At-Sunrice Academy Pte Ltd

[2013] ATMO 23

TRADE MARKS ACT 1995

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

Re:	Trade mark application number 1394920 (35)
in the name of At-Sunrice Academy Pte Ltd

Delegate:

Michael Kirov

Representation:

Applicant: Brett Doyle of Clayton Utz Lawyers, assisted by Kate McElhone of the same firm.

Decision:

2013 ATMO 23

Ex parte matter pursuant to s 33(4): Trade mark deceptively similar to earlier registered trade mark covering similar services and s 44(2) accordingly applies. Insufficient grounds for applying ss 44(3) or (4). Application rejected.

Background

1.     This decision follows from an ex parte hearing held at the request of At-Sunrice Academy Pte Ltd (“the Applicant”) pursuant to s 33(4) of the Trade Marks Act 1995 (“the Act”) in relation to an assessment made during examination that there were grounds under s 44(2) of the Act for rejecting the following application (“the Application”):

Application Number:     1394920

Priority Date:                    26 February 2009

Services:(Class 35): Retail services relating to the sale of candle holders, kitchen appliances, crockery, dining ware, sauces, spices, flour preparations, curry paste, salad dressing, sugar confectionery; demonstration of goods, distribution of samples, organisation of trade fairs for commercial or advertising purposes, sales promotion; all being provided within a global chef academy or provided over the Internet

Trade Mark:    (“the Trade Mark”)

2. Although filed on 17 November 2010, the Application was divided out from then application (now registration) 1287281 (“the Parent”) pursuant to s 45 of the Act and thus has the same 26 February 2009 priority date as the Parent (“the Priority Date”). The Parent originally claimed services in Classes 35, 41 and 42 before the claimed services in Class 42 were amended to Class 43 and before the Application (covering the entire Class 35 specification) was eventually divided out. The Parent then proceeded to registration in Classes 41 and 43 as follows:

Registration Number:    1287281

Filing Date:  26 February 2009

Services:(Class 41): Cooking school

(Class 43): Cafes; catering services; self service restaurants; all being provided within a global chef academy or provided over the Internet

Trade Mark:  

Endorsement:                  Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

3.     I mention that the Applicant had filed the Parent in effect to replace its earlier registration 876087, which covered almost identical services in Classes 35, 41 and 42,[1] but which the Applicant apparently agreed to cancel pursuant to a confidential settlement agreement with the Australian company Ricegrowers Limited (“Ricegrowers”) following Federal Court proceedings between the two parties.  As discussed further below, I do not believe this confidential settlement agreement is of any relevance to my decision here.[2]  However, the Applicant’s attorney referred to the confidential agreement several times in his submissions and in emails to me both before and after the hearing and for the sake of completeness, therefore, details of the cancelled registration are set out below.  I note that the essential difference between the cancelled trade mark (hereafter “the Cancelled Trade Mark”) and the Trade Mark is that the former mark did not contain the collocation GlobalChef Academy and the services in Classes 35 and 42[3], unlike those of the Parent as filed, were not qualified with the words “all being provided within a global chef academy or provided over the Internet”.

[1] When then application 876087 achieved registration in 2001 the 7^th edition of the Nice Classification was in force and the relevant services now classified in Class 43 were then classified in Class 42.

[2] The settlement agreement is not in evidence in any case and I am unaware of its actual contents.

[3] See footnote 1.

Registration Number:    876087 (Cancelled as from 10 June 2011)

Filing Date:  16 May 2001

Services:(Class 35): Retail services relating to the sale of candle holders, kitchen appliances, crockery, dining ware, sauces, spices, flour preparations, curry paste, salad dressing, sugar confectionery; demonstration of goods, distribution of samples, organisation of trade fairs for commercial or advertising purposes, sales promotion

(Class 41): Cooking school

(Class 42): Cafes; catering services; self service restaurants

Trade Mark:             (“the Cancelled Trade Mark”)

Endorsement:                  Convention priority claimed: 16 November 2000, Singapore, No. T00/20049G in respect of RETAIL SERVICES RELATING TO THE SALE OF CANDLE HOLDERS, KITCHEN APPLIANCES, CROCKERY, DINING WARE, SAUCES, SPICES, FLOUR PREPARATIONS, CURRY PASTE, SALAD DRESSING, SUGAR CONFECTIONERY; DEMONSTRATION OF GOODS, DISTRIBUTION OF SAMPLES, ORGANISATION OF TRADE FAIRS FOR COMMERCIAL OR ADVERTISING PURPOSES, SALES PROMOTION; No. T00/20051I in respect of COOKING SCHOOL; No. T00/20052G in respect of CAFES; CATERING SERVICES; SELF SERVICE RESTAURANTS.

4. The principal objections originally taken against the Parent, (and the sole objection taken against the Application), were pursuant to s 44(2) of the Act, which says:

Identical etc. trade marks

44.(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a) it is substantially identical with, or deceptively similar to:

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

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

Note 1:  For deceptively similar see section 10.

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

5. The sole s 44(2) objection taken against the Application was based on registration 1271584 (“the Cited Registration”) owned by Global Chef Pty Ltd (“the Cited Owner”), which is detailed below:

Registration Number:    1271584

Priority Date:                    11 November 2008

Services:(Class 35): The bringing together, for the benefit of others, of a variety of goods enabling customers to conveniently view and purchase those goods in a retail store or from a general merchandise catalogue by mail order or from a general merchandise internet website; provision of business advice to customers at point of sale; organisation and management of loyalty programmes involving discounts and/or other incentives provided to customers; wholesaling and retailing services including online store services and business management services: retailing and wholesaling services for clothing, footwear, headgear, tablecloths, placemats, napkins, aprons, kitchen towels, pot holders, kitchen and catering equipment including food cooking, preparation and serving utensils and equipment, tongs, forks, cookware, pots, pans, baking and cooking gadgets, tongs, forks, cutting boards, tableware (except cutlery),crockery, glasses, bowls and serving trays and food storage containers for kitchen use        (“the Cited Services”)

Trade Mark:     (“the Cited Mark”)

6.     Four adverse reports issued in relation to the Parent before the Application was eventually divided out.  Since these reports and the Applicant’s responses to them dealt principally with the Cited Registration, and since they also explain why the now settled dispute with Ricegrowers arose, they are summarized below.

7.     In her first report on the Parent the Examiner noted that the claimed Class 42 services properly belonged in Class 43 and, in addition to raising the (then recently accepted) Cited Registration, also cited two accepted applications in Classes 35, 41 and 43 owned by Ricegrowers for marks which featured the element SUNRICE[4].  As regards the Cited Registration, she considered the Parent covered “similar services”[5] and that the Trade Mark was “deceptively similar”[6] to the Cited Mark because both “feature the term GLOBAL CHEF”.  In the Examiner’s view the additional material contained in the respective marks was insufficient to adequately distinguish them because, “It is common in the marketplace for traders to sell variant goods under variant trade marks in this fashion, and in the marketplace the average consumer will assume the goods sold under these trade marks to be from the same trade source.”

