BlendTec Inc. v Healthy Foods LLC
[2016] ATMO 69
•7 September 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by BlendTec, Inc. to registration of trade mark application 1544596 (7) - SPIRAL DEVICE - in the name of Healthy Foods, LLC.
Delegate: | Nicole Worth |
Representation: | Opponent: Siobhan Ryan of Counsel, instructed by Davies Collison Cave Patent & Trade Mark Attorneys. Applicant: James Maxwell of Peter Maxwell & Associates. |
Decision: | 2016 ATMO 69 Opposition under s 52 of the Trade Marks Act 1995 – grounds of opposition under ss 42(b), 44, 58 and 60 – general ground of ‘Registrar’s discretion’ not applicable – s 44 established but s 44(4) applied – no other grounds established – application to proceed to registration. |
Background
In this matter BlendTec, Inc (‘the Opponent’) opposes registration of trade mark application no. 1544596 under s 52 of the Trade Marks Act 1995 (‘the Act’). The trade mark application is in the name of Healthy Foods, LLC (‘the Applicant’), and the relevant details of the application are shown below.
Trade Mark: (‘the Trade Mark’)
Filing Date: 6 March 2013
Goods: Class 7: Electric food processors
The application was examined as required by s 33 of the Act and accepted for possible registration. The acceptance was advertised in the Australian Official Journal of Trade Marks on 27 June 2013.
After being granted an extension of time, the Opponent filed a Notice of Intention to Oppose registration on 29 August 2013 followed by a Statement of Grounds and Particulars (‘SGP’) on 30 September 2013. The SGP was deemed to be inadequate (about which more will be discussed shortly) and so an adequate SGP was filed 20 November 2013. The Applicant filed a Notice of Intention to Defend the opposition on 21 January 2014.
The parties filed their evidence in due course and the matter was set down to be heard in July 2015. In June 2015 the Opponent filed a request to add a ground of opposition under s 58A to its SGP which was disputed by the Applicant, and so the hearing date was vacated in order that the amendment request could be resolved. The request was ultimately refused.
The substantive hearing was rescheduled and took place before me, a delegate of the Registrar of Trade Marks, in Canberra on 29 June 2016. Siobhan Ryan of Counsel instructed by Madeleine Chan of Davies Collison Cave appeared by video conference on behalf of the Opponent. James Maxwell of Peter Maxwell & Associates appeared by telephone on behalf of the Applicant.
Grounds and onus
In order to succeed in its opposition the Opponent bears the onus of establishing at least one ground of opposition upon the ordinary civil standard of the balance of probabilities.[1] The rights of the parties are generally to be determined as at the filing date of the opposed application, here being 6 March 2013.[2]
[1] Per Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] and Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73.
The first iteration of the SGP filed by the Opponent nominated four numbered grounds of opposition under various sections of the Act as well as a fifth numbered ‘ground’ that:
Registration of the Trade Mark ought to be refused in the exercise of the Registrar’s discretion, by reason of the conduct of the Applicant and/or the nature of the Trade Mark and/or of its use and/or on such other grounds as the Registrar or the court, on appeal, may see fit to allow.
[I will refer to this ground as ‘the fifth ground’].
Unsurprisingly, the fifth ground was considered inadequate. In 2013 a regime of requiring grounds to be particularised early in oppositions came into effect, with the specific aim of focusing oppositions early in proceedings to reduce unnecessary effort by an Applicant responding to vague or superfluous grounds.[3] The fifth ground seeks to include any or all discretionary reasons to refuse registration, utterly contradicting the intent of the SGP regime. Accordingly, a delegate of the Registrar informed the Opponent that the fifth ground was not a ground of opposition and would need to be deleted from the SGP.
[3] See Item 18, Schedule 3 of the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011.
The Opponent filed a new SGP, wherein the fifth ground was not deleted. Rather, each of the grounds nominated under sections of the Act were assigned numbers from 1 to 4 and the fifth ground was not assigned any number, but instead appears (in my estimation) as somewhat of a closing statement to the SGP. It appears that this was determined to be adequate and the opposition proceeded. The grounds numbered from 1 to 4 are those under ss 42(b), 44, 58 and 60 of the Act.
At the hearing, the Opponent submitted that ‘discretion’ was a ground of opposition under ‘point 5’ of the SGP. It did not press the point further, most likely because I had already informed the parties that I would not hear submissions on the additional ground under s 58A that the Opponent sought to have included (first, by virtue of the previously-referred to amendment request which was heard and refused, and second by virtue of making written submissions about that ground anyway, despite the Registrar’s refusal to add it to the SGP). Nonetheless, although the ‘discretion’ ground was not pressed further I will clarify here that I have not considered it, both because it is simply too ambiguous for the Applicant to respond to or for the Registrar to determine, and because the Opponent has already been advised that it was not a ground of opposition. Accordingly the only grounds considered are those under ss 42(b), 44, 58 and 60 of the Act.
