Bickford'S Australia Pty Ltd v Tata Sons L Imited

[2013] ATMO 100

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 1358642(16,32) – TATA WATER PLUS – filed in the name of Tata Sons Limited

And

Opposition by Bickford’s Australia Pty Ltd to application filed by Tata Sons Limited for removal of trade mark registration 1033645(32) – WATERPLUS; WATER + - registered in the name of Bickford’s Australia Pty Ltd

Delegate:

Nicole Worth

Representation:

Opponent: Ian Horak of Counsel, instructed by Anthony Norris of Collison & Co Patent & Trade Mark Attorneys

Applicant: Siobhan Ryan of Counsel, instructed by Elizabeth Godfrey of Davies Collison Cave Patent & Trade Mark Attorneys

Decision:

2013 ATMO 100

Section 52 opposition: section 44 ground pressed at hearing – trade marks deceptively similar – section 44 ground established – application refused.

Section 92 opposition: removal application made on basis of s92(4)(b) – use established within relevant period – trade mark to remain on the Register.

Background

1. These are proceedings under sections 52 and 92 of the Trade Marks Act 1995 (‘the Act’). They involve the same parties and much of the same evidence, consequently they are being decided together as a matter of convenience and expediency.

2. The proceedings under section 52 arise from an application filed by Tata Sons Limited to register the trade mark detailed below:

Trade Mark

TATA WATER PLUS

(‘the Applicant’s Trade Mark’)

Application Number

1358642

Filing Date

29 April 2010

Goods

Class 16: Advertisement and promotional materials.

Class 32: Mineral water, aerated water, fruit drinks and other non alcoholic beverages.

Trade Mark Owner

Tata Sons Limited

1. Acceptance of the application was advertised on 10 November 2011. Bickford’s Australia Pty Ltd opposed the application by filing a notice of opposition on 7 February 2012, nominating several grounds of opposition including that under section 44 of the Act (being the only ground it pursued at the hearing and the only ground discussed in this decision).

2. The proceedings under section 92 of the Act arise from an application filed on 13 February 2012 by Tata Sons Limited to remove from the Register the trade mark detailed below:

Series Trade Mark

WATERPLUS; WATER +

(‘the Opponent’s Trade Mark’)

Registration number

1033645

Filing date

6 December 2004

Goods

Class 32: Water, aerated water, mineral water, table water, flavoured water, all kinds of water for human consumption.

Trade Mark Owner

Bickford’s Australia Pty Ltd

1. The removal application cited grounds equating to section 92(4)(b) of Act.[1] Bickford’s Australia Pty Ltd opposed removal of its registered trade mark on grounds, inter alia, that there had been use of the trade mark and that the Registrar ought to exercise her discretion to refuse the application for removal.

   [1] The precise words used in the removal application are “A period of five years has passed from the filing date of the above trade mark and the trade mark has remained registered for a continuous period of three years, ending one month before the day on which the non-use application is filed. At no time during that period has the registered owner used the trade mark in Australia or used the trade mark in good faith in Australia in relation to the goods/services to which the application relates”.

2. After the serving and filing of evidence, detailed below, I heard both of the matters at a hearing in Melbourne on 11 September 2013. Ian Horak of Counsel, instructed by Anthony Norris of Collison & Co Patent & Trade Mark Attorneys, represented Bickford’s Australia Pty Ltd. Siobhan Ryan of Counsel, instructed by Elizabeth Godfrey of Davies Collison Cave Patent & Trade Mark Attorneys, represented Tata Sons Limited.

3. Given that Tata Sons Limited is both the applicant for registration and applicant for removal, I will refer to it in this decision as ‘the Applicant’. Likewise, Bickford’s Australia Pty Ltd is both the opponent to registration and the opponent to removal so I will refer to it as ‘the Opponent’.

Evidence

1. The evidence served and filed in respect of the proceedings under section 52 is as follows:

Evidence in support

Statutory declaration of Jodi Pope, Senior Brand Manager at Bickford’s Australia Pty Ltd, with exhibits JP1 and JP2, dated 3 May 2012.

Evidence in answer

Statutory declaration of Michael Anthony Rumore, private investigator and Director of Rumore & Associates Pty Ltd, with exhibits MAR-1 to MAR-19, dated 8 January 2013.

Statutory declaration of Elizabeth Kate Godfrey, Senior Associate of Davies Collison Cave Patent & Trade Mark Attorneys, with exhibits EKG-1 to EKG-9, dated 10 January 2013.

