Aroma Coffee & Tea Co Pty Ltd v Aromas Pty Ltd (Formerly Intercof Pty Ltd)
[1997] ATMO 82
•31 December 1997
TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS,
WITH REASONS
Re: Opposition by AROMAS PTY LTD (formerly INTERCOF PTY LTD) to
registration of trade mark applications numbers 570744 and 570745 in the
name of AROMA COFFEE & TEA CO PTY LTD
As provided in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition. Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.
This matter concerns trade mark applications numbers 570744 and 570745, both lodged on 16 January 1992 in the name of Aroma Coffee & Tea Co Pty Ltd, (the applicant), for a statement of goods subsequently amended to “coffee, tea, choco (sic), sugar and drinking chocolate being goods included in class No. 30”.
Application number 570744 is seeking registration of the mark:
The other application, number 570745, is for the mark:
Both applications were advertised as accepted in the Australian Official Journal of Trade Marks of 19 May 1994, under the provisions of sub-section 24(2) and sub-section 34(1) of the Act.
On 19 September 1994, a notice of opposition to registration of each of the applications was lodged by Aromas Pty Ltd (formerly Intercof Pty Ltd), (the opponent). Eight grounds of opposition are enumerated in the notices of opposition. Of those, at the hearing, the parties concerned concentrated on the submissions and evidence in relation to two grounds,
* on section 33, that the registration or use of the applicant’s trade marks was likely to cause deception or confusion by reason of their close resemblance to one or more of the opponent’s trade marks used for the same or similar description of goods, and
* on s 28, that by reason of the reputation and rights acquired by the opponent, the use of the applicant’s marks would be misleading or confusing and an infraction of the opponent’s said rights.
The evidence
Evidence in support
Statutory declaration by Christopher John Bryant, dated 18 October 1995, with annexures A1 - A12 (Mr Bryant’s first declaration)
Evidence in answer
Statutory declaration by Christo Denis Athanas, dated 12 April 1996, with
exhibits CDA1 - CDA11 (Mr Athanas first declaration)
Statutory declarations in relation to application number 570744 by the following declarants:
Thedore Mylonas, dated 23 February 1996
Markris Fragias, dated 15 February 1996
Costas Andreou, dated 8 February 1996
Robert Forza, dated 31 January 1996
Betty Lynette Morris, dated 6 March 1996
Mark Morris, dated 21 February 1996
Peter Elcham, dated 8 February 1996
Statutory declarations in relation to application number 570745 by the following declarants:
Thedore Mylonas, dated 15 February 1996
Markris Fragias, dated 27 February 1996
Costas Andreau, dated 8 February 1996
Robert Forza, dated 31 January 1996
Betty Lynette Morris, dated 21 February 1996
Mark Morris, dated 6 March 1996
Peter Elcham, dated 8 February 1996
Marcello Nadile, dated 23 February 1996
Evidence in Reply
Statutory declaration by Janette Elizabeth Lucas, dated 12 June 1996
Statutory declaration by Christopher John Bryant, dated 18 April 1997, with exhibits 1 - 3 (Mr Bryant’s second declaration)
Further Evidence ( the applicant’s)
Statutory declaration by Christo Denis Athanas, dated 16 May 1997, with annexure CD1 (Mr Athanas’ second declaration)
Further Evidence (the opponent’s)
Copies of the following:
Article in the ‘The Courier Mail’, dated 16 November 1995
Letter from FAC, dated 6 December 1995
Letter from Gadens Ridgeway, dated 10 May 1996
Invoice from CRP Trading Pty Ltd, dated 20 August 1996
Evidence in Reply to Further Evidence (the applicant’s)
Statutory declaration by Nita Athanas-Zubani, dated 20 June 1997, with annexures NA1 - NA4
Further Evidence (the applicant’s)
Statutory declaration by Nita Athanas-Zubani, dated 5 August 1997, with annexures NA1 - NA4
This evidence was not admitted. The reasons for refusing it are set out in my
decision.
Mr Bryant, who is the chief executive officer of the opponent company, recites his company’s development from a one shop operation retailing coffee, tea and related paraphernalia in 1982 to nine shops in 1995, one of which was franchised. The opponent is the proprietor of two registered trade marks in Australia in classes 30 and 42. All the opponent’s shops retail and display coffee and tea and related products under the registered trade marks, together with other goods. The opponent supplies tea and coffee products to customers throughout Australia. Mr Bryant provides estimates of gross sales of tea and coffee from 1983 to 1995. He states that no records detailing the exact amounts spent on promotion are available, but a figure is given representing expenditure since 1982. Mr Bryant has been actively involved in the coffee industry internationally and throughout Australia. He claims to have never seen the applicant’s trade marks used anywhere except for inner city areas in Sydney, New South Wales, nor is he aware of any advertising of the marks nationally, or in Sydney besides the advertisement in the Sydney Yellow Pages telephone directory.