[4] The Applicant was opposing these two accepted applications at the time.  I understand Ricegrowers eventually withdrew the applications pursuant to the confidential settlement mentioned in paragraph 3.

[5] As defined in s 14(2) of the Act, namely the same services or services “of the same description”.

[6] As defined in s 10 of the Act.

8.     In response the Applicant agreed to amend its Class 42 specification to Class 43 and it provided a formal “Letter of Consent” from Ricegrowers to its proposed use and registration of the Trade Mark for all its services of interest in Classes 35, 41 and 43.  As regards the Cited Registration, the Applicant’s attorneys conceded there was “some overlap” between the services covered by the Parent and the Cited Services.  They nevertheless submitted that the trade marks were not deceptively similar, reasoning that:

When considering the cited mark and our client’s mark side by side the differences are obvious.  Thus we submit that the marks are not substantially identical.  We submit that the cited mark is also not deceptively similar to our client’s mark.  Although both marks contain the words GLOBAL CHEF these words are fairly descriptive on their own and it is the other elements of the marks which distinguishes (sic) the 2 marks.

The cited mark and our client’s mark are both visually and phonetically different.  The cited mark comprises the words Global Chef (sic) with a globe device which is quite different from the stylized flower device[7] contained within the client’s trade mark which also contains the words “at-sunrice” and “GlobalChefAcademy”.[8]

The cited mark when compared as a whole is not conceptually similar to our client’s mark and taking account of the additional elements in each mark the cited mark conveys a quite different impression and idea to our client’s mark when considered as a whole.  In addition, our client’s mark is likely to be identified by the words “at-Sunrice” which are the prominent elements in the mark, whereas the words “GlobalChefAcademy” which are 3 words merged[9] together are much less prominent.

Accordingly, if we consider the cited mark on the basis of first impressions and imperfect recollection, we submit that customers seeing one mark are not likely to think of the other mark.

Although there is some overlap in the services covered by our client’s mark and the cited mark, the marks themselves are sufficiently different with the result that there would be no deception or confusion caused by the co-existence of our client’s mark on the Register with the cited mark.

[7] Referred to as a “stylised sun device” by the Applicant’s attorney at the hearing.

[8] I note in passing that the attorney is mistaken and that these words are in fact rendered in the Trade Mark as “GlobalChef Academy”, this being consistent with how the Applicant uses the words in question on its website and in all the advertising and promotional materials before me.

[9] See above footnote.

9. In her second report, the Examiner confirmed the classification issue was now in order and that the citations of Ricegrowers’ applications had been withdrawn pursuant to s 44(3)(b) of the Act. However she maintained the Cited Registration, saying that:

You draw my attention to the differences between the two marks and the impression of each mark as a whole; however the term GLOBAL CHEF is distinctive and is prominent in each trade mark. The additional material and different graphic representation of the trade marks are not sufficient to overcome this ground for rejection. The services do overlap and the cited claim is very broad.

As I mentioned in my first report, it is common in the marketplace for traders to sell variant goods under variant trade marks in this fashion, and in the marketplace the average consumer will assume the goods sold under these trade marks to be associated with the one trader.

…

If a letter of consent is not available to overcome this citation you may consider submitting very strong or persuasive evidence of use for me to consider.

10.   The Applicant responded as follows through its attorneys:

We enclose a statutory declaration by Tan Kwan Siu dated 14 September 2010 together with Annexures A-I detailing use of the applicant’s trade mark.

In particular, we draw the examiner’s attention to paragraph 4 of the statutory declaration which has indicated that the trade mark the subject of the current application was first used by the applicant in Australia on or about 25 March 2008.  The subsequent paragraph of the statutory declaration provides further details of the use of the trade mark in Australia and indicates that the trade mark has been used continuously in Australia since it commenced use in March 2008.

The applicant’s trade mark was first used in Australia prior to the lodgement of the cited mark 1271584 filed 11 November 2008. In the circumstances, we submit that our client’s trade mark is entitled to registration pursuant to section 44(4).

11. Notwithstanding this claim to prior continuous use the Examiner maintained the Cited Registration in her third report because in her view, “The evidence submitted does not show use of the trade mark on the services applied for, in Australia.” The Examiner then pointed out in some detail where the declaration was deficient and what specific things the Applicant would need to show if it wanted successfully to rely on the provisions of s 44(4).

12.   The Applicant’s attorneys then sought “a formal written indication of the classes of [the Parent] to which the [Cited Registration] applies”, explaining that, “The point of this request is to determine whether the application can be approved for classes 41 & 43 if Class 35 is deleted or if a divisional application is filed in respect of the class 35 services.”

13.   In her fourth report of 12 November 2010 in response, the Examiner advised that she would “be able to favourably consider withdrawing the [Cited Registration] if class 35 is deleted from the application.”

14. As mentioned earlier, the Application was subsequently filed on 17 November 2010 pursuant to s 45 of the Act covering what had been the entire Class 35 specification of the Parent. The Parent itself then proceeded to registration pursuant to 44(3)(b) of the Act for the services in Classes 41 and 43 set out in paragraph 2 above.

15. Some four months later, in March 2011, the Application was examined and the sole objection taken was the anticipated citation of the Cited Registration. The Applicant did not respond to this objection in the ensuing 15 months, but opted instead to exercise its rights under s 33(4) of the Act and on 18 June 2012 requested a formal hearing.

16.   The matter came before me as a delegate of the Registrar of Trade Marks on 16 October 2012 in Sydney.  Brett Doyle of Clayton Utz Lawyers, assisted by Kate McElhone of the same firm, represented the Applicant.  Mr Doyle’s oral submissions were supplemented by written submissions emailed to me on the eve of the hearing and further written submissions emailed to me on 10 December 2012.

Submissions

17.   In his October written submissions Mr Doyle indicated the Applicant was no longer claiming it had continuously used the Trade Mark in Australia for relevant services since before the 11 November 2008 priority date of the Cited Registration.  Rather, the Applicant believed the citation should be withdrawn:

1.because the marks are neither substantially identical nor deceptively similar as contemplated by section 44(2) and section 10; and

2.even if they are deceptively similar, there exist circumstances (“other circumstances”) under section 44(3)(b) that mean that it is nonetheless proper to accept [the Application].

Section 44(2)

18.   I agree that the trade marks in question are clearly not substantially identical based on a side by side comparison, notwithstanding both of them contain the words “global chef”.  The key issue in this case is thus whether the marks are deceptively similar.  In considering this issue I proceed on the basis that the services covered by the Application and the Cited Registration are, on the face of it, essentially the same, a matter not contended by Mr Doyle.

19.   I mention too that I agree with Mr Doyle’s general submissions regarding what the words “deceptively similar” mean in practice.  In particular he noted that:

·Section 10 of the Act says that “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” and that this accordingly means that “not every resemblance is sufficient to render marks deceptively similar”, but rather “only those that are likely to lead to deception or confusion”.  (Mr Doyle’s original underlining retained);

·It is well established that, unlike the case when assessing substantial identity, marks should not be compared side by side.  In particular, Mr Doyle quoted from Windeyer J’s first instance judgment[10] in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961-1963) 109 CLR 407 at 415; (1961) 1B IPR 523 at 529 (“Shell”), where his Honour said:

[10] Windeyer J’s judgment was overturned on appeal to the full High Court but not on this point.

