of distinguishing the goods of one trader, being 'printed matter', from the goods of other traders in similar goods.

Thus, I find that this ground of opposition has not been established.

(b) Section 43 - Trade mark likely to deceive or cause confusion

The relevant legislation reads:

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

Under this ground of opposition, the opponent has argued that the mark ENJOY has become associated with it, in connection with foods and related printed matter, as a result of a massive advertising campaign. Such a claim would appear to be associated with a possible reputation in its own mark rather than a connotation in the applied for mark. Reputation in its own mark is a matter more appropriately considered under s.60 of the Act - set out below, under part (d) in this Discussion.

The opponent has claimed that there exists a connotation in the present mark similar to the connotation that was found to exist in a trade mark that was the subject of a decision by Deputy Registrar Hardie - BRAVEHEART THE MUSICAL, Durkan v Twentieth Century Fox, supra.

In that decision, Ms Hardie comments as follows at 655:

Fox Corporation oppose the application on the ground that, due to the existence of Fox Corporation’s trade marks, the use of 740114 by Mr Durkan is likely to deceive or cause confusion.  The operation of section 43 does not, however, depend on the existence of a conflicting trade mark.  The purpose of the section is to exclude from registration any trade mark which, in respect of the nominated goods or services, conveys a meaning which, in respect of those goods or services, is likely to deceive or confuse. This does not require the existence of a conflicting trade mark.

This commentary does not support the opponent's contention that the applied for mark has a connotation that the mark has become associated with it. Rather, s.43 indicates that the mark must first exhibit some secondary meaning conveyed by the mark itself and, as a result of that meaning, be likely to deceive or cause confusion in the minds of the relevant purchasing public. In my view, the word ENJOY provides no such connotation in relation to goods of the present application, being 'printed matter'.

Ms Hardie continues at 655-656:

Since the release of the braveheart film, however, the word braveheart no longer remains unknown. On the undisputed evidence, braveheart now has significant currency as the name of one of the most successful films of late 1990s. That film has had exceptional critical and popular success and the publicity associated with its acclaim has also been exceptional.  On this basis, I think it is very clear that the trade mark braveheart the musical, dominated as it is by the word braveheart, will openly give rise to a connotation of the film braveheart.

Thus, the Deputy Registrar's finding that the words BRAVEHEART THE MUSICAL had a connotation was not based on any reputation that the opponent had claimed in a trade mark. Rather, the connotation was founded on the meaning that has become linked to the word BRAVEHEART, in the minds of the public, as a result of the success of the film of that title. The step that links the meaning gained for the word BRAVEHEART as a film title, to provide a connotation in the trade mark BRAVEHEART THE MUSICAL when it is used in respect of 'T-shirts, caps and theatre musical production', is both short and logical. In my view, no such link from the word ENJOY is apparent.

In keeping with the above information, I find that this ground of opposition is not established.

(c) Section 58 - Applicant not owner of trade mark

Here, the legislation reads:

58. 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 principles surrounding the issue of ownership under s.58 of the Act have not changed from the same consideration under s.40 of the Trade Marks Act 1955. The present position at law is that ownership of a trade mark, for the purposes of s.58, is found either by first use of the mark in the Australian market in connection with the relevant goods or services, or authorship and the making of an application for registration, whichever is the earlier[2].

[2] Shell Co (Aust) Ltd v Rohm & Haas Co (1948) 78 CLR 601 at 627-8;

Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) 3 IPR 545 at 556.

To overturn this claim, the opponent would need to show an earlier use of the identical trade mark or one virtually identical to it[3]. Further, the opponent would need to demonstrate use on 'the same kind of thing', as per the test set out by Holroyd J. in Re Hicks' Trade Mark (1897) 22 VLR 636.

[3] Carnival Cruise Lines Inc v Sitmar Cruises Ltd 31 IPR 375 at 391.

In the present circumstances, the application was made on 19 March 1998 in respect of 'printed matter'. The evidence indicates that copies of the opponent's magazine entitled 'enjoy' were distributed from April 1998. Even ignoring the doubts about whether these magazines constitute actual use in relation to 'magazines' in the course of trade (as they appear to be in-house publications for the information of the opponent's staff) the use does not pre-date the present application. Although the opponent's written submissions claimed use on printed matter from 1997, the evidentiary material does not support use by the opponent before the ENJOY magazine from April 1998.

As the opponent has not demonstrated use of the mark on the 'same kind of thing' from a date prior to the present application, I find that opposition under this ground of opposition is not successful.

