Arthur Heedes Liberty Free Range Chicken v Inghams Enterprises Pty Ltd

[2004] ATMO 23

TRADE MARKS ACT 1995

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

Re:Opposition by Arthur Heedes Liberty Range Chicken to registration of trade mark application 931325(29) - HACCP APPROVED FREE RANGE SUPPLIER - filed in the name of Ingham's Enterprises Pty Ltd.

Delegate:

Jock McDonagh

Decision:

All grounds of opposition dismissed

Costs awarded against the opponent

Background

1. Ingham's Enterprises Pty Ltd (“the applicant”) has filed application to register the trade mark, details of which follow:

Application Number:	931325
Priority date:	18 October 2002
Goods:	Class 29: comprising meat, poultry or game; poultry in this class; fresh and frozen poultry meat; meals comprising poultry meat; prepared meals made from poultry meat or containing poultry meat as a major ingredient; chicken pieces; chicken fillets; chicken schnitzels; marinated chicken; stuffed chicken; chicken burgers; chicken nuggets
Trade Mark:
Advertised:	6 March 2003

1. On 6 June 2003, Arthur Heedes Liberty Range Chicken (“the opponent”) filed notice of opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The notice specified five grounds of opposition, pursuant to ss42, 43, 58, 60 and 62 of the Act.

2. In due course, the evidentiary stages were completed.  Neither party requested a hearing so, as a delegate of the Registrar of Trade marks, I am to decide the matter on the basis of the written record. 

Evidence

1. The evidence filed in these proceedings consisted of an affidavit sworn on 2 September 2003 by Arthur Heedes, proprietor of Liberty Free Range Chicken Trade Mark 921120. 

2. Regulation 21.17 of Trade Marks Regulations 1995 (“the Regulations”) provides that evidence in any proceedings before the Registrar (such as these) must be in the form of a declaration. Regulation 21.6 details the formal requirements for a declaration, including the requirement for a heading with the title of the matter, and the name and address of the declarant. Neither of these requirements was met.

3. The applicant did not file any evidence in these proceedings.  The applicant’s attorneys filed detailed written submissions on behalf of the applicant. The applicant’s attorneys did not object to the form of the opponent’s evidence.

4. Section 54 of the Act provides:

   54.(1) The Registrar must give to the opponent and to the applicant an opportunity of being heard on the opposition.

   Note:  For opponent and applicant see section 6.

   (2) Subject to subsection (1), the proceedings for dealing with the opposition must be in accordance with the regulations.

1. Parliament has expressed the intention that opposition procedural regulations be subject to the parties being given an opportunity to be heard; therefore, I intend to admit the opponent’s affidavit and to consider the information contained within it insofar as it is relevant to the proceedings.

2. In his affidavit, Mr Heedes provides a definition of “free range chicken”, and states that while the applicant has been selling what is purported to be free range chicken, he understands that Ingham’s free range chicken does not conform with his definition of it.  He states that, since the applicant is well known as an intensive chicken grower it has not established its right to claim to be a free range chicken supplier.

3. Mr Heedes further states that the applicant’s purporting to use the expression “free range chickens” on the trade mark would contravene the Trade Practices Act 1974 (“TPA”). This is on the basis that Mr Heedes believes that the applicant has never produced or grown free range chicken to his criteria to date.

4. Mr Heedes also states that the applicant’s mark is likely to mislead and cause confusion by portraying to the consumer that the applicant is the only HACCP Approved free range chicken supplier in Australia.

5. Mr Heedes also makes a number of comments and poses questions relating to the applicant, which are not relevant to grounds of opposition. Therefore, the only grounds of opposition that are, prima facie, arguable by evidence are those under ss42 and 43 of the Act.

Ground 1 - s.42(b) Contrary to law

1. Section 42(b) of the Act provides:

   42. An application for the registration of a trade mark must be rejected if:

   ...
   (b) its use would be contrary to law.

1. For this ground to be established, it must be shown that the use of the trade would, not could, be contrary to law.  Evidence is required to support assertions, such evidence needs to be more than evidence from an opponent’s legal representatives and employees: Red Hat Inc v Martinek (2002) 56 IPR 292, Stepsam Investments Pty Ltd v Time Warner Entertainment Co LP [2002] AIPC 91-830.

2. There is nothing inherent in the applicant’s trade mark that would necessarily result in any breaches of the TPA if the mark were registered or used. It is not the responsibility of the Registrar of Trade Marks to assess whether or not the applicant is in fact HACCP approved or whether or not the applicant raises free range poultry.

3. There is no evidence that the applicant has used, or intends to use, the mark in contravention of the TPA.

4. I therefore dismiss this ground of opposition.

Ground 2 - s43: Trade mark likely to deceive or cause confusion.

1. Section 43 of the Act provides:

   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.

2. This ground is concerned with connotations inherent within the mark itself.  The opponent asserts that the applicant’s mark connotes that the applicant is the only HACCP approved free range chicken supplier in Australia.

3. While the applicant’s mark certainly proclaims HACCP approval and that the goods are free range chicken, there is nothing inherent in the mark that the applicant’s goods are the only ones fitting such a description.  The opponent does not provide any evidence that consumers have or would derive such a connotation from the mark.

4. I am not satisfied that this ground of opposition is made out and I dismiss it.

The Other Grounds

1. The remaining grounds listed in the Notice of Opposition were pursuant to ss 58, 60 and 62 of the Act. None of these grounds was supported by evidence or submissions. Again, this has the inevitable consequence that the onus that it bears is not discharged. I dismiss these grounds of opposition.

Decision

1. The opponent has not established any of its grounds of opposition. Therefore, the applicant's trade mark may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The applicant sought its costs.  The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule.

2. I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995)

Jock McDonagh

Hearing Officer

Trade Marks Hearings

30 April 2004