Bickfords Australia Pty Ltd v Frank Ward
[2008] ATMO 84
•10 October 2008
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
IN THE MATTER of Trade Mark Application 1121582(43) – FRUITIES & Device - in the name of for Frank Ward and opposition thereto by Bickfords Australia Pty Ltd
Delegate:
Debrett Lyons
Representation:
Applicant: No appearance
Opponent: Anthony Norris of Collison & Co.
Decision:
2008 ATMO 88
Section 52 opposition: section 42(b) not established since no proven reputation; section 58 not established since trade marks not substantially identical; section 59 not established since no serious inference could be drawn the applicant did not use or intend to use the trade mark; section 44 not established since the services not closely related to the goods.
Costs: No award
Background
Frank Ward (‘the applicant’) filed an application to register a trade mark, current details of which appear below:
Application number: 1121582
Filing date: 2 July 2006
Services specification: Provision of food and drink including take away services (class 43)
Trade mark:
(‘the trade mark’)
Following examination, the trade mark was accepted for possible registration and acceptance of the application was advertised in the Official Journal of Trade Marks on 14 December 2006. Bickfords Australia Pty Ltd (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.
The opponent filed evidence in support of its opposition on 12 June 2007 in accordance with the Trade Mark Regulations 1995. The evidence in support comprised a Statutory Declaration of Ms Rebecca Prisk, General Counsel for the opponent, dated 12 June 2007, supported by Exhibits RP1 and RP2.
The opponent attempted to serve that evidence on the applicant at its address for service but the evidence was returned to its sender. The applicant did not file any evidence in answer and did not make any written submissions.
The opponent asked to be heard and the matter came before me, Debrett Lyons, as a delegate of the Registrar of Trade Marks, in Adelaide on 26 August, 2008. The applicant made no appearance and the opponent was represented by Anthony Norris, Trade Mark Attorney, of Collison & Co, Patent and Trade Mark Attorneys.
Notice of Opposition
The Notice of Opposition cites every ground of opposition available to the opponent under the Act however at the hearing Mr Norris limited his submissions to those grounds of opposition under sections 42(b), 44, 58 and 59. For the sake of completeness, I treat the remaining grounds of opposition as having been abandoned.
Submissions and Reasoning
Onus
The opponent bears the onus of establishing its grounds of opposition. The opposition will succeed if one of those grounds is established. The standard of proof is the balance of probabilities (Blount v Registrar of Trade Mark (1998) 83 FCR 50; Rejfek v McElroy (1965) 112 CLR 517 at 521).
Section 58 - applicant is not the owner of the trade mark
To establish a section 58 ground of opposition, the opponent must as a threshold issue show that the trade mark is substantially identical to the opponent’s trade mark (Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495) and has been used in connection with the “same kind of thing” (Hicks's Trade Mark , (1897) 22 VLR 63 6 (at 640)). The proper comparison for substantial identity is a side by side comparison of the trade marks (Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407).
There is no evidence before me that the applicant’s trade mark has been used. The opponent is the owner of the four registered trade marks, all of which have earlier priority dates than that of the application:
Reg. No.
Trade Mark
Class
Goods
Priority Date
784096
FRUITEAS
32
Preparations for making non-alcoholic caffeine-free beverages
29/01/99
814054
FRUITIES
32
Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
17/11/99
836160
32
Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
24/05/00
852521
FRUITIES
29
30
Preserved, dried and cooked fruits; jellies, jams, fruit sauces; milk and milk products
confectionery, ices
6/10/00
It was registration 836160 in class 32 for “Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages” which the opponent identified as being substantially identical to the trade mark of the application. Compared side by side the two trade mark are:
(applicant’s trade mark) (opponent’s trade mark)
Notwithstanding the similarities of the trade marks, I would be inclined to think that on a proper application of case law, they are not substantially identical. However, it is not necessary for me to make a conclusive finding on that point since it can not be said that the opponent’s trade mark has been used in connection with the “same kind of thing” as the services covered by the application.
Accordingly, the opponent has not established the section 58 ground of opposition.
Section 59 – no use and no intention to use
Section 59 states:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the
applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body
corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
The opponent’s argument was that the application history must lead me to the conclusion that the applicant no longer has the required intention to use, or authorise the use of, the trade mark in Australia. The opponent submitted that for a period of nearly 21 months, the applicant has failed to contact the Trade Marks Office or provide an up-to-date address for service. Correspondence sent by the opponent (including its evidence in support) to the given address for service has been returned to sender. On that basis, the opponent asks me to accept that the applicant has lost interest in this application and it is therefore reasonable to conclude that the applicant lacks the required intent to use, or authorise the use of, the trade mark in Australia.