[The comparison] 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 television exhibitions. To quote Lord Radcliffe again [de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106; 1B IPR 496 at 499 (“de Cordova”)]:

The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

And in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 (“Woollen Mills”) at 658, Dixon and McTiernan JJ said:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.

·More recently, Mr Doyle noted, the Full Federal Court (Keane CJ, Stone and Jagot JJ) in Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 (“Food Channel”) endorsed the approach of an earlier Full Federal Court (Moore, Sackville and Emmett JJ) in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd(2004) 209 ALR 1; 61 IPR 212; [2004] FCAFC 196 (“Crazy Ron’s”), saying at [91]:

The approach to the comparison to be made between marks that are said to be deceptively similar was summarised by this court in Crazy Ron’sat [73]–[79]:

[73] First, as the primary judge pointed out, the question of deceptive similarity of marks, unlike substantial identity, is not to be judged by a side-by-side comparison …

[75] Second, the question of deceptive similarity involves factual issues in respect of which similarities of sound may be important …

[76] Third, it is necessary to show a tangible danger of deception or confusion, although it is enough if an ordinary person entertains a reasonable doubt …

[77] Fourth … the court must make allowance for the imperfect recollection a person may have of the registered trade mark in determining whether another mark so nearly resembles the registered mark that it is likely to deceive or cause confusion …

[79] Fifth, the authorities also recognise that the concept of imperfect recollection may be applied to trade marks other than those consisting simply of an invented word (as in Aristoc v Rysta and Berlei v Bali). If a registered trade mark includes words which can be regarded as an essential feature of the mark, another mark that incorporates those words may well infringe the registered trade mark. The other mark may also infringe if there is a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of the words constituting an essential feature of the registered mark.

(The above bolding being my emphasis)

·With reference to the Full Court’s above comments on the significance of “imperfect recollection” Mr Doyle submitted (correctly in my view) that:

This test catches more marks because the doctrine of imperfect recollection means that people’s memories are blurred because overall impressions are carried away, not exact details.

·Mr Doyle also observed that when assessing deceptive similarity one must not only consider the marks by how they look and sound, but must also consider the nature of the goods (or services as here) covered and all the “surrounding circumstances” involved in the marks’ use.  In the often quoted words of Parker J (as he then was) in Re Application by Pianotist Company Ltd (1906) 23 RPC 774; 1A IPR 379 (“Pianotist”) at RPC 777; IPR 380:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or rather you must refuse the registration in that case.

20.   In applying the above, well established principles to the trade marks under comparison in the present matter the essence of Mr Doyle’s submissions was that:

·The marks must be compared as wholes and in this regard they neither looked nor sounded alike;

·The words “global chef” common to the marks were “relatively insignificant” in the Trade Mark as a whole and would, he contended, effectively “escape notice”; and

·“The words GLOBAL CHEF may be an essential feature of the [C]ited [M]ark; however, the word[s] ‘GlobalChef’ or ‘GlobalChef Academy’ are not an essential feature of the mark under application.  Accordingly, the marks cannot be deceptively similar.”[11]

[11] As discussed further below, this submission was apparently based on what I would characterise as a misreading of the Full Federal Court’s decision in Crazy Ron’s.

21.   In particular, he submitted (with my emphasis in bold added and Mr Doyle’s underlining retained) that:

In the present case the marks look quite different or, to put it another way, they are “not alike”.  Furthermore, they sound quite different.  One would be referred to as GLOBAL CHEF and the other would be referred to as AT-SUNRICE.  No one is going to say all the words in [the Trade Mark], especially as the words that are relevant are relatively insignificant.

It is also quite clear that incorporating the whole of another registered mark is not sufficient of itself for a finding of deceptive similarity in the absence of any overall resemblance.

22.   In support of this last proposition he relied on Conde Nast Publications v Virginia Taylor (1988) 41 IPR 505 (“Eurovogue”), where Burchett J held the trade mark shown below covering “ladies’ clothing and men’s casual wear” was not deceptively similar to the trade mark    subject of a defensive registration covering all goods in Class 25:

23.   Referring to the Examiner’s contention[12] that “the term GLOBAL CHEF is distinctive and is prominent in each trade mark” and that, the “additional material and different graphics presentations” notwithstanding, the average consumer would thus assume the services emanated from the same source given “it is common in the marketplace for traders to sell variant goods[13] under variant trade marks”, Mr Doyle submitted that:

…this is quite an extraordinary position.  [The Trade Mark does] not feature GLOBAL CHEF prominently.  The [C]ited [M]ark features the words GLOBAL and CHEF but separated by a Globe & Star Device.  [The Trade Mark] feature[s] the words “GlobalChef Academy” in quite small type and these words are clearly subsidiary to the brand, which is at-sunrice and it appears in conjunction with a Sun Device that is composed of rice grains.

The marks under consideration…are, in our submission, at least as different as the VOGUE and EUROVOGUE marks.

We also reject the Examiner’s contention that single traders use such different marks to indicate a variant range of goods.  Marks designating variant goods within a range generally have much more in common, varying in colour, minor wording or other material that shows a clear continuity within the range.

[12] In her second report on the Parent, summarised in paragraph 9 above.

[13] Presumably the Examiner meant to refer to “services” rather than “goods”, the distinction being immaterial to the point being made.

24.   Referring to a telephone conversation concerning the Parent in which the Examiner apparently “indicated that the citation would not be withdrawn because ‘GLOBAL CHEF is trade mark material and is clearly in both marks’”, he submitted that:

[This] discloses a worrying and incorrect principle of comparison that is not supported by the case law, namely, that because both marks contain common material of a trade mark nature they are necessarily deceptively similar.  From the Federal Court Eurovogue decision and others to be discussed below, this cannot be a valid proposition of law and, to the extent that it informed the decision to maintain the citation, it led to a wrong result.  Such a principle diverts us from the true enquiry and means that the most obvious differences between the marks can be ignored, suppressed or discounted.

In Murray Goulburn Co-operative Co Ltd v NSW Dairy Corporation (1990) 16 IPR 289 at 296-297 per Lockhart, Pincus and von Doussa [JJ], it is in the end a question of impression and common sense whether a mark is likely to deceive or cause confusion. (sic)

25.   In addition to Eurovogue Mr Doyle’s written submissions then refer to twelve further administrative or judicial decisions over the last 25 years in which the issue of deceptive similarity was considered.  As I said at the hearing, I do not believe any of the thirteen pairs of marks in question is analogous to the pair of marks involved in the present matter.  Moreover in several of the cases in question, unlike the position in the present matter, the differences in the respective parties’ goods and/or services of interest, (and in at least two of the cases the notoriety of the earlier mark), were considered relevant to the deceptive similarity issue.  For these reasons alone I do not believe these earlier decisions particularly assist me in reaching my own conclusion on what, as the Full Federal Court indicated in Murray Goulburn, “is in the end a question of impression and common sense.”  That said, where Mr Doyle sought to extract general propositions from some of the thirteen cases which, in my view, are unsupported by the judgments concerned, these cases are touched on in this decision.