Mr Athanas is the managing director of the applicant company. His declaration reflects the history of the applicant’s business and use of the subject marks since the purchasing of the business in 1973. He has estimated the percentage of total sales of coffee and tea under the marks for the various mainland Australian states and the Australian Capital Territory and sets out the amounts for sales, advertising and packaging of the products from 1974 to 1995. Annexures to his declaration show samples of advertising and promotion and a list of distributors of the products. Since first becoming aware of use of the opponent’s marks in Queensland in 1993 he has not heard of any instance of confusion of the marks in question in the market place.
The fifteen other statutory declarations in the evidence in answer in the form of questionnaires emanate from persons all of whom are said to have been associated with the relevant industry for a long period. All except two are from the state of New South Wales and deny any knowledge of any confusion between the applicant’s and the opponent’s marks.
Ms Lucas, an employee of the opponent from August 1994 to April 1997, says that instances of confusion between the two companies involved had become apparent from 1995. She describes those occurrences.
In his second declaration, Mr Bryant comments on and passes criticisms in relation to statements made in the declarations by Messrs Athanas, Elcham, Morris, Forza, Andreou, Fragias and Mylonas.
To the statutory declaration by Mr Athanas, which comprises the applicant’s first further evidence, are annexed copies of Sydney Yellow Pages directory showing the applicant’s advertisements before 1985.
The opponent’s further evidence, an article in a Brisbane newspaper and a letter, concern the opponent’s operation of a coffee shop in the new Brisbane International Terminal. In a copy of another letter the opponent’s lawyers advise the applicant’s attorneys of confusion the use of the applicant’s mark is allegedly causing to the opponent’s clients in south east Queensland and seek an undertaking to cease trading under the mark. A copy of an invoice addressed to the opponent also constitutes this evidence.
To the opponent’s further evidence the applicant has replied by way of further evidence in the form of Ms Athanas-Zubani’s declaration with exhibits which attributes an alleged confusion to a computer error.
Subsequently, the applicant lodged an application seeking leave to adduce further evidence which, upon hearing the submissions on it at the hearing, I decided not to admit. I advised the parties that the reasons will be stated in my decision
The opposition matter came before me on 3 October 1997 in Sydney. The opponent was represented by Ms Emma Hossack, the solicitor of the opponent company. Mr Michael Taylor of Anderson-Taylor & Associates, patent and trade mark attorneys of Sydney, appeared for the applicant.
Submissions
At the outset of the hearing I advised Ms Hossack that, having received the opponent’s written objections to the application from the applicant seeking leave for lodging further evidence after expiry of the fourteen day period specified in sub-regulation 47(5), I am unable to consider the objections. I then requested Mr Taylor to make submissions as to why the applicant’s further evidence ought to be admitted.
Mr Taylor said that the further evidence concerned a number of relevant issues: first, a facsimile letter by Mr Robert Forza, dated 30 July 1997, related to a statement made in Mr Bryant’s second declaration on confusion of the applicant’s and the opponent’s marks in the market place. In it, Mr Forza had re-confirmed that the statutory declarations he had made on 31 January 1996 in relation to the applications were not sworn in error. The letter had been lodged as part of the further evidence without delay. It was a very important piece of evidence, because it went to the accuracy of the earlier statutory declaration. Second, the other material in the further evidence, copies of the invoices, showed that the applicant conducted business under its trade marks outside the state of New South Wales, Mr Taylor said.
In reply, Ms Hossack explained that she, as the opponent’s solicitor, had taken a note of a telephone conversation with Mr Forza and that Mr Forza’s facsimile letter was totally at odds with that conversation. In fact, as a follow-up of that call the opponent had considered commencing some trade with him in respect of food products. There seemed to be a conflict which she did not believe would be resolved by a letter without proof of trading. Ms Hossack then directed my attention to the invoices which are dated a month after the opponent’s evidence in reply. She did not think those invoices should be permitted as evidence of trading in other states, because invoices could easily have been procured earlier as a matter of evidence for this case, otherwise it could lead to the applicant basically continuing to adduce new evidence every time it was given some information and argument by the opponent.