(d) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

Under s.60 the Act reads:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

The formats in which the opponent has used its mark consist of, firstly, lower case lettering, as the word 'enjoy' on it's in-house magazines; in upper case lettering as the word 'ENJOY', at the conclusion of its television advertisements for various biscuits; and in Squawk magazine, in upper case in relation to advertisements for 'aprons, coasters and oven mitts'.

Using the standard tests for deceptively similar trade marks[4], I believe that both of the opponent's marks - in either upper or lower case lettering - are deceptively similar to the presently applied for mark.

[4] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 415;

This brings me to a consideration of the reputation enjoyed by the opponent in its trade mark as at the application date, being 19 March 1998, of the present application.

Although the opponent has claimed use of the mark from as early as March 1997, the evidence provides actual proof of use from April 1998, on the opponent's in-house magazine. Thus, this item does not assist with establishing whether it had any reputation in the mark. The exhibit of Squawk magazine in the evidence is dated 'Summer 1998'. Alone, such a date is ambiguous as to whether the summer of 1997-98, or that of 1998-99 is intended. The ENJOY trade mark is used in relation to coasters, aprons and oven mitts in the copy of this magazine. A separate advertisement in the magazine, which is unrelated to the opponent's advertising, and which promotes Darling Harbour, mentions that certain benefits are only available 'until the end of February 1998'. This indicates that the magazine applied to the summer of 1997-98 rather than 1998-99. Other competitions within the magazine have closing dates of 15 February 1998 to support this proposition. The time period from summer 1997-98, however, to the date of application in March 1998 amounts to a few months at best. Given the limited range of goods shown in the magazine and the fact that the magazine does not appear to have been for general distribution, I do not accept that the opponent has showed any level of reputation for its mark by means of this exhibit.

A set of the opponent's television advertisements shows some use in relation to biscuits at the end of many of their advertisements. The dates of screening of these items are not apparent in the evidence. In addition, these advertisements are of limited value to support the opponent's case because I do not believe that use of the word ENJOY in the circumstances of the advertisements would be readily seen as trade mark use. Any owner should be free to say 'enjoy' at the end of an advertisement for foodstuffs. I see this as quite similar to a salutation such as 'bon appetit' in relation to food. Thus, I do not accept that this material provides any significant reputation in the mark for the opponent.

The final item for my consideration that involves a possible reputation in the mark, concerns the figures submitted in the first Waugh declaration, in relation to marketing and promotion of the mark. The figures provided are listed from 1997 in the millions of dollars. However, the information in the declaration leaves one to speculate concerning the exact nature of this expenditure. At paragraph 12 of the first Waugh declaration we read: 'Since the adoption of the Trade Mark Arnott's has spent ${xx} in 1997, ${yy} in 1998 and ${zz} in 1999 on the marketing and promotion of its product. A high percentage of those promotional and marketing materials used the Trade Mark'. These statements call two links in the chain, from expenditure leading to reputation, into question. Firstly, if not all of the expenses involved the mark ENJOY, what expenditure is actually being quoted? Secondly, even allowing for the money spent by the opponent up to 19 March 1998 having ALL been spent in relation to one mark, by what mechanism has this dollar amount been converted to actual reputation? The evidence does not directly address either of these questions. At paragraph 5 of the second Waugh declaration, a statement is made concerning the amount of money spent on television advertising from 1997 to July 1999. This figure is approximately 55% of the total claimed in the first Waugh declaration. If, in fact, the figures in the first Waugh declaration involve mainly the television advertisements that I have viewed, then I would not regard the money spent as actively supporting a reputation in the mark. The trade mark readily seen in those advertisements is ARNOTT'S, with the word ENJOY appearing at the very conclusion of the advertisements as little more than a salutation.

Taken together, I am of the opinion that the opponent has not sufficiently demonstrated a reputation in the mark that could lead to any degree of deception or confusion as at the present date of application.

From the above, I find that the ground of opposition taken under s.60 is not successful.

Conclusion

From the foregoing, as a delegate of the Registrar, as I have found that the opponent has not established any of the grounds of opposition listed in the notice of opposition, I dismiss this opposition to registration of trade mark 757521 and direct that, on payment of the registration fee the application may proceed to registration.

Don Nancarrow
Hearing Officer

26 October 2000

Rysta Limited's Application (1943) 60 RPC 87 at 108;
Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd. (1937) 58 CLR 641 at 658.