26.   Finally, Mr Doyle also included with his written submissions emailed to me on the eve of the hearing:

(1) copies of (open)[14] correspondence between his firm and the cited owner wherein the cited owner detailed its concerns[15] in possibly granting the Applicant’s request for a formal consent to the Applicant’s proposed use and registration of the Trade Mark, but nevertheless suggested a compromise which might be acceptable to both parties; and

(2) (edited) copies of subsequent correspondence between his firm and the Applicant in relation to the cited owner’s proposed compromise.

[14] That is, correspondence not indicated to be “Without Prejudice”.

[15] Said to be based on the manner in which the collocation GlobalChef was being used on the Applicant’s website.

Section 44(3)(b)

27. As mentioned earlier, Mr Doyle also submitted that, were I to find the Trade Mark deceptively similar to the Cited Mark, the Trade Mark should nonetheless be accepted for registration under s 44(3)(b) of the Act. In this regard he listed ten matters said to constitute “other circumstances” relevant to application of s 44(3)(b). As will become clear I have found it necessary to consider these ten matters and I will return to them in due course in the “Discussion” section below.  It is however appropriate firstly to mention the further written submissions Mr Doyle sent me via email on 10 December 2012.

Further Submissions

28.   At the conclusion of the hearing I agreed to allow Mr Doyle two months to obtain the Applicant’s instructions on possible amendment to the specification of the Application[16] before I decided the matter.[17]  I also agreed to consider his further submissions on whether the words “global chef academy” as they appear in the Trade Mark on the one hand, and in the specification on the other, might reasonably be seen as having trade mark or proprietary significance in the former instance but as purely descriptive in the latter.

[16] Two months was considered reasonable in this case because Mr Doyle indicated the settlement with Ricegrowers most likely meant the Applicant would need Ricegrowers’ consent to any amendment.

[17] At the same time noting any such amendment would still leave the s 44(2) issue itself to be resolved.

29.   The question of possible amendment to the specification first arose during an exchange of several emails commencing on 4 October 2012 when I advised Mr Doyle that I was appointed to take the 16 October hearing and sought his written submissions prior to the hearing.  In his initial response Mr Doyle asked me “if there are any particular issues/cases raised in submissions to the Examiner that you think it would be good to address”.  Our subsequent exchange of emails included mine of 12 October, which for the sake of completeness I set out in full below:

Further to our below email exchange I have just been having a closer look at application 1394920, the specification of which ends, as you know, with the words “all being provided within a global chef academy or provided over the Internet”.

It seems to me, on reflection, that the words “global chef” and/or “global chef academy” might reasonably be considered trade mark matter, (notwithstanding your submission of 16 June 2009 that the words “global chef” are “fairly descriptive on their own” and notwithstanding they also appear in the Class 43 specification of parent registration 1287281).  Indeed, I have no idea what meaning the words in question might have other than, possibly, being a reference to a particular facility operated by your client.

It is not immediately apparent to me why the examiner of the marks did not herself object to the words in question appearing in the specification(s) given she did characterise them as “distinctive” in relation to relevant Class 35 services in her second report of 26 June 2009 on registration 1287281.  Be that as it may, I signal that, subject of course to any submissions you might want to make on the issue, my preliminary view is that the words “provided within a global chef academy or” should be deleted from the specification of application 1394920.

Alternatively, if you are able to formulate an amendment to the words “within a global chef academy” to something that would generally be considered (at least by me) to be “regular English” with a clear meaning in relation to the services claimed (and that would not offend against s 65(7) of the Act), that would also be acceptable.

I am mentioning this now so that you will have the opportunity to seek your client’s instructions on a possible amendment prior to the hearing next Tuesday.  If you have any queries please let me know.

30.   In the event Mr Doyle was unable to obtain instructions on this issue prior to the hearing, although he did submit on the day that the words “global chef academy” as used in the Application’s specification were purely descriptive, simply being another way of saying “international cooking academy”.  He said his understanding was that the particular words “all being provided within a global chef academy or provided over the Internet” were added to the specification pursuant to the Applicant’s confidential settlement with Ricegrowers[18] and that it might accordingly now be difficult to obtain Ricegrowers’ consent to amend them.

[18] The negotiation and drafting of which was not, I understand, undertaken by Mr Doyle’s firm.

31.   He believed the Applicant had likewise added the collocation GlobalChef Academy to the Cancelled Trade Mark[19] pursuant to the settlement with Ricegrowers,[20] although in this case he appeared to concede that the manner in which the words were capitalized and spaced did indicate they were intended to convey some trade mark significance.  Indeed, the very reason they were added to the Applicant’s former trade mark was apparently because Ricegrowers considered them sufficiently significant or prominent to distinguish the Trade Mark as a whole from the trade marks of Ricegrowers which themselves consisted of, or featured, the element SUNRICE.  There was nevertheless no anomaly in their usage in the specification for descriptive purposes and their appearance in the Trade Mark with apparent proprietary significance, he submitted, in light of the Full Federal Court’s decision in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 21 IPR 1 (“CAPLETS”).

[19] See paragraph 3.  I note that in addition to cancelled registration 876087, the Cancelled Trade Mark was also subject of the Applicant’s accepted application 1178706, which covered essentially identical services to the cancelled registration in Classes 35, 41 and (in error on the face of it) “42”.  It is apparent from the Trade Marks Register that this application was opposed by Ricegrowers, that the opposition was subsequently referred to the Federal Court and that the Applicant formally withdrew it on or about 4 June 2010, presumably as part of its confidential settlement with Ricegrowers.

[20] Quite possibly, as I suggested at the hearing, because Ricegrowers believed that the words “within a global chef academy” were a reference to a particular facility or facilities operated by the Applicant.  It would accordingly be difficult to devise an amendment to them which did not expand the coverage of the Application and offend against s 65(7) of the Act.

32.   Turning now to Mr Doyle’s subsequent written submissions of 10 December, he said the following regarding possible amendment to the Application’s specification:

We confirm our submission at the hearing that, in the context of the list of services, the words “global chef academy” are not used in a trade mark sense but are ordinary descriptive words.  This conclusion cannot be avoided unless the word “a” be amended to “the”, something which was clearly not intended and precludes any other conclusion.

The Delegate further said that he did not know what a “global chef academy” was.  We confirm that these words indicate an international cooking school.  Details of the Applicant’s international cooking school are included in the declaration of Tan Kwan Siu filed on the parent application and a copy of which the Hearing Officer has indicated that he now has.[21]

We do not believe it is necessary to do so but we are instructed that the Applicant is now in a position to amend the description of services by replacing the words in question so that the services read as follows:

“Retail services relating to the sale of candle holders, kitchen appliances, crockery, dining ware, sauces, spices, flour preparations, curry paste, salad dressing, sugar confectionery; demonstration of goods, distribution of samples, organisation of trade fairs for commercial or advertising purposes, sales promotion; all being provided within an international cooking school or provided over the Internet”.