Ms Hossack then made submissions on the substantive matters of the opposition. She turned to the opponent’s evidence which showed that sales of the opponent’s goods bearing the marks had amounted to over 6 million dollars at the time of the notice of opposition and that many hundreds of thousands of dollars had been expended on advertising in Queensland and nationally. Mr Bryant’s second statutory declaration, which had been made following receipt of the applicant’s evidence in answer, refuted allegations of continued use of the proposed trade marks in the absence of evidence. He had also questioned the standing of the members of the industry who had produced declarations as they were not independent persons, but were actually customers or financially related to the applicant. Furthermore, Mr Bryant had referred to the lack of evidence of use of the proposed marks in respect of Queensland, Victoria, Norfolk Island and only limited use in the other states. It was critical that it be established by the opponent that firstly, the use by the applicant of the trade marks will be confusing and possibly deceptive to members of the public and secondly, that there was no honest concurrent use for the period since the applicant started trading under the marks to date. Mr Bryant had pointed out a discrepancy in the applicant’s evidence at the time of purchase as the business had been continued by a different entity. This had not been countered by the applicant. Furthermore, apart from the further evidence which was raised by Mr Athanas in his second declaration, the only evidence which the applicant was able to adduce was a series of advertisements in the Yellow Pages showing a logo which differed from the actual marks of the present applications. There was no evidence that the company purchased by the applicant traded in the mark AROMA and that use of the mark had continued without interruption, as alleged by Mr Athanas in his first declaration. The exhibit showing a lapsed application for a mark which was not even identical with either of the marks subject to the present opposition could not be regarded as evidence of its actual use but only an intention to use it, Ms Hossack argued. In relation to the applicant’s invoices, Ms Hossack observed that the displayed marks were different from the subject marks and that they were all directed to one customer, the Department of Defence. Commenting on the exhibited copies of account cards, Ms Hossack noted that the cards did not indicate that the goods were actually sold by the applicant or its predecessor in business, and that some did not even identify the customer.
For actual confusion of the conflicting marks, Ms Hossack referred to the statements made by Ms Lucas and Mr Bryant in his second declaration. The details surrounding the confusion spoke for themselves, she said, i.e. that there had been constant confusion since the applicant commenced selling coffee and tea under its logo mark in Queensland, where the opponent first developed its trading activities. Important evidence of confusion was a copy of an invoice by a coffee company, CRP Trading Pty Ltd, attached to Mr Bryant’s declaration. No matter how the error occurred, Ms Hossack submitted, the invoice had been addressed to the opponent at West End and the amount had been paid. The applicant had not made any enquiries about the invoice, possibly because it was not aware of it, nevertheless, it was evidence of confusion originating from an independent party standing in the industry. The claim that the confusion had been caused simply by a computer error could not be justified, Ms Hossack argued, as computers are programmed by people and most invoices nowadays are generated by computers.
Ms Hossack then briefly described the test for deceptively similar marks set down by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) CLR 407, at 414-415, which focusses on the impression of the marks likely to be left in a person’s mind. Competition between similar marks should then be resolved in favour of the mark which is more widely known, Ms Hossack asserted. The sales figures and the evidence of national advertising submitted in the evidence in support would demonstrate that the opponent had a significantly wider reputation than the applicant for the goods sold under the trade marks. In relation to those goods a number of sales were generated by telephone conversations. The opponent’s and the applicant’s names were remarkably similar and most people on the telephone would likely abbreviate the name to say ‘Aroma’ or ‘Aromas’, rather than state the full name of the company. It was important to take into account that similar sounding names could cause errors on the telephone, whereby one could easily believe that he was buying from the opponent instead of the applicant, or vice versa. As the opponent had expended significant energy, time and resources in establishing reputation, it might suffer if a product perhaps not of the same quality was being sold under a confusingly similar name. Additionally, the opponent was concerned that the persons with whom it had franchising arrangements to use its registered marks, and who had paid significant amounts of money, would be seriously disadvantaged in that the worth of the marks would be diluted if the applicant’s marks are registered. The likelihood of confusion should not only be answered by what the applicant had currently done, but also consideration should be given to what use the applicant’s marks would be put if registered. For authority on that aspect Ms Hossack cited the High Court case Berlei Hestia Industries v Bali Co Inc (1973) 129 CLR 353. From it she drew the conclusion that the trader with the greater reputation in the mark will usually have priority to registration. Marks with greater reputation, if registered, should only be jeopardised by a registration of the applicant’s marks, pursuant to section 34, if it was believed the marks would not cause deception or confusion to the public, that there was evidence to show that the applicant’s marks had been used widely and that they had been used honestly and concurrently prior to registration of the opponent’s marks. In this instance, such evidence had not been made available, Ms Hossack submitted.
More particularly in relation to the issues of sub-section 34(1), Ms Hossack directed my attention to the opinions expressed by the deponents who were members of the relevant trade, most of whom, she said, were related financially to the applicant. Their opinions, therefore, should not be given very much weight and for support Ms Hossack referred to Nuts Chocoladefabriek BV v Cadbury Ltd 5 IPR 77. She reminded me that proof should be provided by persons standing in the trade not connected with the applicant, as set out in the Trade Marks Examiner’s Manual and that there should be at least three persons of that calibre in each state. Commenting on the factors to be considered in relation to honest concurrent use as per Alex Pirie & Sons Ltd’s Appn (1933) 50 RPC 147, Ms Hossack stressed, in particular, the balance of convenience which, she said, favoured refusing the present applications on account of significant confusion which had already occurred and which could become greater, the dilution of value of the opponent’s marks and the loss of goodwill the franchisees would suffer. If I were to find concurrent continuous use of the marks which was not confusing or deceptive, then Ms Hossack proposed that I should consider conditions in respect to limited use of the applicant’s marks in order to reduce the extent of confusion and the possibility of the applicant capitalizing on the opponent’s reputation.
