Bickfords Trading Pty Ltd v Chia Limited - [2016] ATMO 90

TRADE MARKS ACT 1995

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

Re:Opposition by Bickfords Trading Pty Ltd to registration of trade mark application 1638773 (30, 32) - CHIA and device - in the name of Chia Limited.

Delegate:

Nicole Worth

Representation:

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

Applicant: not present at hearing but written submissions prepared by Ben Van Dyke of the Applicant.

Decision:

2016 ATMO 90

Opposition under s 52 of the Trade Marks Act 1995 – grounds pursued under ss 44, 60, 42(b) and 43 – no grounds established – trade mark to be registered.

Background

This decision is pursuant to an opposition by Bickfords Trading Pty Ltd (‘the Opponent’) to registration of the trade mark the subject of application no. 1638773, detailed below, in the name of Chia Limited (‘the Applicant’).
Trade Mark:       (‘the Trade Mark’)
Goods:Class 30: Snack bars consisting of chocolate; Snack bars containing a mixture of grains, nuts and dried fruit (confectionery); Snack bars containing dried fruits (confectionery); Snack bars containing grains (confectionery)
Class 32: Bottled fruit drinks; Fruit drinks; Aerated mineral waters; Natural mineral water (not for medical purposes)
Filing Date:  4 August 2014
Convention Priority Date:  22 July 2014 in respect of beverages, fruit drink, mineral water and fruit juices, non-alcoholic beverages in class 32.
After the application was filed it was examined in due course and accepted for possible registration. Acceptance was advertised in the Australian Official Journal of Trade Marks on 11 December 2014.
The Opponent filed a Notice of Intention to oppose registration on 12 December 2014 followed by a Statement of Grounds and Particulars (‘SGP’) on 5 January 2015. The SGP particularised grounds of opposition under ss 44, 60, 42(b) and 43 of the Trade Marks Act 1995 (‘the Act’). The Applicant filed a Notice of Intention to Defend the opposition on 6 February 2015.
Thereafter the parties filed their evidence (discussed in more detail below) and at the end of the period for filing evidence the Opponent requested a hearing. The hearing took place before me, a delegate of the Registrar of Trade Marks, on 3 August 2016. The Opponent was represented at the hearing by Ian Horak of Counsel, who made written and verbal submissions on the Opponent’s behalf, instructed by Anthony Norris of Collison & Co., Patent and Trade Mark Attorneys. The Applicant did not attend the hearing but provided written submissions prepared by Ben Van Dyke of the Applicant.

Evidence

The evidence in this matter comprises declarations by the following persons:

Evidence in support

Rebecca Tolhurst, General Counsel of the Opponent, with exhibits RT1 to RT6, dated 27 May 2015.

Evidence in answer

Murray Charles Stott, IP consultant and Managing Director of Database Publishing Ltd (representative for the Applicant), with annexures 1 to 4, dated 14 September 2015.

Evidence in reply

Hugh McIntosh, Senior Brand Manager of the Opponent, with exhibits HM 1 and HM 2, dated 10 December 2015.

Anthony Norris, Trade Mark Attorney of Collison & Co., with exhibits AJN 1 to AJN 7, dated 11 December 2015.