The Applicant is willing to make this amendment if it will satisfy the Hearing Officer’s concerns.  We submit that this does not broaden the services by expanding the range of institutions beyond a particular institution.  This is because a particular institution was never designated.  To reiterate, the current wording is “a global chef academy”, not “the global chef academy”.  The proposed amendment also indicates “an” international cooking school.  These phrases are synonymous with each other.  To hold otherwise would be perverse.

It is clear law, as held by the Full Federal Court in [CAPLETS], that the same word or words can be used in both a trade mark sense and a non-trade mark sense – in that appeal, it was held that despite CAPLETS being a registered trade mark, the word “caplets” had not been used “as a trade mark” and so the use that the trade mark owner objected to (“24 caplets” to describe paracetamol) was not trade mark infringement.

[21] For logistical reasons I had not had access to the Annexures to this declaration prior to the hearing.

33.   In addition, again pointing to the Full Federal Court’s decision in Food Channel, Mr Doyle re-emphasised his earlier submissions that “rights in marks are given as they are registered and furthermore that marks must be compared as wholes; and further, that a common element is not, of itself, sufficient for a finding of deceptive similarity”, adding for good measure that:

·“GLOBAL CHEF is not the registered mark of the cited owner in class 35 – what is registered is a composite logo mark – and accordingly the applicant by including GlobalChef Academy within its mark does not take the cited owner’s mark”; and

·“GlobalChef Academy is not GLOBAL CHEF but three words rendered with initial capitals, with the words ‘global’ and ‘chef’ joined together and in a particular font.”

34.   Finally, Mr Doyle drew my attention to the coexistence on the Register of the trade mark shown below owned by Woolworths Limited and another party’s earlier registered mark, Homestyle Pet Foods, both covering “Pet food” in Class 31:

35.   Contending that the Trade Mark and the Cited Mark were “at least as dissimilar as the above two trade marks”, Mr Doyle reasoned that:

What should be noted about these two registrations is that the distinctive element of the earlier registration is the word Homestyle which is combined with the non-distinctive name of the products for which it is registered.  Notwithstanding this, the second registration includes the word “HOMESTYLE”, thereby taking what is in effect the whole of the distinctive element of the prior mark, even though it could be argued – and rightly we submit – that the second mark is not deceptively similar to the first mark.  Clearly the acceptance officer was of that view.

Discussion

36.   Notwithstanding Mr Doyle’s above summarized submissions and the various administrative and judicial decisions to which he referred, I have concluded, on balance, that the Trade Mark is deceptively similar to the Cited Mark.  In reaching this conclusion I am mindful of the fact that the services they cover are essentially the same and that, in principle, the goods which the Applicant and the Cited Owner might purvey within their Class 35 services of interest include relatively cheap consumer products possibly purchased on impulse or in a hurry, sometimes purchased unseen (such as via mail order or via the Internet) and not necessarily selected with particular care.  Indeed, items such as candle holders, spices, sauces, flour preparations and sugar confectionery are amongst the specific products subject of the “retail services” claimed by the Application.  In this respect the words of the English House of Lords as long ago as 1891 (in relation to another relatively cheap item often bought on impulse) appear to me apt, “Thirsty folk want beer not explanations”. [22]

[22] Montgomery v Thompson (1891) 8 RPC 361 (at 368).

37.   I think it worth noting, too, that in The Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107; 47 IPR 481 the Full Federal Court (Black CJ, Sundberg and Finkelstein JJ) said the following at [39] concerning the term “deceptively similar”:

[39] Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brasserie Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:

“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

38.   Moreover as far as “confusion” in particular is concerned, as Dodds-Streeton J noted recently in Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (19 March 2012)[23] at [105]:

It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

[23] Dodds-Streeton J’s decision was upheld on appeal to the Full Federal Court (Keane, CJ (as he then was), Nicholas & Dowsett, JJ) in Vivo International Corporation Pty Ltd v Tivo Inc (2012) 99 IPR 1.

39.   I will explain in more detail below why I have concluded the Trade Mark is deceptively similar to the Cited Mark.  Before doing so, however, it is convenient firstly to address the submission summarized in paragraphs 34 and 35 above relating to the registered Homestyle Pet Foods trade mark.  What the submission appears to ignore is the majority decision (French and Tamberlin JJ) in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, affirming the finding of the trial judge[24] that the trade mark was not deceptively similar to the (stylized) trade mark METRO in view of the “notorious familiarity” amongst Australian consumers of the name “Woolworths”. As French J (as he then was) put it at 431, the taking of reputation into account when assessing deceptive similarity under s 44 may be appropriate in circumstances “where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken” since “it would be artificial to separate out the physical features of the mark from the viewer’s perception of them”.[25]  Presumably this precedent would have been very much in the acceptance officer’s mind when considering the Woolworths Select Homestyle mark for possible registration.[26]  For the sake of completeness I mention that nothing in the declaration of Tan Kwan Siu (hereafter “the Tan declaration”) suggests the name “at-Sunrice” has the kind of notoriety in Australia enjoyed by the name “Woolworths”.

[24] Wilcox J in Woolworths Ltd v Registrar of Trade Marks (1998) 42 IPR 615.

[25] See also the joint judgment of the Full Federal Court (Ryan, Branson and Lehane JJ) in CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 at [51] and [52].

[26] I note from the Register, too, that the earlier registered owner, usually vigilant in enforcing its perceived trade mark rights, apparently saw fit not to oppose Woolworth Limited’s mark.

40.   It is also possible, (although unlikely and without strong foundation in my view), that the acceptance officer made a similar assessment of the element HOMESTYLE as Mr Doyle would have me make of the words “global chef academy” common to both the Trade Mark and to the Application’s specification, namely that they constitute trade mark matter in one case, yet are descriptive in the other.

41. While this is the issue to which I now turn, amendment of the words “within a global chef academy” in the specification to “within an international cooking school” as proposed by the Applicant (albeit under protest) is of theoretical significance only at this point given my conclusion that the Trade Mark is deceptively similar to the Cited Mark in any event. The extent to which the words “global chef” common to the marks are inherently distinctive in the context of the Class 35 services in question is nonetheless relevant to my finding under s 44(2) of the Act. It is accordingly useful, I believe, to consider Mr Doyle’s submissions as to the claimed versatility of the words in the Application as both trade mark matter and as descriptor.

42.   As mentioned,[27] Mr Doyle relied on the 1991 decision of the Full Federal Court (Lockhart, Burchett and Gummow JJ) in CAPLETS to support a submission that:

It is clear law, as held by the Full Federal Court in [CAPLETS], that the same word or words can be used in both a trade mark sense and a non-trade mark sense – in that appeal, it was held that despite CAPLETS being a registered trade mark, the word “caplets” had not been used “as a trade mark” and so the use that the trade mark owner objected to (“24 caplets” to describe paracetamol) was not trade mark infringement.