Considering the composition of the opponent’s and the applicant’s marks, Mr Taylor drew the conclusion that the main issue here concerned the words AROMAS and AROMA in the respective marks. Basically, the matter revolved around the question of what rights the applicant had to the word AROMA, and in that regard the applicant was purporting to show that it owned the subject marks. It was an old established company whose trading, either by itself, or its predecessor in business, dated back to 1960s. It had inserted listings and advertisements in the Sydney telephone pages since the early 1970s. As, during examination of the applications, two of the opponent’s marks had been cited against the applicant’s marks under section 33, the applicant had lodged evidence of use of the marks dating back to 1965. Subsequently, the applications had been allowed to proceed under the provisions of sub-sections 34(1) and 24(2).
Mr Taylor said it was not disputed that the opponent had made considerable use of its marks in respect of coffee and tea at least in the state of Queensland. To this Ms Hossack responded by pointing out that the national advertising and an extensive list of locations and people to whom the opponent provided its products supported trade interstate. The exhibits of Mr Athanas’ second declaration, Mr Taylor submitted further, showed trading of the applicant’s coffee since 1973 and use of the name AROMA as a trade mark in relation to coffee and tea as far back as that year. Even on the basis, which the applicant did not concede, that there might be some question as to the transfer of ownership in 1960s when Mr Athanas bought the business, the applicant had been operating under the word AROMA in respect of coffee and tea nine years before the date of the first use of the marks by the opponent. In that regard, Mr Taylor submitted that the mark displayed in the telephone pages might not have been in the script lettering but, as the word AROMA appeared there, the applicant had established its right to that word.
To Ms Hossack’s criticism concerning the supporting declarations, Mr Taylor responded by saying that those were all sworn declarations from deponents who have been associated with the tea and coffee industry for many years. Furthermore, they had attested to having been aware of use of the applicant’s marks for about twenty years. As to the alleged connection of these persons with the applicant, in Mr Taylor’s view, the Trade Marks Office would have taken into account that, on the balance of probabilities, the people concerned would not have sworn false declarations. He also pointed out that Mr Bryant in his second declaration had not refuted the evidence of earlier use of the marks by the applicant. It should also be taken into account that documentary evidence of use of the marks for more than twenty years was difficult to locate. In this case, the applicant had produced documentary evidence of purchase of business of Aroma Coffee and Tea Co in 1973 by Mr Athanas and his wife in partnership. The lack of any additional evidence of transfer, he said, was adequately explained by the death of the accountant who handled the matter.
While there may have been changes of some of the peripheral features around the marks over the years, Mr Taylor said, the main essence of the marks was the word AROMA and the applicant had produced quite good evidence showing use of the word AROMA dating back at least to the 70s and possibly to the 60s. He could find no documentary evidence of sales or use of the opponent’s marks dating back to 1982. On the best evidence available, therefore, the Registrar was entitled to conclude that the applicant had used a mark with the word AROMA before use of the opponent’s marks.
On the question of confusion of the marks, Mr Taylor denied there had been any significant evidence of confusion. If one accepted trading under the opponent’s marks since 1982, that indicated the co-existence of the marks on the marketplace for approximately 14 or 15 years. Both the applicant and the opponent had been selling millions of dollars worth of coffee during that time. As had been established following the applicant’s enquiries upon receipt of the invoice, the forwarding of the invoice by CRP Trading Pty Ltd to the opponent when in fact it should have been issued to the applicant had not occurred due to the similarities between the words AROMA and AROMAS. With reference to the confusion experienced in certain cafes, as stated by Mr Bryant and Ms Lucas, Mr Taylor submitted that, in the absence of any declarations verifying the confusion or even identifying the persons, that evidence should be given little weight. A similar approach should be taken in respect of Mr Bryant’s allegation in his first declaration as to an unidentified member of the public being confused in unexplained circumstances. Ms Lucas had been employed by the opponent, therefore her declaration could not be regarded as unbiased. Here Ms Hossack added a comment that the opponent’s evidence of confusion was not perhaps as wide as could be, because the opponent had undergone reconstruction which resulted in a loss of great deal of the company’s records.