On the evidence before me, it is not conclusive whether the applicant’s address for service is in fact out of date, or whether the applicant has simply repelled the opponent’s attempts of service. In Americana International Ltd v Suyen Corporation (2008) 75 IPR 596, I considered in detail the case law in connection with the questions of if and when an adverse inference can be drawn against an applicant for the purposes of section 59. Applying those same criteria here it can not be reasonably inferred from the limited facts available to me that the applicant has no intention to use the trade mark. The section 59 ground of opposition is not established.
Section 42(b) – use contrary to law
Section 42(b) of the Act states that a trade mark must be rejected if its use would be contrary to law. The opponent submitted that use of the trade mark by the applicant would be conduct that is misleading or deceptive or likely to mislead or deceive contrary to section 52 of the Trade Practices Act 1974 or would constitute the tort of passing off.
To succeed in either of those claims, the opponent bears the onus of proving that the use of the trade mark would be contrary to the other law (Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683).
To establish passing off, the opponent would amongst other things need to show a reputation in its trade mark. To establish a breach of section 52 of the Trade Practices Act, the opponent would need to show that a corporation had engaged in conduct that is misleading or deceptive or is likely to mislead or deceive.
Neither claim stands any chance of success since the applicant is an individual and there is no evidence of reputation behind the registered trade marks.
The section 42 ground of opposition is not established.
Section 44 – earlier trade mark
Section 44(2) provides:
(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.Section 10 of the Act goes on to define a ‘deceptively similar’ trade mark as one that so nearly resembles another trade mark that it is likely to deceive or cause confusion. There is no definition in the Act of what is meant by goods and services which are “closely related” to one another, an issue at the heart of this matter.
The opponent drew my attention to a passage from Part 26 in the Trade Mark Examiner’s Manual concerned with the comparison of retailing services and goods which reads:
It is now considered that while there may be an overlap at some points between retailing services and goods sold in a retail outlet the overlap is not significant enough to warrant raising section 44 grounds for rejection in most situations. Examiners should not routinely cite similar marks merely because one mark covers goods and the other mark could be viewed as covering the retail of those goods.
However there are some circumstances where goods and retail of those goods are perceived by potential purchasers as being so close that section 44 grounds for rejection should be considered. For instance deception and confusion is likely to occur in relation to some goods included in classes 12, 14 and 25 (such as motor vehicles, jewellery and clothing) and specific claims for retailing or wholesaling of those goods. This is because consumers have come to expect that in these cases the goods themselves and their retail or wholesale typically originate from the same source.
In deciding whether a section 44 ground for rejection exists, examiners will generally consider a specific claim for motor vehicles, jewellery or clothing to be closely related to a specific claim for retailing or wholesaling of such goods in class 35. For example, retailing of motor vehicles is considered to overlap with motor vehicles. Where the claim for retailing or wholesaling is broad, examiners will consider whether the particular trader in services is commonly known to trade in the relevant goods, and whether there is a strong rationale for concluding that the specified goods will be a particular focus of the services.
For example, in the case of a claim for retail store services and a claim for clothing it can be expected that a significant risk exists since retail stores in general would reasonably include the retail of clothing.
Conversely in those cases where the comparison was between retail store services and motor vehicles, there may be less likelihood of the same relationship existing and giving rise to a ground for rejection. Consideration of whether there is an otherwise strong rationale for raising a section 44 ground for rejection will still be necessary.
Restaurant services v food
In her discussion of the conflicting trade marks in the “Sizzler” case (AIPC 91.90-746) (Reg), the Registrar's delegate found that restaurant services (not being take-away services) were not services which are closely related to Class 30 food items:
The trade channels through which the goods, as opposed to the services, pass are the primary producer, the manufacturer, the wholesaler, (perhaps an importer) and then the various retail outlets. Restaurant services, excluding take away restaurant services, are not available through these outlets. They are available at establishments dedicated to the services of preparing and serving meals. Conversely, the restaurant services specified in the subject application are not available from food outlets. They are available only at establishments whose sole business is the preparation and serving of meals in situ. Such restaurants are not outlets where class 30 food products may be purchased.
Considering the surrounding circumstances of trade, it is a matter of fact that numerous restaurants do provide ancillary catering services and in addition, sell goods, often indeed the restaurant specialities, from the premises. However, all those activities are excluded from the present application. Here there is simply a restaurant service, and it is not normal trade practice for restaurants to manufacture class 30 food products and then sell them through the normal food retail outlets…. I come to the final conclusion that the services nominated in the present application are not closely related to the goods of trade mark number A239948 (30).