[27] See paragraphs 31 and 32 above.

43.   However, CAPLETS has no relevance, in my view, to the question of whether the words “global chef” (or “global chef academy”) as they appear in the specification of the Application are purely descriptive or not.  CAPLETS was an infringement case, (as Mr Doyle acknowledged), where the meaning of the words “use as a trade mark” refers of course to a particular manner of use by an alleged infringer in the course of trade and where evidence of the circumstances surrounding that use is crucial to the Court’s determination of the issue.  In CAPLETS the alleged infringer denied that its use of another party’s registered mark (CAPLETS) was use as a trade mark and, in the alternative, relied on s 64(1)(b) of the Trade Marks Act 1955 (“the 1955 Act”) to argue that the particular use complained of on the packaging of its paracetamol product was “use in good faith…of a description of the character or quality of” that product.  In addition, the alleged infringer cross-claimed for removal of the CAPLETS registration on the grounds of non-use for three years.  While all three judges involved found in favour of the alleged infringer, the route they took diverged somewhat, with Lockhart J concluding (at IPR page 17) that:

The word [CAPLETS] by its nature is not readily capable of distinguishing the goods of a trader from other goods.  [CAPLETS] are essentially descriptive of the character or quality of goods.

44.   Indeed, his Honour allowed the alleged infringer’s cross-claim for removal of the CAPLETS registration for non-use because he did not believe the registered owner’s own use of the mark had ever been “use as a trade mark”.  Had he considered the (40 year old) registration valid, Lockhart J indicated that, like his fellow judges, he would have dismissed the infringement claim for the same reason in any event, namely that the use complained of was not use as a trade mark.  While in the event obiter only, this was despite his agreeing with Burchett and Gummow JJ that the alleged infringer’s use was not use in good faith (and thus that the s 64(1)(b) defence, had it been a live issue, would not have been made out).

45.   Burchett J considered the registered owner’s use during the relevant period did amount to trade mark use sufficient to defeat the non-use cross-claim, given “an asterisk directed attention to a notification of the fact” and that the relevant packaging “also bore writings describing the form of the contents by the word ‘tablet’, and stating the quantity as a specified number of ‘capsule-shaped tablets’” (at IPR page 21).  If he were to hold otherwise, his Honour reasoned, he would “have difficulty in seeing how the [registered owner] could have made a trade mark use of its registered trade mark, which must (by virtue of s 59 of the [1955] Act[28]) be deemed to have been validly registered” (also at IPR page 21).

[28] Section 59 stated that a registration “shall be deemed to be valid unless the contrary is shown”.

46.   Gummow J, for his part, agreed with Burchett J (as in effect did Lockhart J, albeit in obiter) that the alleged infringer’s use was not use as a trade mark and that infringement was accordingly not made out.  In reaching this conclusion all three judges relied in particular on the decision of Kitto J in Shell, who had emphasised at CLR 422 that:

…the context is all-important, because not every use of a mark which is identical with or deceptively similar to a registered trade mark infringes the right of property which the proprietor of the mark possesses in virtue of the registration.

47.   Gummow J further noted (at IPR page  24) that:

When the issue is one of infringement, a pivotal question is whether the use complained of is use by the alleged infringer as a trade mark. The answer to that question requires an understanding of the ‘purpose and nature’ of the impugned use: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 426 (the Shell case) per Kitto J. As his Honour there points out, with reference to Edward Young & Co Ltd v Grierson Oldham & Co Ltd (1924) 41 RPC 548, and as s 66 of the [1955] Act also indicates, the nature of the allegedly infringing use may be considered in the light of a usage common in the relevant trade. The relevant context, where the mark is a word mark, includes a consideration of the way in which the word has been displayed in relation to the goods and advertisements of which complaint is made: Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 402, per Whitford J.

48.   All three judges accepted that the evidence before them demonstrated, as Lockhart J put it at IPR pages 7 and 13, that:

… the word ‘caplets’ is a descriptive term in the United States, available for use in the market-place by anyone to describe a capsule-shaped tablet.

and

…the word ‘caplets’ has been used widely overseas in a descriptive sense to denote the form or shape of a product and not in a trade mark sense. The countries referred to include the United States, Canada, the United Kingdom, New Zealand, Ireland, Korea, Puerto Rico, Philippines, Indonesia, Thailand and Guatemala.

49.   Moreover, as Lockhart J noted (also at IPR page 13):

There is also a considerable body of evidence (affidavits of witnesses, oral evidence and various advertisements and articles in The Australian Journal of Pharmacy, Australian Business and the Financial Review) that third parties used the word ‘caplets’ in a descriptive sense in Australia, often in a pharmaceutical context, with respect to humans or veterinary products.

…

There is a great deal of evidence about what the word ‘caplets’ conveys to people in Australia from people who fall broadly into three categories: pharmacists, grocery wholesalers and the public.

50.   Returning now to the Application, my initial reaction to the words “in a global chef academy” in the specification was as indicated in my 10 October email to Mr Doyle (reproduced in paragraph 29), namely that they were not “regular English” and that they did not have “a clear meaning in relation to the services claimed”, the most likely meaning on the face of it, I suggested, “being a reference to a particular facility operated by your client”.  Of course the only “context” I then had was the presence of the identical words in the form GlobalChef Academy in the Trade Mark itself, which, Mr Doyle agrees, appears to be other than purely descriptive use.

51.   As mentioned, Mr Doyle subsequently explained that the words in question were added to both the Trade Mark and to its specification as a consequence of the Applicant’s confidential settlement with Ricegrowers.  While the existence of this settlement (and obviously its contents) would on the face of it be unknown to third parties, to the extent that it has any relevance to how the words “in a global chef academy” in the specification should be interpreted I believe it merely confirms my original view as their most likely being a reference to a particular facility connected with the Applicant.  In this regard the fact that Ricegrowers apparently believed inclusion of the words in question in both the Trade Mark and its specification was sufficient to now distinguish the Applicant’s otherwise identical Cancelled Trade Mark from its own SUNRICE and SUNRICE & Device trade marks supports this conclusion.

52.   That said, Mr Doyle’s submission of 10 December was that the words “in a global chef academy” were “ordinary descriptive words”, reasoning that, “This conclusion cannot be avoided unless the word ‘a’ be amended to ‘the’, something which was clearly not intended and precludes any other conclusion.”  Indeed, he submitted, “To hold otherwise would be perverse.”  However I must respectfully disagree.  The most significant distinction between, by way of example, the phrases “in a Home Hardware store” and “in the Home Hardware store”[29] would to my mind be that in the former case the fact that there is more than one such store with that name is implied (or the possibility left open), whereas in the latter case a particular, known store is obviously being indicated.  Similarly, (and particularly assuming there were an international cooking school claiming proprietary rights in the words “global chef academy”), the most obvious distinction I would draw between the phrases “in a global chef academy” and “in the global chef academy” is that the former suggests that the international cooking school of that name may have (or may be contemplating) branches or campuses in more than one location or country, while the latter would indicate that there was only one institution with that name.