Responding to the suggestion that Mr Peter Elcham might be responsible for misrepresentation, Mr Taylor submitted that Mr Elcham was not and never had been an employee of the applicant. He was a distributor of the applicant as well as of other companies, but the applicant did not control him. Ms Hossack, however, pointed to a copy of Mr Elcham’s card annexed to Mr Bryant’s second declaration, which clearly states the applicant’s name, address and telephone number. Mr Taylor said that, if the opponent had complaints against the activities of Mr Elcham, then those complaints may be redressed under the general law. Opposition was not a venue for such matters. The fact that an unidentified freight company and an estate agent who was not named may have been confused as to the employer of Mr Elcham, did not mean confusion in the tea and coffee industry, Mr Taylor submitted.
The fact that the applicant had been unsuccessful in obtaining registration of one of its marks some time ago did not detract from the fact that it had shown early interest in the mark, Mr Taylor said. In addition, persons of the trade had declared as to their knowledge of the applicant’s marks for up to twenty years in four states of Australia. They had also stated in a declaration that they were not aware of any confusion of the opponent’s and the applicant’s marks. Notwithstanding criticism of these trade declarations, Mr Taylor said, they constituted evidence from experienced persons in the industry, some, admittedly, customers of the applicant, nevertheless, they were not directly involved with either party in the present opposition, nor did the applicant have any financial control over them, as far as he was aware.
Discussion
Whether the application dated 6 August 1997 for leave to lodge further evidence ought to be admitted
Copies of the invoices, order form and confirmation of shipment which comprise part of this further evidence sought to be adduced by the applicant are said to show use of the applicant’s marks outside the state of New South Wales. All of these documents are dated post the date of service of the evidence in reply and omit reference to either of the applicant’s trade marks. Even if the documents had shown purchase of the goods under the subject marks, having regard to the criteria to be considered when deciding the issue of further evidence, as set out in Oxon Italia SpA’s Appn [1981] FSR 408 and Studio Srl v Buying Systems (Aust) Pty Ltd (1992) AIPC 90-858, I do not consider that evidence based on trading of the goods in 1997 would have an important influence on the present case which primarily concerns the question of honest concurrent use of the applicant’s and opponent’s allegedly conflicting marks, the relevant period being before the date of lodging the present applications.
In Mr Forza’s facsimile letter, dated 30 July 1997, the writer contradicts the claims made in Mr Bryant’s declaration concerning a telephone conversation with Ms Hossack, of which Mr Bryant had been informed, and denies that his earlier statutory declaration had been made in error, reiterating that he had been trading with the applicant for twenty years without ever encountering any instances of confusion with the opponent.
The evidence in reply was served and lodged on 21 April 1997. On 19 May 1997, the applicant had applied for and was granted leave to adduce further evidence. In the absence of any indication from the applicant that it proposed to seek leave for additional further evidence, both the parties were advised that a hearing on the opposition may be requested, resulting in a request for a hearing from the applicant. While I appreciate that in the public interest it is desirable for the Registrar to have all the relevant material available to determine the matter of deception or confusion in opposition proceedings, as enunciated by Richardson J in Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410 to which the hearing officer referred in Studio v Buying Systems, supra, in the present circumstances I have taken into account the inconvenience caused to the opponent by the proposed additional further evidence, the cost that would be incurred by it as well as the delays in these proceedings resulting from this action. I also consider that the further material sought to be submitted has little, or no bearing on my final decision.
Consequently, I have no option but to refuse the application to serve the additional further evidence.
Sections 33 and 34
The relevant provisions of section 33 read as follows:
33(1) Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered or is the subject of an application for registration, by another person in respect of the same goods, or goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.
In relation to this section, the opponent has relied on two of its trade mark registrations: number 449941 in respect of “coffee and tea” and number 564905 which covers “cafe services, catering services, restaurant and bar services, coffee shop services, take away food and drink services; retailing and wholesaling services being services relating to items of food and beverages, t-shirts and souvenirs, crockery, cutlery, homewares and tea and coffee apparatus; alcoholic beverage services”.
The mark of those registrations is represented here:
I believe that, on the side by side comparison, the applicant’s and the opponent’s marks are not substantially identical. However, in light of the criteria outlined by Windeyer J in Shell Co v Esso Standard, supra, at 414-415 and by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, at 658, in my opinion, the close resemblance of the marks renders them deceptively similar.
While in totality the marks are distinguishable, all of them feature a striking similar element in the words AROMA and AROMAS. Given the prominence of these words, which are similar in appearance, sound and meaning, the words are likely to be retained in one’s memory, resulting in potential confusion of the marks. In addition, those are the obvious words to be used as a means of verbal identification of the products of interest to the purchasers. The products of registration 449941 are the same as some of the goods in respect of which the applicant is seeking registration of its mark and the services encompassed in registration 564905 are closely related to the applicant’s goods - see Rowntree Plc v Rollbits Pty Ltd (1988) 10 IPR 539. Having regard to the principle of what is known as “imperfect recollection”, whereby there is a real possibility of the consumers not remembering the precise details of similar marks such as those under consideration, as discussed by Luxmoore L J in Rysta Ltd’s Appn (1943) 60 RPC 87, at 108, the applicant’s marks offend in terms of section 33 of the Act.
