Bega Cheese Limited v Quesos Vega Soltuelamos, SL

[2016] ATMO 81

TRADE MARKS ACT 1995

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

Re:Opposition by Bega Cheese Limited to extension of protection to International Registration Designating Australia 1626694 (International Registration No. 1204647) – VEGA MANCHA with colour endorsement claimed that the words are in gold on a black background- filed in the name of Quesos Vega Soltuelamos, SL.

Delegate:	Bianca Irgang
Representation:	Opponent: Ms Siobhan Ryan of Counsel instructed by Davies Collison Cave Holder: Not present
Decision:	2016 ATMO 81 Trade Marks Regulations 1995 - Regs.17A.29 and 17A.31 opposition – sections 44 and 60 - trade marks of the parties dissimilar - opposition not established.

Background

1. Quesos Vega Soltuelamos, SL (“the holder”) applied for extension of protection of an International Registration Designating Australia (“IRDA”) 1626694 on 27 December 2013 in class 29 of the International Classification of Goods and Services. Relevant details of the IRDA are set out below.

   Trade mark:   (“the Trade Mark”)

   Trade mark application no:            1626694

   International Registration no:        1204647

   Filing Date:  27 December 2013

   Specification:  Class 29: Cheese with appellation of origin Manchego

   Endorsements:  Colour Claimed: BLACK and GOLD; Parts Colour Claimed: BLACK background with characters depicted in GOLD.

2. The IRDA was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 17 July 2014. Bega Cheese Limited (“the opponent”) filed a Notice of Intention to Oppose and Statement of Grounds and Particulars (taken together which constitute “the Notice”) to protection in October 2014. Thereafter the parties filed evidence as provided by the Trade Mark Regulations 1995 (“the Regulations”).

3. I heard the matter in Canberra on 11 July 2016 as a delegate of the Registrar of Trade Marks. Ms Siobhan Ryan of Counsel instructed by Davies Collison Cave appeared for the opponent. The holder did not appear at the hearing but did provide written submissions for consideration.

   Grounds of Opposition

4. In terms of regulations 17A.29 and 17A.31 the Notice nominated four grounds of opposition available under the Trade Marks Act 1995 (“the Act”). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.[2]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

5. At the hearing the opponent only pressed the grounds under sections 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

6. Therefore, the grounds remaining for my consideration are those under sections 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the goods specified in the application, there is no requirement for me to consider the other grounds of opposition.

   Evidence

7. The evidence consists of the following statutory declarations:

   Evidence in Support

   ·Declaration of Michael Hampson (the “Hampson 1 declaration”) dated 5 March 2015

   Evidence in Answer

   ·Declaration of Francisco Mateo Domingo (the “Domingo declaration”) dated 10 August 2015

   Evidence in Reply

   ·Declaration of Michael Hampson (the “Hampson 2 declaration”) dated 12 October 2015

   Opponent’s Evidence

8. The Hampson 1 declaration states that the opponent was originally established as The Bega Cooperative Creamery Company (“BCCC”) in 1899. In 1900, BCCC purchased a butter factory and in 1920 purchased a co-operative store to become a dairy co-operative. Following a name change to The Bega Co-Operative Society Ltd (the “Bega Cooperative”), milk production commenced in 1956 and cheese production commenced in 1969. According to Mr Hampson, in 1994 the Bega Cooperative began to export its cheese and dairy products to overseas markets and currently exports its BEGA goods to over 50 nations and territories throughout the world.[3] Mr Hampson states that international demand for these products has been growing since that time[4].

   [3] Exhibit 14 accompanying the Hampson 1 declaration

   [4] Exhibit 16 accompanying the Hampson 1 declaration

9. In April 2001 the Bega Cooperative franchised the marketing function for the BEGA brand in Australia to Bonland Dairies Ltd, a joint venture between Bonlac Foods Limited and the New Zealand Dairy Board. As a result of this, Bonlac’s Melbourne cheese cutting and packaging operation were transferred to the Bega Cooperative.  In 2008, the Bega Cooperative changed its corporate structure from a dairy cooperative to become an unlisted public company known as Bega Cheese Limited[5]. Thereafter, on 19 August 2011, the opponent became a listed company on the Australian Stock Exchange.

   [5] The opponent

10. Mr Hampson declares that there are currently approximately 450 farmers throughout Australia who supply the opponent with around 630 million litres of milk and that it employs well over a thousand people. The opponent produces tens of thousands of tons of dairy products every year comprised of cheddar cheese, processed cheese, buttermilk, cream cheese and whey powder (collectively referred to herein as the “BEGA goods”). Exhibits 7 and 8 accompanying the Hampson 1 declaration detail a number of awards won by the opponent for its business and products in Australia.