In order to determine whether a service is closely related to the goods covered by an identical or deceptively similar trade mark, the real nature of the service must be known. Therefore, a clear and unambiguous specification of the service is required. As a guide, services and goods may be considered closely related if the services are performed upon or by means of the goods.
The opponent stated that the “Sizzler” case is to be distinguished from the present matter since the services claimed by the applicant here are specifically “provision of food and drink including take away services”. The opponent also underscored the guideline that goods and services may be considered closely related if the services are performed upon or by means of the goods (see also, Re: Aussat Pty Limited, 27 IPR 309). Based on those statements, the opponent argued that “take away services” were distinguishable from the provision of food and drink generally and the guidelines left it open to me to refuse the application for at least those services.
Were I to accept that submission, a remaining difficulty for the opponent is that the reduced specification would still be a generic description subsuming take away food and drink services. An option open to me would be to specifically exclude take away services but I leave that point to the side for the moment since the opponent sought to convince me that the application should, in any event, be refused in its entirety.
The opponent rightly reminded me that the guidelines expressed in the Manual do not have the force of law and that it was open to me to come to a contrary conclusion on the facts of the case.
The current state of the Manual is a condensation of thinking over many decades – thinking what has taken stock of the registrability of service marks themselves, the later acceptance of applications for so-called retail services, the relationship between service marks and trade marks in a changing commercial world, and the shift in the assessment of registrability of all trade mark applications.
Writing in 1979, Frank Smith, then Registrar of Trade Marks and Designs and Commissioner of Patents, acknowledged that there would be cases in which the use of similar trade marks by different proprietors for goods and services would cause confusion:
... the use of identical or deceptively similar marks in respect of prepared foods and in respect of a take-away food service would suggest that both the goods and the service might be attributable to the same source. Motor vehicles and vehicle hire service, cosmetics and beauty salon services, insecticides and pest eradication services are other examples. These are all likely to fall within the concept of "closely related goods and services" as it will occur in ss 23, 33 and 36 of the amended Act.
… It will be an exercise of the Registrar’s judgment and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely
[F J Smith, "The Trade Marks Amendment Act 1978" (1979) 53 ALJ 118, 119-120; see also, comments of Lockhart J in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983)1 IPR 265 at 276-8]
As a matter of Office practice until 2000, trade marks already on the register for food and drink were routinely cited under section 44 against later applications for a like trade mark in respect of restaurant or food services generally. That practice gradually gave way to the position now set forth in Part 26 of the Manual.
That pathway has been strewn with cases not always wholly reconcilable with one another. The opponent, for its part, returned my attention to two cases considered under the now repealed Trade Marks Act 1955. The first case, Rowntree plc v Rollbits Pty Ltd and Anor. 10 IPR 539 dealt with the question, amongst others, of whether the plaintiff’s registration covering confectionary, toffee, chocolate and chewing gum, embraced “goods that are closely related to services” under section 33(2) of the 1955 Act, the defendant’s class 42 application being for restaurant, take-away and carry-out food services . The Supreme Court of New South Wales found that they were. Needham J. said of section 33 at p. 546:
While…there may be cases where the relevant question in sub-s (2) may be answered differently from that in sub-s (1), I think, in the present case, that the conclusion that the goods are goods of the same description[1] requires a conclusion that the services contemplated by the defendant, which would feature the goods already held to be goods of the same description as those of the plaintiff, are services closely related to the plaintiff’s goods.
[1] The defendant also had a class 30 application which had already received attention in the same case with the finding that the respective goods were of the same description.
The second case is that of Aroma Coffee and Tea Pty Ltd v Aromas Pty Limited (formerly Intercof Pty Ltd)(1997) 40 IPR 75 where Hearing Officer Zars found the opponent’s registration 564905 which covered "cafe services, catering services, restaurant and bar services, coffee shop services, take away food and drink services; retailing and wholesaling services being services relating to items of food and beverages, t-shirts and souvenirs, crockery, cutlery, homewares and tea and coffee apparatus; alcoholic beverage services" to be closely related services to the applicant’s goods of coffee, tea and drinking chocolate. The decision cites Rowntree v Rollbits but does not contain any analysis of its own which assists me.
Other cases deserve mention. The Manual places store in the Sizzler case decided in 1990. Eating patterns and food sales have changed enormously since that time, but the real caution in applying that case mechanically arises from the fact that take-away services had already been excised from the application before it was accepted, and so there had been no need to make a decision upon those particular services.
Later, in Mid Sydney Pty Limited v Australian Tourism Co. Limited (1998) 1616 FCA (18 December 1998) and Finradio S.R.L. v Hardrock Café International (USA) Inc. (1999) ATMO 14 it is thought necessary to consider the fundamental nature of the services concerned and what they typically involve. Incidental services take their character from the fundamental business and do not change its essential nature.