A summary of the relevant facts and events presented in the evidence is as follows.
The Opponent is the owner of Australian trade mark registration no. 1596162, detailed below.
Trade Mark: CHIAHH (‘the Opponent’s Trade Mark’)
Goods:Class 32: Non-alcoholic beverages; aerated beverages; beverages containing vitamins, seeds or nutrients; fruit juice beverages; fruit juice beverages containing vitamins, seeds or nutrients; fruit juice beverages containing chia seeds; fruit juice extracts; fruit juice extracts containing vitamins, seeds or nutrients; fruit juice extracts containing chia seeds; syrups for making beverages; water containing vitamins, seeds or nutrients
Filing Date: 11 December 2013
The Opponent had also applied for registration of the trade mark VITA CHIAHH in respect of the same goods as those in the above registration on the same filing date, but that application was withdrawn following negotiations with an opponent to that application.
Ms Tolhurst exhibits information regarding the nature of the Chia plant and the seeds it bears. Chia seeds are a rich source of B vitamins[1] and I know from my own observations of the world that chia seeds have become popular in recent years as a ‘superfood’ (being a marketing term for foods with supposed health benefits).[2]
[1] According to a Wikipedia® extract at exhibit RT3.
[2] See
Ms Tolhurst declares that product bearing the trade mark VITA CHIAHH was initially launched and trialed in South Australia on 4 August 2014, and that the product was ‘refreshed and relaunched’ under the CHIAHH trade mark on 18 November 2014. The Opponent decided to trial the product in South Australia only, and although Ms Tolhurst declares a roll-out to other states commenced in March 2015 no further information relating to other states is provided.
Relatively modest, albeit still commercially significant, sums are declared by Ms Tolhurst to have been spent on advertising and promotion of the product, including the development of a campaign slogan, styling, graphics and the development of a radio advertising campaign that took place in South Australia. A post campaign report shows that radio advertising commenced on 4 August 2014. Further sums are declared by Ms Tolhurst to have been spent on packaging, samples and sponsorship, in amounts which I would also characterise as modest.
A table of sales is included in Ms Tolhurst’s declaration, which indicate modest sales beginning in July 2014 and continuing to 13 May 2015. A list of current stockists and current pages from the website ‘ (as at the date of Ms Tolhurst’s declaration in May 2015) are exhibited.
The Opponent expands upon its evidence in support in its evidence in reply. Mr McIntosh provides details regarding advertising and promotional expenditure that was incurred before the priority date of the Trade Mark. I would again characterise this expenditure as modest and note that it relates to development of the radio advertising campaign, point of sale materials and packaging costs.
Anthony Norris, the Opponent’s attorney, responds to the issue of various trade marks containing the word ‘chia’ appearing upon the Register of Trade Marks (those trade marks being specified in the Applicant’s evidence, discussed below). He notes that some of the trade marks (at the time of his declaration) had lapsed or had been accepted but may still have been opposed. He further submits that according to the various websites connected to the owners of those other trade marks, none are used in relation to beverages or bottled products. Lastly he submits that according the its website, the Applicant uses the Trade Mark in relation to a red coloured beverage flavoured with apple and blueberry; and that the Opponent’s website shows the Opponent uses the Opponent’s Trade Mark in relation to a red coloured beverage flavoured with apple and raspberry.
On behalf of the Applicant, Mr. Stott submits in his declaration that the parties’ trade marks are different (hence the Trade Mark was accepted in the face of the Opponent’s Trade Mark), that the word ‘chia’ is common and generic, and that any reputation or goodwill in the Opponent’s product is in its infancy.
Mr. Stott also submits that the Opponent did not act against a number of trade marks that include the word ‘chia’ and appear in class 32 (amongst other classes) on the Register of Trade Marks. He further exhibits copies of what he submits are the same or similar trade marks to the Trade Mark in the same or similar classes (all of which relate to food or beverages). Given I have not found those trade marks to be material to my decision, I have not reproduced them here. I simply note that there are several trade marks upon the Register of Trade Marks which contain the word ‘chia’ and are in respect of various foods and beverages, although not all of them have achieved registration.

Grounds, Onus and Relevant Date

The Opponent pursued grounds of opposition under ss 44, 60, 42(b) and 43 of the Act. It bears the onus of establishing a ground of opposition,[3] and should one ground be established then this will be sufficient to establish the opposition. The standard of proof is the ordinary civil standard of the balance of probabilities.[4]
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[4] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133].
The rights of the parties are to be determined as at the date of application which is usually the filing date, here being 4 August 2014,[5] except in respect of those grounds of opposition which specify that ‘priority date’ applies. A person may claim an earlier priority date if they have earlier made an application to register a trade mark in one or more Convention countries.[6] Sections 44 and 60 specify ‘priority date’, and as such they are assessed as at 22 July 2014, the convention priority date.
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; the Act ss 6, 12, 72.
[6] See ss 29, 72 and 225 of the Act.
The Opponent primarily relies upon its ground of opposition under s 44 of the Act, and so I begin with a discussion of that ground.