[29] HOME HARDWARE & Device is a trade mark owned by John Danks & Son Pty Ltd and registered in Australia since 1992 for a range of goods and services in Classes 2, 16, 35 and 42.

53.   As indicated above, the Court in CAPLETS had abundant evidence before it as to (descriptive) use of the word “caplets” in the United States and other overseas jurisdictions over many years, as well as of what the word conveyed to Australian pharmacists and grocery wholesalers and to the Australian public generally.  In the present matter the only evidence before me concerning how the somewhat unusual collocation “global chef academy” might be interpreted is contained in the Tan declaration, to which Mr Doyle referred me in his above-quoted submissions.  Ms Tan is the founder[30] and a Director of the Applicant and, as mentioned, her declaration was filed with IP Australia in September 2010 in support of the Parent prior to the Application being divided out in November 2010.  Annexed to the declaration are, inter alia, copies of:

·an 80 paragraph Affidavit sworn by Ms Tan on 20 June 2008 (“the June Affidavit”) in connection with the Applicant’s Federal Court litigation with Ricegrowers, along with selected extracts (being pages 16–31, 100-101 and 262-264) of Exhibit TKW-1 thereto;

·a 96 paragraph Affidavit sworn by Ms Tan on 16 September 2008 (“the September Affidavit”) in connection with the same Federal Court litigation, along with a selected extract (being pages 220-253) of Exhibit TKW-7 thereto; and

·pages from the Applicant’s website and various publicity materials, press releases and brochures promoting its culinary courses.

[30] There is a picture of the Applicant’s “founder” in publicity material annexed to the Tan declaration, which gives her name as Kwan Lui.  While nothing turns on this, I am assuming she and Tan Kwan Siu are the same person.

54.   In the June Affidavit Ms Tan says that the Applicant’s “principal business is its culinary academy which was opened in Singapore in April 2001” and where it also “has a licensed restaurant and café which seats 220 people and a retail shop which sells a number of goods including sauces, spice mixes, pastes, crockery, decorative items (weavings, paper cut-outs), bags, baskets and books relating to the culinary arts.”  She says that the Applicant takes part in “exhibitions and roadshows” in Singapore and overseas (including Australia) to promote its culinary courses and “culinary-related leisure packages” and that branded items such as spice mixes are distributed “to particular attendees of the promotional event such as chefs, journalists or other people associated with the food and beverage business.”  I note Ms Tan does not use the words “global chef” (or “global chef academy”) at all in the June Affidavit, whether descriptively or otherwise, instead referring to the Applicant’s business as a “culinary academy”.

55.   In the (2010) Tan declaration itself, Ms Tan says the Applicant first used the Trade Mark in relation to its principal business in Australia (and, I infer, in Singapore and elsewhere) via its website and she annexes an excerpt from its “e-newsletter” for April 2008 which prominently shows the Trade Mark beside the large print words:

We are now known as

At-Sunrice

GlobalChef

Academy

56.   Although Ms Tan does not herself use the words “global chef” in the June Affidavit, the selected extracts before me of Exhibit TK-1 thereto, all three of which post-date the Applicant’s change of name in March 2008, do.  While I do not propose to describe this material in detail, I would note by way of summary that it is replete with examples of the Applicant’s use of the collocation GlobalChef as part of its (then new) name and otherwise with claimed proprietary significance.  By way of example, a copy of a 15 page brochure entitled “Professional Courses 2008”, on the cover of which the Trade Mark is prominently shown, features sections with the headings shown below in which copyright in the collocation GlobalChef is claimed:[31]

Ingredients of the GlobalChef©

At-Sunrice GlobalChef© Awards

[31] I understand, too, that the Applicant has registered GlobalChef Award as a trade mark in Singapore.

The 18 GlobalChef© Award Recipients

57.   As a further example, a copy of publicity material which was apparently distributed in Australia after March 2008 and which bears, next to the Trade Mark, the heading

A NEW BREED OF YOUNG

GLOBALCHEFS MADE IN

SINGAPORE!

commences with the copy, “At-Sunrice GlobalChef Academy is the new brand positioning for the seven-year-old school which has thrived in the cultural diversity and rich gastronomic heritage of Singapore.”

·That there was evidence “that the word ‘vogue’ is commonly used in business names or trade marks having some connection with fashion, furnishings or the decorative arts”;[52]

·That, “The appearance of ladies’ clothing and men's casual wear is very important. Consumers will not purchase these items over the telephone, or otherwise by a spoken reference to the mark, but will examine them and very often try them on in boutiques or shops. Recognition of the mark will be visual”;[53] and

·That “Counsel for the applicant suggested the block letters were similar, though they are not identical, but there is nothing special about these letters”.[54]

[50] At IPR 510-511.

[51] At IPR 508-509.

[52] At IPR 508.

[53] At IPR 510.

[54] At IPR 510.

78.   Eurovogue is accordingly not, on the face of it, authority for the propositions summarized in paragraph 76 and nor do I otherwise find it relevant to the question of whether the Trade Mark is deceptively similar to the Cited Mark in the context of the services covered by the Application and the Cited Registration.

79.   Returning to the Application itself and by way of conclusion, in my opinion the combined words “GLOBAL CHEF” constitute what has been referred to by the courts over the years as an essential distinguishing or memorable feature of the Cited Mark.  Paraphrasing Saville,[55] if a “mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection” then confusion is likely if another trader in essentially the same goods (or services) adopts that distinguishing or memorable feature in its own trade mark. This is why I have concluded, on balance, that the Trade Mark is deceptively similar to the Cited Mark in terms of s 44(2) of the Act. It is accordingly now necessary to consider Mr Doyle’s submissions that there in any event exist circumstances under s 44(3)(b) of the Act that make it proper in this case to allow the Trade Mark and the Cited Mark to coexist on the Register.

[55] At RPC 162; IPR 453.

Section 44(3)(b)

80. Section 44(3)(b) of the Act provides, inter alia, that even where an adverse finding under s 44(2) is made, “the Registrar may accept the application…subject to any conditions or limitations that the Registrar thinks fit to impose” if “satisfied that, because of other circumstances, it is proper to do so”.

81. As mentioned, Mr Doyle identified ten matters which, in his submission, constituted “other circumstances” relevant to application of s 44(3)(b) and it is convenient to deal with these in the same order (and using the same words) as in his written submissions of October 2012. I mention that for the first of these only I have inserted in square brackets the clarifying words which Mr Doyle provided at my request at the hearing. For the sake of consistency I have also amended his reference to “the Siu declaration” to “the Tan declaration”.

(1) The Applicant has a considerable equity in [the trade mark] GlobalChef Academy [in relation to a range of related services, being a cooking school with a café/restaurant and retail outlet] as set out in the [Tan] declaration.