11. Mr Hampson states that the BEGA goods have been sold by the opponent under its main flagship BEGA trade mark and other BEGA trade marks which I have placed into a table below:

Trade Mark No.	Trade Mark	Class
451230	29
559486	(“BEGA trade mark”)	29
726984	BEGA	29
937426	29
937427	29, 30
743079	29
721635	BEGA CHEESYPEELS	29
1558935	BEGA EASY MELT	29
1226919	BEGA FINGERS	29
721634	BEGA STRINGERS	29
721636	BEGA STRINGYTHINGS	29
711638	29
937420	29
419471	29
480786	29
1036501	BEGA THICK & TASTY SLICES	29

1. The opponent has taken steps to protect its international goodwill and reputation in the BEGA trade mark and other BEGA trade marks by seeking registration of these trade marks in more than forty countries.

2. The Hampson 1 declaration states that the opponent has an extensive home base in Australia with goods bearing the BEGA trade marks being distributed and sold in Australia through an excess of 1700 retail outlet including major retail chains such as Woolworths and Coles. The BEGA goods are also sold by many independent retailers including IGA.[6] Confidential Exhibit 12 accompanying the Hampson 1 declaration outlines the total domestic sales of key products provided under the opponent’s BEGA trade mark. These figures are impressive. Confidential Exhibit 43 contains a table which sets out approximate national revenue derived from the sale of BEGA goods provided under the BEGA trade mark from 2009 to 2014. These figures are substantial[7].

   [6] Exhibit 13 is a table containing information on the domestic stockists of the BEGA goods.

   [7] Confidential Exhibit 44 contains the details of the opponent’s international revenue derived from the sale of BEGA goods under the BEGA trade marks. These figures are also substantial.

3. The opponent has engaged in extensive advertising of its BEGA goods under the BEGA trade mark and has provided evidence of its advertising in television,[8] print,[9] online,[10] point-of-sale,[11] retail store advertisements,[12] sampling stations, giveaway promotions,[13] celebrity endorsements,[14] sponsorships[15] and promotional merchandise.[16] Mr Hampson states that the opponent’s longstanding and exclusive use of its BEGA trade mark in Australia has resulted in the trade mark becoming a readily recognizable consumer brand in Australia and the dominant brand in Australia in relation to the BEGA goods for over 40 years.[17]

   [8] Exhibit 21, CD-1 and CD-2 accompanying Hampson 1 declaration

   [9] Exhibit 22 accompanying Hampson 1 declaration

   [10] Exhibits 23 and 24 accompanying Hampson 1 declaration

   [11] Exhibit 26 accompanying Hampson 1 declaration

   [12] Exhibit 27 accompanying Hampson 1 declaration

   [13] Exhibits 28 and 29 accompanying Hampson 1 declaration

   [14] Exhibits 30, 31 and 32 accompanying Hampson 1 declaration

   [15] Exhibits 33 to 37 accompanying Hampson 1 declaration

   [16] Exhibits 38 and 39 accompanying Hampson 1 declaration

   [17] Exhibits 40 and 41 accompanying the Hampson 1 declaration

   Holder’s Evidence

4. The Domingo declaration states that the holder is the owner in Spain and internationally of the VEGA MANCHA trade mark and that the holder that has had the name VEGA MANCHA in Spain since 2004[18] and the world in relation to Spanish Manchego PDO Cheese. The holder’s evidence demonstrates that it only produces Spanish PDO Manchego cheese which imposes a compulsory requirement that Manchega Sheep milk[19] be a main ingredient -98, 44%-. This pressed cheese is aged for a minimum of 60 days to 1 year and is highly specialised.[20] The holder’s application reflects the very specific nature of the cheese to which the Trade Mark is to be applied. This cheese may only use the VEGA MANCHA trade mark in relation to the Manchego Cheese by virtue of a certificate issued by the Foundation Protected Denomination of Manchego Cheese Origin.[21]

   [18] Exhibit 3 accompanying the Domingo declaration

   [19] From ewes specifically bred in the province of Albacete, Ciudad Real, Cuenca or Toledo.