Statutory declaration of Elizabeth Kate Godfrey with exhibits EKG-1 and EKG-2, dated 1 March 2013.

Statutory declaration of F N Subedar, Chief Operating Officer and Company Secretary of Tata Sons Limited, with exhibits FS-1 to FS-6, dated 28 February 2013.

Evidence in reply

Statutory declaration of Rebecca Tolhurst, General Counsel of Bickford’s Australia Pty Ltd, with exhibits RT1 and RT2, dated 5 June 2013.

1. The evidence served and filed in respect of the proceedings under section 92 is as follows:

Evidence in support

Statutory declaration of Jodi Pope with exhibits JP1 and JP2, dated 3 May 2012. This declaration, and its exhibits, is not the same as that described in the table above.

Evidence in answer

Statutory declaration of Michael Anthony Rumore with exhibits MAR-1 to MAR-19, dated 25 January 2013. This declaration is materially the same as that described in the table above.

Statutory declaration of Elizabeth Kate Godfrey with exhibits EKG-1 to EKG-11, dated 1 March 2013. This declaration is materially the same as the Godfrey declarations described in the table above (combined into a single declaration).

Statutory declaration of Elizabeth Kate Godfrey dated 6 March 2013 which exhibits, at EKG-1, the statutory declaration of F N Subedar filed in respect of the section 52 proceedings.

Evidence in reply

Statutory declaration of Rebecca Tolhurst with exhibits RT1 to RT3, dated 5 June 2013. This declaration is not the same as that described in the table above.

Grounds, onus and standard of proof

1. In respect of the proceedings under section 52, it is the Opponent that bears of the onus of establishing a ground of opposition on the ordinary civil standard of the balance of probabilities.[2] In respect of the proceedings under section 92, section 100 of the Act places the burden of rebutting the allegation of non-use upon the Opponent. I proceed on the basis that the relevant standard here is also the balance of probabilities.

   [2] See for example Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13; or Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 94 IPR 551.

2. It is convenient to begin with the proceedings under section 52. The notice of opposition to registration cites several of the grounds available under the Act to oppose registration, and lists registration 1033645 as a basis for the ground under section 44. Prior to the hearing, the Opponent confirmed it was relying upon the section 44 ground. Although the Opponent did not expressly abandon any of the other grounds, the evidence does not support them and so for completeness I find that none of the other grounds of opposition have been established.

Opposition under section 52

1. Section 44 of the Act relevantly provides:

   (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.

   …

   (3) If the Registrar in either case is satisfied:

   (a) that there has been honest concurrent use of the 2 trade marks; or
   (b) that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

2. For convenience I reproduce below details of the Opponent’s Trade Mark and the Applicant’s Trade Mark:

Opponent’s Trade Mark	Applicant’s Trade Mark
Trade Mark	WATERPLUS; WATER +	TATA WATER PLUS
Number	(Registration Number) 1033645	(Application Number) 1358642
Filing Date	6 December 2004 (this is also the date from which registration took effect)	29 April 2010
Goods	Class 32: Water, aerated water, mineral water, table water, flavoured water, all kinds of water for human consumption.	Class 16: Advertisement and promotional materials. Class 32: Mineral water, aerated water, fruit drinks and other non alcoholic beverages.

1. I note that during examination of the Applicant’s Trade Mark, two registered trade marks owned by the Opponent were raised as prior conflicting marks: WATERPLUS; WATER + (registration 870204) and  (registration 1033646), both in respect of various waters in class 32. The Applicant successfully sought removal of the prior conflicting registrations, and its application was consequently accepted. It is not clear why the Opponent’s Trade Mark was not also raised as a prior conflicting mark, although I note that despite it being omitted from the examination report it was identified as a “citation” in the examiner’s search of the trade marks database. One could surmise that the Opponent’s Trade Mark was inadvertently omitted from consideration prior to acceptance. Nevertheless it was a registered trade mark as at the filing date of the Applicant’s Trade Mark.

2. The Opponent did not submit that the respective trade marks were substantially identical so I will not enter into a discussion of those relevant principles here. I say only that I do not consider them substantially identical either. The Applicant did not submit that the respective goods were different, and I consider it reasonable to accept the Opponent’s submission that the parties’ bottled waters are the same and the Applicant’s advertising and promotional material encompasses such materials for the advertising and promotion of bottled waters. This leaves only the matter of deceptive similarity.

