Bickford's Australia Pty Ltd v Belridge Pty Ltd

[2005] ATMO 53

TRADE MARKS ACT 1995

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

Re:Opposition by Bickford's Australia Pty Ltd to registration of trade mark application 967678(32) - ePURE*AQUA - filed in the name of Belridge Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Mr Anthony Norris of Collison & Co Applicant: Mr Scott Buchanan, solicitor, of Buchanan Law instructed by Trademarks Australia
Decision:	Section 52 Opposition. Sections 44 and 60 grounds not made out, opposition dismissed. Costs awarded against opponent.

Background

1. The applicant, Belridge Pty Ltd, applied to register the following trade mark:

Application Number:	967678
Priority date:	28 August 2003
Goods:	Class  32:  Bottled purified drinking water
Trade Mark:	epure*aqua
Advertised:	22 January 2004

1. The opponent, Bickford's Australia Pty Ltd, filed notice of opposition to the trade mark's registration on 22 April 2004.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

2. The opponent duly served and filed evidence in support. The applicant did not serve or file any evidence.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 17 June 2005. Mr Anthony Norris of Collison & Co, Attorneys, represented the opponent. Mr Scott Buchanan, solicitor, of Buchanan Law instructed by Trademarks Australia, represented the applicant.

   Evidence

4. The evidence relating to the opposition consists of the following declarations:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Angelo Kotses	16.07.04	AK-1 to AK-4	Kotses
Evidence in Answer
John Bell	16.12.04	A to E	Bell

1. The Kotses declaration is made by the managing director of the opponent.  It provides a detailed history of the opponent and its products.  The declaration explains what products are sold under the opponent's marks and provides monthly sales figures for Australia for the period 1 February 2003 to 31 March 2004.

2. The Bell declaration is made by the managing director of the applicant.  It also provides a history of the applicant and its products.  It denies any confusion caused by its use of its trade mark.  It also contains what amounts to submissions regarding the comparison of the opponent's trade marks and the applicant's trade mark.

   Grounds of opposition

3. At the hearing, the attorney for the opponent submitted that the opponent would primarily rely on the s44 ground.  I note that if the opponent is successful on this ground, the opponent's evidence would prima facie also support the s60 ground.

4. To establish the s44 ground, the opponent must establish all of the following:

   ¨   At the priority date there was a substantially identical or deceptively similar trade mark application or registration

   ¨   in respect of similar goods or closely related services

   ¨   in the name of a person other than the applicant.

5. The opponent relied upon its registration 893856 - bickford’s aquapura - with a priority date of 2 November 2001 and its divisional application 1014545 aquapura, which claims a priority date of 18 December 2002.

6. There was no dispute that the opponent's trade marks had earlier priority dates and were in respect of similar goods.  The only real issue was whether they were substantially identical or deceptively similar.

7. The opponent's attorney conceded that the competing marks were not substantially identical.  However, he asserted that they were deceptively similar.

8. The opponent's attorney submitted that the essential features of each of the trade marks were aqua and pure/pura.  It was further submitted that the ‘e’ and ‘*’in the applicant's trade mark were merely minor embellishments.

9. The opponent's attorney submitted that in each case the idea of the mark was of pure water.  The goods were fast-moving consumer goods, which were purchased quickly and frequently by customers.  Thus there was a high risk of confusion.

10. Counsel for the applicant submitted that the applicant's trade mark comprised two separate words separated by an asterisk, of the first being invented word ‘epure’ and the second being aqua.  He argued that the presence of  the prefix ‘e’ in this case, in relation to goods that were not electronic goods, increased the distinctiveness of the trade mark.

11. The test to determine whether trade marks are 'deceptively similar' was set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415:

    '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]'

12. Further 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.'

13. The essential feature of the prior registered mark (in a s44 comparison) or the prior used mark (in an s60 comparison) is an important element of the impression gained from imperfect recollection. “The identification of an essential feature depends partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”:  de Cordova v Vick Chemicals Co. (1951) 68 RPC 103, at 106.

14. The weight to be afforded elements common to both marks is largely dependent upon how dominant the common elements are in each mark, the nature of that common element - whether it is distinctive or descriptive - and the nature of the elements of each mark that are not held in common - whether they are distinctive or descriptive.

15. It has been held by the High Court that where the common element in two marks is descriptive there is a heavy onus in establishing a likelihood of deception and that such common words must to some extent be discounted in considering whether the marks are deceptively similar:  Cooper Engineering Pty Limited v Sigmund Pumps Limited (1952) 86 CLR 536 (rain king and rainmaster). Conversely, where the other components of a mark are directly descriptive of the relevant goods/services or are ordinary English words, used in their ordinary way, those components to some extent will be discounted in the Registrar’s analysis of the likely recollection of the mark. Those non distinctive components will leave less of an impression in the mind’s eye.

16. Arguably, the word aquapura is a Latin expression meaning pure water.  Thus it would be directly descriptive of the opponent's goods and should be discounted in any comparison.

17. If I be wrong in drawing this conclusion, I am satisfied that there are sufficient differences between the marks and that they are not deceptively similar.

18. The applicant's trade mark consists of two words separated by an asterisk.  The opponent's registration 893856 (bickford’s aquapura) consists of two words, the first being the opponent's name and the second being a Latin word meaning pure water.  The opponent's application for 1014545 (aquapura) is that single Latin word.  There are significant visual differences between the opposed marks, and they would be pronounced quite differently.

19. Applying the relevant tests as quoted above, I find that the applicant's trade mark is not deceptively similar to the opponent's cited trade marks.  I dismiss the s44 ground of opposition.

20. Having so concluded, the s60 ground of opposition cannot be made out, and I also dismiss it.  I formally dismiss the remaining grounds of opposition as they were neither argued nor supported by evidence.

    Conclusion

21. The opponent has not established any of its grounds of opposition.  Accordingly, I dismiss the opposition.

22. The trade mark application may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

23. The applicant sought its costs.  I see no reason why I should not take the usual course of awarding costs to follow the event.  I order that the opponent pay the applicant's costs in accordance with the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    30 September 2005