Section 44

Section 44 relevantly provides:
Identical etc. trade marks
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.
Subsections (3) and (4) of s 44 relate to prior or honest concurrent use, or ‘other circumstances’, which may permit concurrent registration of otherwise substantially identical or deceptively similar trade marks. As will become clear it is not necessary to discuss these provisions because I do not consider subsection (1) is met.
In order to found this ground the Opponent must establish the existence of another person’s trade mark (or trade marks) with an earlier priority date than that of the Trade Mark, which is in respect of similar goods or closely related services and which is deceptively similar or substantially identical to the Trade Mark. The Opponent relies upon its trade mark registration1596162 to do so.
The priority date of the Opponent’s Trade Mark is earlier than that of the Trade Mark and the Opponent’s Trade Mark is in respect of goods that are the same, or of the same description, as those of the Trade Mark.[7]
[7] See s 14 of the Act and Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203 regarding the meaning of ‘similar goods’ and ‘goods of the same description’.
The remaining question is whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s Trade Mark. I consider it relatively straight-forward that they are not substantially identical: the Trade Mark contains a distinctive circular device within which is a stick figure running as well as the descriptive element CHIA; by contrast the Opponent’s Trade Mark does not contain any device and consists of the element CHIAHH, which although reminiscent of the word ‘chia’ is quite significantly removed from it. Indeed, on the face of it this difference from the word ‘chia’ was sufficiently significant as to permit the registration of CHIAHH as a trade mark in the first place.
The expression “deceptively similar” is defined in s 10 of the Act as follows:
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.
In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd[8] Windeyer J discussed deceptive similarity in the following terms:
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 [trade mark].
[8] (1963) 109 CLR 407; [1963] HCA 66; [13].
I consider the impression of the parties’ trade marks is quite different. The word ‘chia’ is commonly understood to refer a type of seed which is a popular ingredient in drinks, smoothies and various food products. Consumers are familiar with it and its presence upon many different foods or drinks, particularly where those products purport to be healthy or health related. For that reason it is unlikely that the mere presence of the element CHIA in different trade marks upon various foods and drinks is likely to lead to deception or confusion, even where those food and drink products are closely or exactly aligned. I bear in mind also the observation that the very descriptiveness of a word can ensure that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public.[9]
[9] Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (albeit in the context of proceedings under the now repealed Trade Practices Act 1974); [1978] HCA 11.
Whilst CHIA is the only element by which the Trade Mark may be verbally referred to, I consider that it does not primarily perform the ‘badge of origin’ function[10] in the Trade Mark. Rather, I consider that the distinctive circular device containing a stick figure running will take greater precedence in distinguishing the Applicant’s goods from those of others, albeit the Trade Mark must be considered as whole (being, the combination of the element CHIA and the device).
[10] Per Coca-Cola Co v All-Fect Distributing Co trading as Millers Distributing Co [1998] FCA 1638.
On the other hand the Opponent’s Trade Mark is comprised of the element CHIAHH, which as I have already noted is reminiscent of the word ‘chia’ and alludes to the nature of the goods. However, the addition of the two letters ‘H’ at the end of the word has a significant impact upon the impression it leaves: it becomes effectively an invented or portmanteau word, albeit one that implies an association with the chia seed, and one which may bring to mind an exclamation of satisfaction (‘ahh’) when a refreshing drink is consumed. In terms of pronunciation I consider the AHH at the end of the Opponent’s Trade Mark is equally as likely to result in it being pronounced with an elongated ‘a’ as it is to leave the pronunciation of the element CHIA unchanged (as submitted by the Opponent).
Whilst the goods covered by the parties’ respective trade marks are the same, both notionally and as seen upon the parties’ websites, this does not outweigh the significant differences between the trade marks, given that the material they share in common is descriptive of those goods.
With respect to the other trade marks upon the Register of Trade Marks which contain the element CHIA, as may be expected there are many of these because chia seeds are a popular ingredient in food and drink products. Whether or not internet research reveals that they are in fact used in respect of beverages is irrelevant to the question under s 44: it is a notional consideration of the scope of goods claimed in a registration or application which is to be taken into account.[11]
[11] Registrar of Trade Marks v Woolworths (1999) FCA 1020, [50]; Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11].
I am not satisfied that consumers would be confused or deceived as to whether the parties’ products came from the same source. Accordingly, the ground under s 44 is not established.