3. The relevant test for deceptive similarity is set out in Australian Woollen Mills Ltd v FS Walton and Company[3]:

   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…The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

   [3] Australian Woollen Mills Ltd v FS Walton and Company [1937] HCA 51; (1937) 58 CLR 641.

4. The Opponent’s Trade Mark is a series trade mark, meaning that the different iterations of it do not vary in material particulars (or, put another way, that WATERPLUS and WATER + is materially the same trade mark). The word WATERPLUS, and its materially equivalent WATER +, is the sole element which could leave an impression upon the minds of potential customers. The same expression, albeit separated by a space, is present in the Applicant’s Trade Mark TATA WATER PLUS (I do not consider that the separation of the words WATER and PLUS substantially alters the expression).

5. A mark wholly contained within another will not necessarily lead to a conclusion of deceptive similarity. For example, additional words that change the meaning of the expression may lead to a conclusion that the marks are not deceptively similar (as in HEALTHPLUS vs INNER HEALTH PLUS[4]), as might the inclusion of names the notoriety of which may be judicially noted (as in METRO vs WOOLWORTHS METRO[5]). I bear in mind also that non-distinctive words might be discounted to a certain extent because they serve only a descriptive function (such as CHOC in CHILL vs CHOC CHILL[6] or EASY in JEST v EASYJEST[7]).

   [4] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478.

   [5] Registrar of Trade Marks v Woolworths (‘Woolworths’) [1999] FCA 1020; (1999) 45 IPR 411.

   [6] PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47.

   [7] John Fitton & Co Ltd’s Application (1949) 66 RPC 110.

6. Here, the word TATA has no meaning which alters the expression WATER PLUS. Rather, it is likely to be taken by potential customers as a name or invented word. The Applicant submits, with reference to Woolworths, that TATA brings a high level of acquired distinctiveness to the mark. Its evidence shows that the TATA group of companies operates globally and is particularly well known in India. However in my estimation it falls far short of the level of notoriety, particularly in respect of bottled waters and in respect of the Australian market place, required for judicial notice to be taken. The Applicant has not used the trade mark in respect of bottled water, or any bottled beverages in the Australian market at all. The only consumer products upon which any use has been shown is a sachet of ‘Tetley Chai Latte Classic’, where Tata Global Beverages appears in small lettering on the back of the sachet. Otherwise, notoriety is said to be supported by the global presence of the Tata group of companies, Tata Consultancy Services having operated in Australia for 30 years, the presence in Australia of a number of related companies including Tata Steel, Tata Communications and Tata Power, and the acquisition of Tetley in 2000. There is no evidence from which the extent of such use in Australia could be ascertained, and even if there was I could not be satisfied that such use would lead to any recognition in respect of goods so unrelated as bottled waters. In any event, the presence of the word TATA would not necessarily mitigate against contextual confusion, wherein trade marks might not be mistaken for one another but nonetheless be thought to originate from the same trader[8]. I also bear in mind that “it is the person who knows the one word, and perhaps has an imperfect recollection of it, who is likely to be deceived or confused”[9].

   [8] ibid

   [9] Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87 at 108.

7. Nor am I satisfied that the expression WATER PLUS can be discounted as non-distinctive in the Applicant’s Trade Mark. There is no evidence before me that goes to the descriptiveness or commonness of the expression, although I acknowledge that a relevant meaning might be discerned. Nonetheless, the Opponent registered its trade mark under the provisions of subsection 41(5), meaning that it provided evidence to show that its trade mark had acquired the requisite distinctiveness or was capable of doing so. As the only element of the Opponent’s Trade Mark, it is irrelevant in this context to question whether the expression is distinctive.

8. The relevant question is whether TATA WATER PLUS is deceptively similar to WATERPLUS and/or WATER +, and for the reasons explained above I am satisfied on the balance of probabilities that it is. To that end, the Applicant submitted that should I find section 44(1) applies, acceptance under section 44(3)(b) (being ‘other circumstances’) is warranted because of:

   The commercial reality which existed at the priority date and continuing; namely the lack of use of the Bickford Mark in Australia; and/or

   The removal of the cited marks from the Register.

The Applicant submitted alternatively that the removal of the Opponent’s Trade Mark (the subject of the section 92 proceedings before me) would obviate the section 44 ground of opposition. In support of its position it cited Chia Khim Lee Food Industries Pte Ltd v Red Bull GmbH (No 1)[10], wherein Dodds-Streeton J refused to strike out a ground of appeal the consideration of which related to whether a removal action impacted upon an opposition under section 44.