The present applications have been accepted pursuant to sub-section 34(1) of the Act which states:
34(1) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, the Registrar may permit the registration of trade marks which are substantially identical or deceptively similar, or, but for the honest concurrent use or other special circumstances would be deceptively similar, for the same goods or services or other goods or services, by more than 1 proprietor subject to such conditions and limitations (if any) as the Registrar imposes.
It is therefore for me to decide whether, in light of the submissions and the presented evidence in these proceedings, those provisions of the Act were correctly applied to the applications at the time of their acceptance . In assessing this matter, I turn for guidance to the criteria established in Alex Pirie & Sons Ltd’s Appn, supra, and John Fitton & Co Ltd’s Appn (1949) 66 RPC 110 which were applied in K Mart Corporation v Artline Furnishers 23 IPR 149. The factors to be considered may be summarised as:
the honesty of the concurrent use
the extent of the use in duration, area and volume
the degree of confusion likely to ensue
whether any instances of confusion have in fact occurred
the relative inconvenience which would be caused to the respective parties
The honesty of the use
Mr Athanas has declared in his first statutory declaration that at the time of purchasing the business in partnership with his wife in 1973, the business, which became a proprietary company in whose name the applicant is now seeking registration of the marks, had already been trading in Australia under the trade mark AROMA since 1965. Since then, he says, the applicant had continued trade under marks substantially in the form of the subject trade marks. It is not surprising that Mr Athanas had no knowledge of the trade mark containing the word AROMAS being used in the coffee and tea industry in Australia at the time of acquiring the business as the opponent commenced trading under its marks only in 1982 and applied to register the first of the marks on 8 August 1986. According to Mr Athanas, he had first become aware of use of the opponent’s marks in Queensland in 1993. While there may be some inconsistencies and lack of documentary evidence as to continuity of the business by the applicant since 1965, there does not seem to be any reason why Mr Athanas’ other statements should not be accepted in support of this criterion, which convinces me of the honest adoption of the marks.
Extent of the use in duration, area and volume
For the purpose of ascertaining the extent of concurrent use, the evidence of use must be assessed prior to lodgment of the present applications, namely, before 16 January 1992 - “Granada” Trade Mark [1979] RPC 303.
It is estimated that the gross sales under the opponent’s marks from 1983 to 1992, inclusive, have progressively increased, amounting to well over 23 million dollars. Even though it is not clear from the statements in Mr Bryant’s first declaration that the figures represent the value of the opponent’s coffee and tea and the related services under the trade marks exclusively in Australia, given that the majority of its customers are located here, there does not seem to be any doubt that the turnover here in respect of the goods and services would be high. While the opponent has been unable to provide detailed records of the exact amounts expended on promotion of its marks, it estimates having invested 1 million dollars in that endeavour since 1982. The ample evidence in the many exhibits of Mr Bryant’s declaration adequately demonstrates the opponent’s extensive advertising and promotional activities in relation to its trade marks.
From the earliest records available to the applicant, in the first declaration Mr Athanas has provided approximate value of sales of coffee and tea annually under the marks AROMA from 1974 to 1995 of which sales up to and including 1992 exceeded 8 million dollars. In the same period, estimated amounts of over 146,000 and 431,000 dollars, respectively, had been spent on advertising and packaging of the products under the marks. Without separating the figures per annum, a total amount of 37,100 dollars for the period from 1974 to 1993 represents expenditure for displaying the marks on artwork, plates, photographs and designs. Mr Athanas estimates that in percentage terms total sales of the products bearing the marks for the various states and territories in Australia are 75% in New South Wales and 5% each in South Australia, Queensland, Victoria, Western Australia and Australian Capital Territory. In support, an exhibit listing the distributors accompanies the declaration. Another exhibit, dated January 1996, shows records of hotels, nursing homes, restaurants, cafes and hospitals all of which are said to purchase the applicant’s coffee and tea.