In Winton Shire Council v Lomas [2002] FCA 88, Spender J reasoned that:
The only services of relevance in this context are those relating to the conduct of outlets for the supply and provision of meals and refreshments. The registered goods are beverages, purchased for domestic or restaurant use. Outlets for the supply of meals and refreshments are a catering service where food is prepared and beverages are made available to be consumed on the premises of the outlet. Are beverages goods which are "closely related" to a catering service, where food and beverages are made available to be consumed on the premises? The goods and the relevant services have different trade channels.
The question is not without difficulty but, on balance, I am not satisfied that the operational outlets for the supply and provision of meals and refreshments should be considered as being "closely related" to the Registered Goods, namely beverages.
In Kellogg Company v Exxon Company [2001] ATMO 71, Hearing Officer Williams had to decide the same question but in relation to class 30 food items and similar convenience store retailing services.
This case … is one of simplicity: basic products vs the operation of a store that sells them.
I have already said that I do not think that the fact that the retailing service must, of necessity, be performed "by means of" the goods is decisive. The service performed upon the goods is of the most superficial kind. Indeed, were it not for the fact that the International (Nice) Classification confirms the existence of retailing as a service in its own right, I would be tempted to ask if there is any service being performed at all.
As things are, I put great weight … on the positive requirement that there be some expectation, on the part of the public, that the two are part of the one trade or industry. There is certainly no evidence here that the public would see the running of convenience stores, particularly those in association with gasoline service stations, as part of the business of an ordinary trader in food products. The same applies to such convenience stores vis a vis clothing, and again with respect to the toys and games in class 28. True, perhaps, some such "expansion" might not surprise consumers, but no reason has been put forward for why it would be thought of, unprompted, or seen as a natural or convenient arrangement. Therefore, I do not think that there is any reason for ordinary people to see such a development as either likely or predictable with any degree of confidence. Much will depend on the specifics of each case: who is the opponent, what is its mark, how has it used that mark and others? Thus it is possible for an opposition based on clothing versus clothing retail to succeed in Caltex Corporation v Y.E. Choices Merchandising, supra, yet essentially the same controversy here has not. The fact that there is so much disparity between one retailer and another suggests strongly to me that the question of goods versus the retailing of goods should not generally be settled under the terms of s 44. Subject to the facts that are generally applicable to the particular trade, it should usually be left to s 60 as part of the opposition process.
In the case of Societe Des Produits Nestle SA v Cosi Sandwich Bar, Inc [2002] ATMO 113, the trade marks were literally identical and the heart of the matter under section 44 was whether the opponent's beverages and foods in classes 32 and 30 are closely related to the applicant's "restaurant services". Hearing Officer Murray said:
I believe the circumstances in the present case are very similar, if at a point once removed from Mr Williams' decision. He had to decide a purer question of whether a connection existed between convenience store retailing services, and goods that might be sold via such services. I must make a decision here against the background of questioning whether the ordinary public of today automatically expects that restaurants, in addition to their fundamental functions of preparation and service of meals and beverages, will also be food and beverage retailers.
The Registrar’s delegate found that they were not closely related goods and services.
What is clear from these cases is that, at a broad level, the distinction between take-away services and restaurant services made in the Manual is supported. What also emerges from these cases is that the result frequently turned on the mode of delivery of the services. In recent years, there has been an emergence of so-called juice bars, sometimes as stand alone shops, often as kiosks in shopping plazas. With the right evidence, it might be concluded that there exists a public expectation that the two are part of the one trade or industry, to borrow the wording from the Kellogg case, above. Unfortunately, there is no evidence of that kind before me and it is to be remembered that the opponent bore the onus of proof in this regard.
Following both the Manual and my closer examination of the case law, I am not persuaded that the application should be refused in relation to the generic description of its services, namely, “provision of food and drink”.
In so far as the application specifically describes “take away services”, I am most moved by Hearing Officer William’s comment in the Kellogg case that
The fact that there is so much disparity between one retailer and another suggests strongly to me that the question of goods versus the retailing of goods should not generally be settled under the terms of s 44. Subject to the facts that are generally applicable to the particular trade, it should usually be left to s 60 as part of the opposition process.
Absent proof of those facts which might have persuaded me to see a stronger trade link between the goods and services in this case, I do not find the goods to be closely related to the services with the result that the ground of opposition under section 44 is not established.
Decision
Section 55 states that:
42. Section 55 of the Act provides:
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.
The opposition fails since no ground of opposition has been established. The application can proceed to registration one month from the date of this decision provided no appeal is made from this decision.
Costs
No award is made here since the applicant did not seek its costs.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
30 October 2008
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