Berri (NSW) Limited v Pepsi-Cola Bottlers Australia Pty Ltd

[2001] ATMO 68

TRADE MARKS ACT 1995

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

Re:Opposition by Berri (NSW) Limited to registration of trade mark application 780775(32) - SUNNY DEE and device- filed in the name of Pepsi-Cola Bottlers Australia Pty Limited.

Background

Pepsi-Cola Bottlers Australia Pty Limited (the applicant) filed trade mark number 780775 on 10 December 1998 in respect of 'Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages' in class 32 of the International Classification of Goods and Services (Nice classification).

A representation of the trade mark is shown below.

The application was accepted for registration without objection from the Trade Marks Office (TMO) and duly advertised as accepted in the Australian Official Journal of Trade Marks of 15 April 1999. A notice of opposition was filed on 15 July 1999 by National Foods Juice Limited. That company has since changed its name to Berri (NSW) Limited (the opponent) and the opposition is proceeding in that name.

A single declaration attested by Sally Maree Dunstan, a solicitor in the employ of the opponent's lawyers, comprises the evidence in support of the opposition. The applicant has chosen not to submit any evidence in answer to the opponent's evidence.

Both parties were given the opportunity to be heard in the matter but did not take up the offer. Additionally, neither party filed any written argument. The matter has now been referred to me for decision.

Discussion

The opponent's notice of opposition listed grounds of opposition under s.57 of the Act in terms of ss.41, 42, 43 and 44 and also grounds under ss.58 and 60. The evidence of the opponent, however, does not provide any basis for a detailed examination of opposition grounds under ss.41, 42, or 43. Thus, in relation to those grounds, I find that the opposition is not successful. The remaining grounds relied on in the notice of opposition are those under ss.44, 58 and 60. These three grounds, then, become the focus of the remainder of these reasons.

(a) Section 44 - Identical etc. trade marks

As far as it is relevant to this matter the legislation allows:

44.(1) Subject to subsections (3) and (4), an 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) a trade mark whose registration in respect of similar goods or closely related services 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 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.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

Thus, to succeed under this ground of opposition, the opponent must establish that the present mark is either substantially identical with, or deceptively similar to, another mark (or marks) specifying either similar goods or closely related services, such that the mark or marks relied on by the opponent has or have an earlier priority date.

To this end, the opponent directed me to nine trade marks that it said were in conflict and that I have listed in the table below.

Trade Mark	Number	Status at 10 Dec. 1998	Goods Specified	Class
SUNNY DELIGHT	777572	Pending	Mineral and aerated waters and other non-alcoholic drinks; fruit juices and fruit drinks	32
SUNNY BOOST	796196	Not filed	Fruit juices, fruit juice beverages, preparations for making fruit juices and fruit juice drinks, syrups and other preparations for making beverages, mineral and aerated waters and other non-alcoholic beverages included in class 32	32
SUNNY BURST	796199	Not filed	Fruit juices, fruit juice beverages, preparations for making fruit juices and fruit juice drinks, syrups and other preparations for making beverages, mineral and aerated waters and other non-alcoholic beverages included in class 32	32
SUNNY WEST	185176	Registered	Coffee, tea, cocoa, sugar, rice tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices, honey, treacle; yeast, baking-powder; salt, mustard, pepper, vinegar, sauces, spices, ice	30
SUNNY WEST	185180	Registered	Syrups and other preparations for making beverages	32
SUNNY WEST	185178	Registered	Fresh fruits and vegetables, foodstuffs for animals, malt	31
SUNNY WEST	66806	Registered	Meat, fish, poultry and game; meat extracts, preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and other dairy products; edible oils and fats; preserves, pickles	29
SUNNY WEST	185179	Registered	Casein	1
SUNNY WEST	185177	Registered	Infants and invalids, foods	5

Of all of the marks listed above, as far as this opposition is based on s.44, no mark is closer to the present application than trade mark number 777572. This particular mark of the opponent falls in the same class as the present application and has some co-incident goods, being 'Mineral and aerated waters and other non-alcoholic drinks; fruit juices and fruit drinks'. The SUNNY DELIGHT mark itself also presents greater similarity to the present application than any other individual mark of the opponent. The date of priority of the opponent's mark is 5 November 1998, whereas for the applicant's mark this date is 10 December 1998.

The remaining determination to be made concerns the degree of similarity or otherwise of the respective marks. This consideration is framed in terms of both substantial identity and of deceptive similarity.

The accepted test for substantial identity of two trade marks, has been set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 at 414 where Windeyer J said:

SUNNY DELIGHT

 

           

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

Opponent's mark 777572  Applicant's mark 780775

On a side by side comparison, the differences between these two trade marks completely overwhelm the common SUNNY word element and the common first two letters of the second word. The device element in the applicant's mark adds a further differentiation between the marks visually. Thus, I find that these two trade marks are not substantially identical.

The test for deceptive similarity of trade marks, however, is somewhat different. The marks are not now to be considered side by side, as shown by the further words of Justice Windeyer in Shell v Esso, supra, where at 415 he said:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It 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.

In addition to this consideration, the principle of an imperfect recollection of the marks must also be applied. This principle is set out by Luxmoore LJ in Rysta Limited's Application (1943) 60 RPC 87 at 108 in the words:

It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants.