The copies of the account cards in the applicant’s evidence date back to November 1968. As there is no indication on these records that any of the products were sold under the mark AROMA, however, I find them of very low value. The earliest copy of an invoice the applicant has been able to produce is dated May 1982. One of the representations appearing on top of the printed invoices, all dating from 1982 to 1983 and annexed to Mr Athanas’ declaration, comprises the scroll device with the words AROMA and FINEST PREMIUM COFFEE & TEA as it appears in the mark of application number 570745, while the device of the coffee cup and the word AROMA on an oval which also constitute part of that mark are located under another device. Even though these two components are not combined nor the word AROMA in the special script is shown separately, all the elements comprising the subject marks are featured on the invoices. In addition, in the body of those invoices, reference is made to the products AROMA coffee or AROMA tea. Similar observations as to depiction of the marks may be drawn from some of the advertisements appearing in the Yellow Pages, Sydney, copies of which form exhibits of Mr Athanas’ both declarations, although the representation of the mark for application number 570744 is included in the advertisements for the years 1985 to 1992. However, both of the subject marks are displayed in a number of undated exhibits affixed to Mr Athanas’ first declaration illustrating actual use of the marks. Although the applicant could have shown greater effort in providing more comprehensive evidence to establish use of both marks in the relevant period, the existing evidence satisfies me that the applicant has been trading under the marks concurrently with the opponent.
Judging from the long list of the customers’ names, use of the applicant’s marks appears to have been primarily confined to the state of New South Wales. The list also identifies customers in other areas of Australia. The validity of including in the list a number of the names of customers in the states of Queensland, Victoria and South Australia, and in the Australian Capital Territory and the Norfolk Island has been challenged in Mr Bryant’s second declaration, where his analysis of the list shows only one customer in Queensland and three in the A.C.T. His assertion, however, that the remaining customers either do not purchase products from the applicant, were not available for comment or had closed business some time ago, are not substantiated by any evidence. He fails to state how and when his enquiries were conducted, what persons were interviewed, what type of questions were put to them and their responses. For the opponent to support its claims, this information is essential in the present case where the extent of use of the applicant’s mark is being determined for the period before January 1992. Similar conclusions apply to Mr Bryant’s comments in relation to the applicant’s distributors. Here Mr Bryant says he has made enquiries which have resulted in pointing to only one distributor in the A.C.T. out of eight such persons located in different parts of Australia, but again, he omits to explain the details surrounding the source of his information.
There are no set minimum periods for concurrent use of the marks. In the present circumstances, the applicant claims the mark AROMA has enjoyed continuous use since 1965, although the value of sales under the subject marks is made available only from 1974. Products under the applicant’s as well as the opponent’s marks have shared the market since 1983 up to and beyond January 1992. During that time both the opponent’s and the applicant’s trade marks must have accumulated considerable reputation and goodwill. I have noted the more substantial turnover in trade of the opponent’s products, which was emphasized at the hearing, but, as has been considered in “Chelsea Man” Trade Mark [1989] RPC 111, that factor should not be held against the applicant in proceedings such as the one being considered here. As far as the geographical area of use is concerned, in my estimation, the opponent’s evidence is insufficient to upset the applicant’s claim as to concurrent use of its marks in other areas of Australia besides New South Wales, Queensland and the A.C.T.
The degree of confusion likely to ensue
I have already found the applicant’s and the opponent’s marks, while not substantially identical, then certainly deceptively similar. As the products of the subject applications and the opponent’s registration number 449941 correspond and therefore would be sought by the same type of consumers in similar outlets, the likelihood of confusion of the marks is relatively high. However, taking into account the view expressed by Graham J in “Buler” Trade Mark [1975] RPC 275, at p 289:
“[i]n my judgment, however, as seems clear from Pirie’s case and other cases, the degree of likely confusion is relatively unimportant under section 12(2) [which equates with sub-section 34(1)] provided the honesty of the applicant is established and it is otherwise just in all the circumstances that his mark should be registered”,
as well as having regard to the applicant’s honest adoption and extensive use of its marks, I do not consider this to be a critical factor.
Whether any instances of confusion have in fact occurred
None of the applicant’s deponents who are persons of the relevant trade has attested as to any confusion between the applicant’s and the opponent’s trade marks, which they appropriately connect and identify with each of the parties concerned. Their experience in the trade, as at the beginning of February 1996, ranges from five to thirty years and most of them have known the applicant’s marks for at least nineteen years. However, I cannot give full weight to these declarations as the declarants, with the exception of one, appear to be or have been the applicant’s customers, according to the list supplied by the applicant, and therefore cannot be considered as independent deponents in the matter. On the other hand, I am also mindful of the fact that all are sworn declarations and that it would be difficult to obtain declarations from totally independent persons concerning knowledge of both the applicant’s and the opponent’s marks.