   [20] Exhibits 7 and 9 accompanying the Domingo declaration

   [21] Exhibit 11 accompanying the Domingo declaration

5. The holder asserts that it sells its Spanish Manchego PDO Cheese under and by the reference VEGA MANCHA trade mark in over 40 countries including Australia, Austria, Belgium, China, Canada, Egypt, France, Germany, India, Israel, Italy, Malaysia, Russia, Spain and the UK. The holder’s particular sheep milk cheese sold under the Trade Mark is a world-wide gold and silver awarded cheese in the International Cheese Awards 2015 and World Cheese Awards 2013[22] and is an EU protected Designation of Origin which the holder’s labels on its cheese make very clear.[23]

   [22] Exhibit 4 accompanying the Domingo declaration

   [23] Exhibits 5, 6, 8 and 10 accompanying the Domingo declaration

6. The holder has provided its 2014 sales figures in relation to the cheese goods sold under the Trade Mark at exhibit 5 accompanying the Domingo declaration and these figures while limited in detail do show an increase in overseas revenue. However, how much of this revenue is attributable to Australia is not made clear. I note that Australia is one of the main importers of the holder’s cheese.

   Discussion

   Section 44 –Substantially Identical or deceptively similar

7. Section 44 of the Trade Marks Act relevantly provides:

   44       Identical etc. trade marks

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

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

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

   (ii)…; and

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

8. To establish its opposition under section 44 of the Act the opponent must show all of the following:

   Øa trade mark (or trade marks), either registered or pending registration, in the name of a person other than the holder, and in relation to which the holder’s trade mark is either substantially identical or deceptively similar;

   Øthe trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

   Øthe priority date of the trade mark(s) of the other person is (must be) earlier than the priority date of the IRDA.

9. The opponent cited five trade mark registrations in support of the section 44 ground of opposition which are as follows:

Trade Mark No.	Trade Mark	Class
451230	29
559486	29
726984	BEGA	29
937426	29
937427	29, 30

1. The opponent is the registered owner of the above trade marks all of which have earlier priority dates than that of the IRDA. The trade mark registrations cover the same and similar cheese goods in class 29 as the specialised class 29 cheese goods claimed by the Trade Mark. The key issue to now be decided is whether the Trade Mark is either substantially identical or deceptively similar to the opponent’s various BEGA trade marks. The respective trade marks can be seen below:

Opponent’s trade marks	Holder’s trade mark
BEGA

1. It is obvious the Trade Mark is not substantially identical with any of the opponent’s trade marks according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (“Shell”).[24] There exists the differing letter V at the beginning of the holder’s trade mark as well as the additional word MANCHA which acts as a clear visual and verbal difference from the opponent’s BEGA trade marks. The additional material in the opponent’s second and fourth trade marks above also serves to differentiate them from the holder’s trade mark. There are a substantial number of differences between the respective trade marks which preclude them from being considered substantially identical.

   [24] (1963) 109 CLR 407 at 414

2. Deceptive similarity is defined in section 10 of the Act as follows:

   10  Definition of deceptively similar

   For the purposes of this Act, 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.

3. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell: [25]

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … 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 impression that such persons would get from the defendant’s [trade mark]

   [25] (1961) 109 CLR 407 at 415

4. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

5. The decisive question is whether the use of the holder’s Trade Mark for the goods in class 29 would result in a tangible danger of confusion or deception given the previous registrations for the BEGA trade marks in class 29. I do not consider it would. In coming to this decision it is important that the trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[26]

   [26] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

6. Upon consideration of the trade marks it becomes apparent that the single common element of the opponent’s trade mark registrations is the prominent word BEGA. The Trade Mark is for the words VEGA MANCHA. The opponent has argued that the opponent’s BEGA trade marks:

   ·Share a strong aural similarity with the word VEGA in that the pronunciation of the letter “V” and “B” is very similar and that “BEE-GA” and “VEE-GA” are likely to be pronounced alike and are easily confused;

   ·Are often used with other trade marks or descriptors such as “STRONG AND BITEY” or “STRINGERS” and that consumers are familiar with this practice and will see MANCHA as reminiscent of the word “MUNCH” and perceive it as a descriptor therefore placing emphasis back onto the common element BEGA and VEGA.

7. I am not satisfied that this is going to be the case. The opponent is asking me to misread and misinterpret both words in the Trade Mark in order to potentially see similarities. Nor am I satisfied that the opponent’s evidence of ‘other circumstances’ which shows other traders using the word  “Manchego”[27] when referring to a style of cheese on their packaging somehow indicates that the Trade Mark should not be extended protection.