Section 60

Section 60 of the Act provides:
60Trade 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.
Note:For priority date see section 12.
To establish the ground of opposition under s 60 the Opponent must demonstrate its trade mark had acquired a reputation in Australia such that by the priority date, 22 July 2014, the use of the Trade Mark would be likely to deceive or cause confusion.
Reputation in this context refers to the recognition of the Opponent’s mark by the public generally[12], although the size and nature of the relevant market must be taken into account.[13] I note further that confusion or deception may be likely where very little nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the trade marks,[14] and that confusion cannot arise solely from reputation but must always involve some degree of similarity between marks, whether it be called deceptive similarity or something less.[15]
[12] McCormick & Company Inc v McCormick (‘McCormick’) [2000] FCA 1335; (2000) 51 IPR 102.
[13] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; (2001) 50 IPR 1.
[14] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.
[15] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.
The Opponent did not address this ground, nor any of the remaining grounds, in its written or verbal submissions at the hearing. Some comments are made in the Opponent’s evidence and SGP and so I base my finding upon that information.
The SGP states that:
The opponent’s VITA CHIAHH trade mark has acquired a reputation in Australia dating from its use since July 2014. Use of this mark has been for non-alcoholic beverages in class 32 (as described in Application No. 1596163 [now withdrawn]). Use of the opposed mark is likely to deceive or cause confusion.
Although only the one trade mark, VITA CHIAHH, is mentioned as the basis for the s 60 ground of opposition in the SGP, the Opponent’s evidence appears to be intended, at least to an extent, to establish a reputation in both trade marks VITA CHIAHH and CHIAHH. For completeness, and because it does not materially affect the decision, I address both trade marks.
Ms Tolhurst declares that ‘the CHIAHH trade mark has been extensively marketed in South Australia’ and she provides figures for promotional expenditure, which I have characterised as modest. Similarly, the promotional expenditure which took place before the priority date as exhibited in Mr McIntosh’s declaration, is also modest and I note was incurred only one month before the priority date. There are no sales recorded prior to July 2014, the same month as the priority date.
I am not satisfied on this information that either of the CHIAHH or VITA CHIAHH trade marks of the Opponent had a relevant reputation at the priority date. The use of the Opponent’s trade marks was localised to South Australia, their promotion was relatively modest as were the resultant sales, and this all took place only about a month prior to the Applicant filing its application.

I am accordingly not satisfied that use of the Trade Mark is likely to deceive or confuse consumers because of the reputation of the Opponent’s trade marks. The ground of opposition under s 60 is therefore not established.

Section 42(b)

Section 42(b) of the Act provides that:
An application for registration of a trade mark must be rejected if:
…
(b) it’s use would be contrary to law.
It is s 18 of Schedule 2 of the Competition and Consumer Act 2010 (‘CCA’) that the Opponent contends, in its SGP, is the basis for the ground of opposition. Section 18 of that Act provides that a person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 42(b) of the Act requires that the Registrar be satisfied that the Trade Mark would (not ‘could’) be contrary to law.[16] Section 18 of Schedule 2 of the CCA stipulates that the conduct complained of would ‘mislead or deceive’. Given I am not satisfied that the Trade Mark would confuse or deceive under s 60 of the Act, a lower threshold than that required for s 18 of the CCA, I am not satisfied that the Trade Mark would mislead or deceive under the higher threshold of the CCA.
[16] According to Madgwick J in Advantage-Rent-A-Car v Advantage Car Rental Pty Ltd [2001] FCA 683, [28].
Accordingly the ground under s 42(b) of the Act is not established.

Section 43

Section 43 of the Act provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The basis for the ground of opposition is explained in the SGP as:
The word element of the opposed mark is comprised solely of the word “CHIA”. This suggests a connotation to the Chia seed (Salvia hispanica), a species of flowering plant native to central and southern Mexico and Guatemala. There is nothing in the specification in classes 30 and 32 to indicate that the goods are made from or contain Chia. To the extent that the goods claimed do not contain (or are not made from) Chia, the trade mark is likely to deceive or cause confusion.
I consider that the inherent qualities of the Trade Mark do give rise to a connotation that the goods contain chia, by virtue of ‘chia’ being the only word present in the Trade Mark and the name of a popular ingredient in food and beverages. However, that does not necessarily mean that the connotation is one that would deceive or confuse. There is nothing before me to suggest that the Applicant’s products do not contain chia, and in fact the material filed by the Opponent from the Applicant’s website indicates that its beverages do contain chia.
There is no further information or circumstances that have been brought to light which might cast doubt upon the nature of the Applicant’s goods, and as such I do not consider it likely there would be any deceptive or confusing connotation in the Trade Mark.
The ground under s 43 accordingly is not established.

Decision

Section 55 relevantly provides that:
…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.
The Opponent has not established a ground of opposition.
Accordingly, I direct that trade mark application 1638773 may proceed to registration after one month from the date of the decision. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.
The parties their sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Opponent per Schedule 8 of the Trade Marks Regulations 1995.

Nicole Worth

Hearings Officer

Trade Marks Hearings

25 October 2016