[10] [2012] FCA 1184.

1. I am not satisfied that any of the circumstances submitted by the Applicant provide a suitable basis upon which to apply the provisions of section 44(3)(b). Firstly I note the unambiguous authority of E & J Gallo Winery v Lion Nathan Australia[11] and Hills Industries Ltd v Bitek Pty Ltd[12] that the relevant date for assessing an opposition under section 44 is the date the application was filed (in this case 29 April 2010, which precedes the Applicant’s removal application by almost two years) and any removal order, if achieved, would not operate retrospectively. Secondly, although Dodds-Streeton J refused to strike out the ground of appeal she did note that there were “apparently very powerful impediments to its success” and the appeal has not, in any event, been decided. Thirdly, without more I do not consider that I can draw an inference from the removal of the Opponent’s other two registrations that, had it been raised as a prior conflicting mark during examination, the Opponent’s Trade Mark would likewise have been removed from the Register. Fourthly, I am not satisfied that I could take note of the alleged commercial reality of non-use as at the priority date given non-use is only proven where it is shown over a three year period (not at a single point in time, such as the priority date).

   [11] [2009] FCAFC 27; (2009) 175 FCR 386.

   [12] [2011] FCA 94; (2011) 90 IPR 337.

2. Lastly, I do not consider the Applicant’s capacity for trade (in that it is a large global company which can readily produce and distribute the specified goods), in the face of the Opponent’s rights in its registered trade mark, is a factor upon which acceptance could be based.

3. For these reasons I am satisfied that the ground of opposition under section 44 is established, and that it is not reasonable, on the circumstances before me, to apply the provisions of section 44(3)(b) in the Applicant’s favour.

Opposition to section 92 application

1. Section 92(4)(b) of the Act provides:

Application for removal of trade mark from Register etc.

92.(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

…
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. This is qualified by section 93(2) which states that an application based upon 92(4)(b) may not be made before a period of 5 years has passed from the filing date [of the Opponent’s Trade Mark]. Given the filing date of 6 December 2004, section 93(2) is clearly satisfied.

2. What remains to be determined then is whether the Opponent has, in accordance with section 100 of the Act, rebutted the allegation of non use. The Applicant filed the removal application on 13 February 2012. Therefore to defeat the removal application the Opponent must establish that it has used its trade mark, in good faith and in respect of the specified goods, in the three year period ending on 13 January 2012 (‘the relevant period’). A single bona fide use during the relevant period will be sufficient.[13]

   [13] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149; “Nodoz” Trade Mark (‘Nodoz’) [1962] RPC 1 at 7 (Ch D).

1. On behalf of the Opponent Ms Tolhurst declares that following the acquisition of the WATERPLUS brand from “Sanitarium”, the Opponent encountered quality issues with the product. These quality issues including “specking” (solid particles floating in the liquid product) and discolouration (turning black prior to the use by date). As a result, sales were adversely affected and the Opponent elected to temporarily cease production. She further declares that the cease in production was always intended to be temporary and that in 2011 the Opponent made plans to re-introduce a product bearing the Opponent’s Trade Mark to the Australian market place. New labels were developed to distinguish the new product from the old one (which are exhibited in Ms Pope’s declaration) and goods bearing the Opponent’s Trade Mark were made available to one of the Opponent’s customers, the IGA Group.

2. Tax invoices for two sales are in evidence. One is for the sale of 12 cartons of “Water+ 12 Lemon” to Foodland Munno Para, South Australia, dated 22 June 2011. The other is for 12 cartons of “Water+ as Lemon” to IGA Hoppers Crossing, Victoria, dated 20 September 2011. Both sales therefore fall within the relevant period.

3. The Applicant puts into evidence the findings of private investigator Mr. Rumore and attorney Elizabeth Godfrey, neither of whom found the Opponent’s Trade Mark in use in the relevant period in supermarkets, upon the Opponent’s website or upon third party websites. Additionally Mr. Rumore made enquiries with members of the Opponent’s staff who were either unaware of the Opponent’s Trade Mark or were aware of it but believed it was no longer in use. I do not find these investigations convincing, in particular because no enquiries were made with the supermarkets to whom the Opponent sold its goods during the relevant period. I am not satisfied that lack of use upon the internet, or lack of awareness by the Opponent’s staff (which in any event are declared by the Opponent to be customer service or administrative staff who would be unaware of the Opponent’s plans for a re-launch) outweighs the apparently clear evidence of sales.