   [27] But not the protected GI “Quesos Manchego”

8. Visually and aurally, the letter “V” at the beginning of the holder’s trade mark may be pronounced similarly to the “B” in the opponent’s trade marks. However, visually V and B are very different at the beginning of a trade mark. The addition of the word MANCHA which has no generally understood meaning by the average monolingual Australian consumer also adds another significant layer of dissimilarity between the trade marks which sufficiently differentiates the holder’s trade mark from the opponent’s BEGA trade marks. Particularly when the word BEGA is a well-known and well-understood geographical area in Australia which the Australian public is aware of, given the evidence put before me by the opponent. VEGA MANCHA has no similarly well-understood meaning in Australia. I consider it is unlikely that consumers would see goods branded with VEGA MANCHA as being or being related to the opponent’s BEGA branded goods.

9. In view of my finding that the opposed Trade Mark is not substantially identical or deceptively similar to the opponent’s BEGA trade marks the opponent has not established its opposition ground based on section 44 of the Act.

   Section 60 - Reputation in Australia

10. Section 60 of the Act provides:

    60 Trade mark similar to trade mark that has acquired a reputation in Australia

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

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

11. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the holder, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is for me to determine therefore whether the opponent has established that before 27 December 2013 its trade mark(s) were recognized by the public generally, or at least by a significant number of persons in the cheese market and whether because of that, the use by the holder of its trade mark would be likely to cause the public confusion.

12. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: [28]

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[29]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [28] [1999] FCA 1020 [50]

    [29] [1973] HCA 43; (1973) 129 CLR 353, 362

1. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[30] by Kenny J at paragraph 81:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

   [30] [2000] FCA 1335

2. The Hampson 1 declaration states that the opponent has been around in Australia for over one hundred years. Mr Hampson states that the opponent has used its BEGA trade marks extensively on the BEGA goods and that this has led to widespread Australian consumer appreciation of the brand. I agree. The opponent’s evidence, as discussed earlier, demonstrates that it uses its BEGA trade mark in over 50 territories and nations around the world as well as extensively in Australia.

3. As previously discussed, Confidential Exhibit 12 accompanying the Hampson 1 declaration outlines the impressive total domestic sales of key products provided under the opponent’s BEGA trade mark. Confidential Exhibit 43 contains a table which sets out approximate national revenue derived from the sale of BEGA goods provided under the BEGA trade mark from 2009 to 2014. These figures are substantial, particularly given the modest cost of the goods. To generate such considerable sales figures in Australia the opponent would have needed to sell a considerable number of the relevant goods. These significant figures give credence to Mr Hampson’s statement that the opponent has become the dominant brand for the BEGA goods in Australia. I am satisfied that the opponent had a very considerable and pervasive reputation in Australia for its BEGA trade mark before the priority date of the holder’s trade mark.

   Likelihood of confusion and deception in the marketplace

4. I need to determine if, given these respective reputations in Australia, use of the holder’s trade mark would be likely to deceive or cause confusion.

5. The opponent has demonstrated it has a considerable reputation in its BEGA trade mark within the Australian marketplace. However, I am not satisfied that it is likely that the average consumer would become confused and be caused to wonder whether there was a connection between the opponent’s BEGA goods and those goods of the holder bearing the VEGA MANCHA trade mark.

6. In order to establish section 60 the opponent not only has to show that a trade mark had a reputation at the relevant date, but also that because of that reputation use of the holder’s trade mark would be likely to deceive or to cause confusion. The Registrar’s delegate in Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd observed that: [31]

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

   [31] (2010) 85 IPR 647

7. And in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:[32]

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

   [32] [2012] ATMO 124 [40]

8. Given the reasons already outlined in my discussion of section 44 regarding the lack of similarity between the respective trade marks, I do not believe that the holder’s use of its VEGA MANCHA Trade Mark would be likely to deceive or cause confusion in the marketplace even if that use was in relation to the same goods and directed at the same consumers. I am not satisfied that it is likely that the average consumer would become confused and be caused to wonder whether there was a connection between the opponent’s goods and those goods of the holder bearing its VEGA MANCHA trade mark. The respective trade marks are simply too different.

9. Additionally, there is no evidence before me of actual confusion in the marketplace in relation to the origin of the holder’s and opponent’s goods provided under the respective trade marks. I am not satisfied that the holder’s use of its Trade Mark will result in any significant degree of deception. The opponent has not established the section 60 ground of opposition.

   Decision

10. Regulation 17A.34 provides:

    17A.34 Decision on opposition

    (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

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

    (2)          The Registrar must tell the International Bureau of his or her decision.

11. I find that the opponent has not established any of its grounds of opposition. Accordingly, I direct that protection of IRDA 1626694 be extended in respect of all the listed goods.

    Costs

12. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the opponent.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    10 October 2016