As per s.10 of the Act, a trade mark is said to be deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion. An assessment of the degree of possible deception or confusion must not only involve the concept of an imperfect recollection of the marks, but must also take into account the directives of Justice French from Registrar of Trade Marks v Woolworths Limited, 45 IPR 411, at 426 (paragraph 45):

....

The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

Thus, rather than merely identifying a possibility of deception or confusion, I need to 'be satisfied' that use of the applicant's mark in a reasonable and fair manner would lead to 'a reasonable likelihood of deception or confusion amongst a substantial number of persons'.

I have little concern that the respective marks could be imperfectly recollected visually. The opponent's mark is the words SUNNY DELIGHT whereas the applicant's mark which includes the words SUNNY DEE also contains a memorable device element. These differences are sufficient, in my view, to negate any 'reasonable likelihood' of confusion visually.

Where, however, both of the marks are verbally described, the device element may not be useful to provide a discriminatory factor at all. What, then, can be made of a comparison of these words? Justice Windeyer in Shell v Esso, supra, said to consider the 'impression based on recollection' that would be made by a person 'of ordinary intelligence and memory'.

The general impression of the opponent's SUNNY DELIGHT mark that would be recalled by this hypothetical person would, I believe, encompass ideas of happiness, freedom from care, a pleasant moment in a warm atmosphere - a time where 'all is right with the world'. Such concepts or recollections would not, I believe, be brought to mind by the words SUNNY DEE. The word DEE does, in fact, have several meanings. The Oxford English Dictionary 2^nd Edition (OED) lists the following: [1] 'an earlier way of writing d'ye' (do you?), [2] name of the letter D, [3] either of the two hollow, D-shaped electrodes used to accelerate particles in a cyclotron, [4] a slang abbreviation of detective, [5] pronunciation of d--, euphemistic for damn'.

Some of these meanings may be brought to mind by the hypothetical man of average intelligence and recall, but even if that were not the case, I do not believe that the SUNNY DEE mark would invoke recall of the same sort of ideas as the opponent's SUNNY DELIGHT mark. I am not satisfied, therefore, that a reasonable likelihood of deception or confusion will occur in these circumstances.

What can be said of the issue of a possible contextual confusion between the marks? That is, where it is clearly realised that the marks are not the same but it is believed that they share a common trade source - see the JEST and EASYJEST case, John Fitton & Co. Ltd's Application 66 RPC 110 at 113. I do not accept that this type of confusion could occur here. A long list of words may be abbreviated to any of D, d, De, de, Dee or dee. However, none of these six abbreviations are recognised in standard works of acronyms, initialisms or abbreviations as being associated with the word 'delight', and such an expectation is, in my view, unlikely.

From the foregoing, I am not satisfied that, if the applicant uses its SUNNY DEE and device mark in a normal and fair manner, there would be a reasonable likelihood of deception or confusion with the opponent's SUNNY DELIGHT mark - visually, aurally or contextually.

The opponent also listed other marks that it claimed constitute a barrier under this section of the Act. These marks are SUNNY BOOST, SUNNY BURST and SUNNY WEST. The first two of these both have priority dates of 3 June 1999 - after the priority of the present application of 10 December 1998. In addition, all three marks, in my view, are further removed from the mark applied for than is the opponent's SUNNY DELIGHT mark.

Hence, I find that the ground of opposition taken under s.44 has not been established in respect of any of the marks relied on by the opponent.

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

This section reads:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

It is now well established law that, in order to succeed under this ground of opposition the opponent must establish three factors. These are:

• that the respective trade marks of applicant and opponent be either identical or substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, (1994) AIPC ¶91-049, (1994) 120 ALR 495);

• that the respective goods of both parties be the 'same kind of thing' (Re Hicks' Trade Mark (1897) 22 VLR 636; 3 ALR 75); and

• that the opponent has the earliest claim to ownership based on use prior to both the application to register and actual use of the mark by the applicant (Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 and Re: Hicks's Trade Mark, supra, at 639).

I have previously found (in relation to the s.44 ground of opposition above) that the respective trade marks of the applicant and opponent are neither identical nor substantially identical. It therefore follows that this ground of opposition has not been established.

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

In relation to s.60 the Act allows:

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

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

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

As set out at s.60(a), it is for the opponent to point to a trade mark to which the applicant's mark is either 'substantially identical with', or 'deceptively similar to'. In the present case, as I have already found in relation to s.44 above, the applicant's mark is neither substantially identical with, nor deceptively similar to, any of the marks put forward by the opponent.

In terms of s.60, even where a conflicting mark does exist, it is necessary for the opponent to provide evidence of a reputation of that mark in order to succeed in its opposition. In the present circumstances, no such evidence has been submitted.

Thus, I find that under this ground of opposition the opponent is not successful.

Conclusion

From the foregoing, I have found that the opponent has not established any of the grounds of opposition on which it has relied and so I dismiss this opposition. It follows that on payment of the registration fee, this application may proceed to registration.

Costs

Neither party sought costs in the matter and I make no award.

Don Nancarrow
Hearing Officer

8 August 2001