4. The Applicant further submits that the tax invoices do not prove use during the relevant period, or if they do then it was not use in good faith. In respect of the first point, the Applicant contends that the sales invoices do not amount to overwhelmingly convincing proof because, inter alia, they are internal documents of the Opponent and not independently corroborated[14]. I do not consider the situation before me akin to that considered in Nodoz, wherein a single sale made to an individual in a country “many thousands of miles away” with no proof of actual delivery was not proven by the removal opponent’s internal documents (including remittance advice and an invoice). Here, the sales are made to independent established businesses in the same country in which the Opponent operates. They are recorded upon tax invoices which include details of the customers, sales order and invoice numbers, and GST amounts. There is nothing that would lead me to question whether these sales actually occurred, and so without more I do not take the lack of corroborating documents as a basis upon which to conclude sales are not proven. I note also the comments of the delegate in Geo W. McPherson Nominees Pty Ltd v Remington Arms Company, Inc.[15] that:

   …there seems to be no reason why the opposition could not succeed in the present case if the opponent satisfies me that the sole invoice to the Overseas Distributors was “overwhelmingly convincing proof” contemplated by Wilberforce J in “Nodoz” case, supra.

   [14] As per Nodoz

   [15] [1999] ATMO 101; cited by the delegate in FW: Watermill International (Australia) Pty Ltd v David M Windmiller [2010] ATMO 30, raised by the Opponent as an analogous case.

5. In respect of the contention that the use was not in good faith, the Applicant submits “it is telling that the only instances of alleged use produced by [the Opponent] occurred after [the Applicant] had applied for removal of [the Opponent’s] registration nos 87[0]204 WATERPLUS; WATER + (series) and 1033646 WATERPLUS logo, but not [the Opponent’s Trade Mark]”. It further argues that the Opponent’s planned re-launch of the product is not corroborated other than by alleged new label artwork, but there is no evidence to show that the labels were actually applied to the goods in the invoices.

6. Whilst I acknowledge the Applicant’s points, I am not satisfied that I can or should draw an inference that the sales were not for genuine commercial purposes and therefore not in good faith. There is nothing to suggest that the new label artwork was not applied to the goods the subject of the invoices, and their description in the invoice accords with the Opponent’s Trade Mark. Although only two sales are in evidence, only a single instance is required and there may be a number of reasons the Opponent did not tender more (including that it may have believed it did not need to).

7. In terms of continuing sales I note the comments of the delegate in Crew v Newcastle Permanent Building Society Ltd[16] that “It is not uncommon for traders to delay use of a trade mark pending the outcome of an application for registration (see Paintmaster Products v Lewis Berger & Sons (1955) 25 AOJP 1915 at 1921 (Reg)), in order to avoid any lost expenditure on the marketing of the trade mark”. Whilst those comments were made in the context of an application for registration, I consider that such rationale can be applied here also, where the Opponent may wish to resolve matters before investing heavily in a planned re-launch of a trade mark.

   [16] [2009] ATMO 55; (2009) 83 IPR 112 at [21].

8. I am satisfied that there has been use of the Opponent’s Trade Mark in the three year period ending on 13 January 2013. The allegation under section 92(4)(b) is therefore rebutted.

Decisions

Opposition under section 52

1. Section 55 of the Act relevantly provides:

   55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or
   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

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

   Note:  For limitations see section 6.

2. I am satisfied that the Opponent has established the ground of opposition under section 44 of the Act. Accordingly, I refuse to register trade mark application 1358642.

Opposition to section 92 application

1. Section 100(3) of the Act relevantly provides:

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or

2. I am satisfied that registered trade mark 1033645 has been used in the relevant period in respect of the registered goods. I therefore refuse to remove trade mark registration 1033645 from the Register.

Costs

1. Costs usually follow the event, and there is no apparent reason to depart from that principle here. Accordingly I award costs against the Applicant in terms of Schedule 8 of the Trade Mark Regulations 1995 in respect of both the opposition to registration of trade mark application 1358642 and the opposition to removal of trade mark registration 1033645, although costs related to attendance at the hearing may only be claimed once.

Nicole Worth

Hearing Officer

Trade Marks Hearings

03 December 2013