The alleged instances of confusion are described in the declarations by Ms Lucas and Mr Bryant. In the first declaration, Mr Bryant says that a member of the public had advised him of confusion arising from the applicant’s mark, but no more details are provided. Ms Lucas, who was employed by the opponent company from August 1994 to April 1997 as a wholesale representative, relates that in late 1995 she had been contacted by an estate agent and by a freight company in relation to Mr Peter Elcham in the mistaken belief that he was working for the opponent. On making “cold calls” to many cafes she had learned that Mr Elcham had been taken to be the opponent’s representative. She names four of those cafes. This situation is reaffirmed by Mr Bryant in his second declaration where he refers to the confusion caused by Mr Elcham to the estate agent and a number of the opponent’s customers. As a result of these confusions, the opponent’s solicitors had forwarded a letter to the applicant’s attorneys, a copy of which is exhibited to Mr Bryant’s declaration, advising that use of the applicant’s marks in south east Queensland was causing confusion and constituted deceptive and misleading conduct. The applicant was requested to cease trading within one month after the date of the letter. The applicant’s solicitors have responded to this letter, dated 29 May 1996, as shown in the further evidence by Ms Athanas-Zubani, denying any appointment by the applicant of a person to distribute its products in Queensland. There is no evidence that the matter was pursued further.
As documentary evidence of an alleged confusion, the opponent has produced a copy of an invoice from CRP Trading Pty Ltd incorrectly addressed to the opponent for products supplied to the applicant, which has been attributed by the author of the invoice to a mistake made on the invoice “due to a computer error and was not related to any confusion or similarities between the names AROMA COFFEE & TEA CO. PTY. LTD. and AROMAS TEA & COFFEE MERCHANTS”, as shown in an exhibit in the further evidence by Ms Athanas-Zubani.
From the evidence it seems to me that the instances of confusion as stated above have been caused either by Mr Elcham’s conduct, if indeed he improperly intimated that he was connected with the opponent company, as suggested by Mr Bryant, or by the obvious similarity between the applicant’s and the opponent’s names, Aroma Coffee & Tea Company Pty Limited and Aromas Pty Ltd. The issue for my determination here is whether the competing trade marks have been responsible for confusion. No material of such confusion has been submitted. In the absence of persuasive evidence to the contrary, I remain unconvinced that confusion of the marks has occurred in the marketplace where purchasers have actually selected the applicant’s product bearing the mark in question for a product manufactured and sold by the opponent under its mark, or vice versa.
The relative inconvenience which would be caused to the respective parties
The opponent’s argument based on confusion in relation to this heading has not been substantiated with evidence that the trade marks have been confused by members of the purchasing public. In this regard, Ms Hossack also pointed to dilution of the opponent’s trade mark rights and loss of goodwill suffered by the franchisees, but I have found nothing in the material before me suggesting this situation.
According to the applicant, coffee and tea under the mark AROMA have been traded by the applicant’s predecessor in business since 1965, and continued by the applicant following the purchase of the business in 1973. As observed previously, by virtue of considerable use, which has been concurrent since 1983, both the applicant’s and the opponent’s trade marks have established reputation and goodwill. Should registration of the applicant’s marks be refused, the applicant is likely to face infringement proceedings and loss of goodwill acquired through use of the mark consisting of or containing the word AROMA by it and its predecessor in business over at least thirty years.
The balance of convenience therefore appears to favour the applicant.
Having considered the necessary criteria in relation to sub-section 34(1), I have concluded that, despite some deficiencies in the applicant’s evidence to which I have alluded, on balance the applicant has established a case under those provisions. I do not believe any limitations or conditions of registration of the applicant’s marks, as urged by the opponent, are justified.
The opponent’s evidence indicates commencement of its business operations in 1982, but no precise date has been given as to first use of its marks. Sales figures of its products have been provided since 1983. From my earlier conclusions, it will be obvious that the applicant or its predecessor in business commenced using a mark consisting or containing the word AROMA well before 1983. Evidence of actual first use of the subject marks has been demonstrated by the applicant’s invoices, the earliest bearing the date 17 May 1982. Consequently, the present applications would also be entitled to registration of the trade marks under the provisions of sub-section 34(2) of the Act.
Section 28 - deception and confusion
The provisions of this section of the Act read:
A mark -
(a) the use of which would be likely to deceive or cause confusion;
(b) the use of which would be contrary to law;
(c) which comprises or contains scandalous matter; or
(d) which would otherwise be not entitled to protection in a court of justice,
shall not be registered as a trade mark.
In discussing the effect of sub-section 34(1) on section 28, D R Shanahan in Australian Law of Trade Marks and Passing Off, second edition, says, at 201:
“... it has generally been assumed that s.34(1) must override s.28, if not by the application of Lord Diplock’s reasoning in “GE” [(1973) RPC 297], then simply on the basis that s.28 must be read in its statutory context and should therefore be regarded as subject to the exception provided by s.34(1).”
In view of my finding in relation to sub-section 34(1) for the reasons stated previously, there is no need then for me to consider the section 28 question.
Conclusion
As stated above, I am satisfied that the applicant’s marks qualify for registration under the provisions of sub-section 34(1) of the Act without imposing any conditions or limitations. Having so found, I am not required to consider the ground of opposition based on section 28. I therefore dismiss the opposition.
I award costs to the applicant.
Vija Zars
Hearing Officer
31 December 1997
48
3
0