The fact that the Applicant’s cooking school, which is located in Singapore, may have an adjoining café/restaurant and retail outlet appears to me to be of no relevance in principle to whether the Applicant’s (claimed) GlobalChef Academy trade mark (or, for that matter, the Trade Mark as a whole) is known amongst potential Australian consumers of the Class 35 services of the Application.  Moreover there is no evidence before me as to the extent that the Applicant’s school or associated facilities may be known to such consumers via the Internet or via attendance at courses in Singapore or otherwise.  I am unable to speculate on these questions.

(2) The use of the mark extends to a range of goods including on clothing and uniforms.

It is unclear to me if Mr Doyle is referring here to the Applicant’s (claimed) trade mark GlobalChef Academy or to the Trade Mark as a whole and nor is this apparent to me from anything contained in the Tan declaration.  Nor are there any details of the nature, extent or duration of this use in the Tan declaration, whether in Singapore, Australia or elsewhere.  That said, presumably the use has not taken place in Australia, since it would risk infringing not only the Cited Registration itself, but also the cited owner’s registrations 755132 (for a mark identical to the Cited Mark and which pre-dates the founding of the Applicant’s business), 1088488 BRIGADE BY GLOBAL CHEF & Device and 1271582 GLOBAL CHEF (word mark only), all three of which cover clothing and uniforms in Class 25.

(3) The cited mark cannot currently be attacked for non-use under section 92 except on the basis that the owner had no intention to use the mark at the date of application.

I understand this statement is based on the fact that the Cited Registration only dates from 11 November 2008 and accordingly “attack” under s 92(4)(b) of the Act is not in principle possible until 11 November 2013 as specified under s 93(2). That said, there is no evidence before me as to whether the Cited Mark is, or has ever, enjoyed relevant use. Even if there were, the Cited Owner may literally have commenced use today, or be launching its relevant business tomorrow. It in any event strikes me as a ridiculous proposition that an applicant’s inability to “attack” a cited registration for non-use might justify allowing that applicant’s deceptively similar mark covering the same services to coexist on the Register pursuant to s 44(3)(b).

(4) The relative inconvenience to the parties.  The Applicant obtained but subsequent to court action cancelled its registration and application for the mark that does not include the words “GlobalChef Academy”.

As Mr Doyle confirmed at the hearing, he is referring here to the litigation and subsequent confidential settlement with Ricegrowers. On the face of it this submission entirely ignores the inconvenience (if any) to the Cited Owner. I say “if any” because there is no formal evidence before me of how the Cited Owner, which indeed is not a “party” before me at all, might be affected. As indicated below (discussing ground (5)), the only information concerning the Cited Owner I have is contained in its email to the Applicant (“the Cited Owner’s Email”, described in paragraph 26 above), which Mr Doyle copied to me on the eve of the hearing and in which the Cited Owner details a number of concerns it has with the Applicant’s actual and proposed use and registration of the Trade Mark. Moreover, as I indicated in an email to Mr Doyle prior to the hearing, I do not in principle understand how a confidential settlement with a third party could have any relevance to s 44 of the Act, let alone be relevant to the convenience of the Cited Owner.

(5) The owner of the cited mark has been approached for a consent but will give it on certain conditions that the Applicant cannot meet.  The cited owner is trying to get a commercial advantage from giving the consent and this is not a strategy that should be encouraged and is not in the public interest.  This constitutes an abuse of the system of trade mark registration.

This refers to the Cited Owner’s Email. Section 20 of the Act says that the registered owner of a trade mark has, inter alia, “exclusive rights (a) to use the trade mark and (b) to authorise other persons to use the trade mark.” It is under no obligation under the Act (or otherwise) to provide consents (unfettered or otherwise) to use of the mark (or of a deceptively similar mark) by unrelated third parties. Nor, for what it is worth, did the Cited Owner’s suggestion for a possible compromise appear to me to be unreasonable in the circumstances which the Cited Owner took the trouble to detail in the email in question.

(6) The cited owner’s understanding of its rights as expressed in the attached emails does not bear on the services in class 35 which are the subject of the application.  Mr Grubi’s email of 26 August 2012 is concerned with his uniform business and this is not the focus of the applicant’s mark.

I mention that this is also a reference to the Cited Owner’s Email, with Tony Grubi being the signatory of the email in question.  I would simply reiterate what I said in the previous paragraph and note that, as I understand the email, the Cited Owner appears on the face of it to be quite aware of its rights.

(7) There is no history of deception or confusion, despite the email of 26 August 2012 from Tony Grubi.

This is also a reference to the Cited Owner’s Email.  Notwithstanding the claim is unsupported, (and the Cited Owner, not being a party to these proceedings, has no opportunity currently to contradict it), there is in any event no evidence before me of the nature, extent or duration of relevant use in Australia (if any) of either the Cited Mark or the Trade Mark.  Whether or not there is “a history of deception or confusion” may accordingly be of no consequence whatsoever.

(8) The fact that “Global Chef” is used by others not just the cited proprietor – see email from Kwan Lui of 1 June 2012.

The email from Kwan Lui[56] in question forms part of the correspondence between the Applicant and Clayton Utz that Mr Doyle emailed to me on the eve of the hearing and to which I referred in paragraph 26 above.  I mention that I am in an (artificially) difficult position regarding discussion of the details of this correspondence, since when I pointed out at the hearing that in my view its contents did not on balance favour the Applicant’s case Mr Doyle then suggested it was “privileged”.  Be that as it may, the correspondence in question does not in any event indicate to me that the words “Global Chef” are used as a trade mark in Australia or elsewhere by any party to any meaningful extent (if at all) for services similar to, or goods closely related to, the services covered by the Application.

(9) The Applicant already has a uniform partner and agreeing to the cited owner’s demands would upset this arrangement and may amount to a breach of current contractual obligations.

Again, the Applicant’s arrangements with third parties are purely a matter for itself. No evidence of any of the Applicant’s contractual arrangements are before me and, even if they were, I do not believe they have any relevance to s 44(3)(b) of the Act.

(10) Absent a court order, the Applicant will not be changing its mark and will continue to use “GlobalChef Academy” in relation to a number of its services including its class 35 services.

This, too, is a matter for the Applicant (and, I imagine, the Cited Owner). It is, however, very unlikely to have been something the drafters of the Act would have had in mind when s 44(3)(b) was formulated.

[56] Kwan Lui is “the founder” of the Applicant and, as mentioned in footnote 30, while nothing turns on the fact, I have assumed she and Tan Kwan Siu, the author of the Tan declaration, are the same person.

82. To summarise, I am not satisfied any of the ten matters discussed above constitutes circumstances that would make it proper to accept the Application for registration pursuant to s 44(3)(b) of the Act and I decline to do so.

Decision

83. I am satisfied on the balance of probabilities that the Application covers services similar to those covered by the Cited Registration in terms of s 14(2) of the Act and that the Trade Mark is deceptively similar to the Cited Mark in terms of s 10 of the Act. Accordingly the provisions of s 44(2) are met. Moreover, in my opinion, it would not be proper in this case to accept the Application under s 44(3)(b). I accordingly reject application 1394920 pursuant to s 33(3)(b) of the Act.

Michael Kirov

Hearing Officer

Trade Marks Hearings

26 April 2013