Evidence
The evidence filed in this matter comprises declarations by the following persons:
| Evidence in support |
| B. Shawn Elgaaen, Residential Product Engineering Manager of the Opponent, with exhibits BSE-1 to BSE-3, dated 13 June 2014. |
| Damian Anthony Kelly, Company Secretary of Franchise Fit Out Services Pty Ltd, the Australian distributor of the Opponent’s products, with exhibits DAK-1 to DAK-10, dated 18 June 2014. |
| Evidence in answer |
| James Maxwell, Principal of Peter Maxwell and Associates, attorneys for the Applicant, with exhibits JVM-1 to JVM-14, dated 29 September 2014. |
| Gregory Paul Waters, Director and shareholder of Chillax Products Pty Ltd, the Applicant’s Australian distributor, with exhibits GPW-1 to GPW-7, dated 29 September 2014. |
| Evidence in reply |
| B. Shawn Elgaaen, with exhibits 1 to 3, dated 8 December 2014. |
| Damian Anthony Kelly, with exhibits 1 to 4, dated 12 December 2014. |
| Christine Lowe, Partner at Davies Collison Cave, attorneys for the Opponent, with exhibits 1 to 4, dated 12 December 2014. |
The Opponent’s evidence
As a preliminary matter I note that each of the Elgaaen and Kelly declarations contain a statement to the effect that the entirety of their declarations are strictly confidential. In general, the Registrar directs that information in proceedings properly identified as confidential is restricted to those who reasonably need to see it for the purposes of the proceedings. Nonetheless the Registrar is required to provide reasons for her findings and faces a conundrum in how to do so where a party claims all of their material as confidential. I note further that some of the material is clearly not confidential, such as extracts from publicly available websites, pictures and copies of the Opponent’s product manuals and packaging, and articles mentioning the Opponent’s goods in various publications. A delegate of the Registrar, in similar circumstances, noted:
The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take [the opponent’s] request (made within several declarations) at face value, that would be the end of these matters.
This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail…[4]
[4] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].
I will do likewise here. In setting out my reasons, I will refrain from discussing in detail information which is arguably commercially sensitive but will discuss the Opponent’s evidence to the degree necessary to provide sensible reasons.
The Opponent is the owner of trade mark registration 1532885, relevant details of which appear below.
Trade Mark: (‘the Opponent’s Trade Mark’)
Filing Date: 21 December 2012
Goods:Class 7: Electric food blenders for use in the field of food and drink preparation
It is declared that the Opponent’s Trade Mark was first used in Australia ‘at least as early as’ February 2001 in relation to food and beverage preparation machines including blenders. To substantiate this claim the Opponent’s Australian distributor provides two photographs of what is declared to be a motor for a blender. The first photograph depicts a face plate bearing the name ‘Blendtec’ and a square version of the Opponent’s Trade Mark, reproduced below, and the second photograph depicts another face plate bearing technical information including voltage and the date ‘Nov 10 2000’.
The Opponent declares that the motor bearing these face plates was manufactured in the USA in November 2000 and shipped to Australia to satisfy a customer order, arriving here in around February 2001. Products manufactured for use in Australia are declared to require 240 volt motors, and the second face plate states ‘240 volt’.
It is declared ‘for the last 14 years’ (being from the year 2000) the Opponent’s goods have been distributed in Australia in the commercial and domestic markets; one of the first customers being ‘the originator of Boost Juice Pty Ltd’. The Opponent declares that Boost Juice Pty Ltd established their first concept store in March 2000, and the Australian distributor supplied six of the Opponent’s blenders bearing the Opponent’s Trade Mark to that store. The Opponent’s products are declared to continue to be supplied to Boost Juice stores such that approximately 70% of them have the Opponent’s products, although there is no sales documentation to support either the first or any subsequent sale to them.
Since 2000 a number of well-known franchises in Australia are declared to have been supplied with the Opponent’s products, including Boost Juice, The Coffee Club, Subway, NZ Natural, Starbucks and Baskin Robbins. However there is no supporting documentation or declarations to substantiate this claim.
Undated photographs of product packaging and various face plates, declared to be from the records of the Australian distributor and declared to be from various dates ranging from ‘beginning 2000’s’ to ‘2012-2013’, are exhibited. A separate undated photograph of a face plate which shows the Opponent’s Trade Mark used somewhat separately to other indicia is also exhibited (with the submission that the Opponent’s Trade Mark appears without any other trade mark on the face plate of the blender. What appears along with the Opponent’s Trade Mark are the words 1‑800BLENDTEC and BLENDTEC.COM). Photographs of a number of product manuals are exhibited, upon which the dates ‘April 2003’, ‘05 June 08’, and ‘Aug 10’ are printed, as are undated photographs of the products themselves bearing the Opponent’s Trade Mark, including blender motors and blender jars, declared to be from ‘year 2000/2013’, 2009 and 2013.
It is declared that the Opponent launched a machine suitable for domestic use in 2010, although Australian compliance was not certified until 7 February 2011. The Australian distributor declares to have undertaken marketing of blenders to the domestic market, including approaching major retailers such as David Jones, Myers and Harvey Norman, although it is not stated whether the Opponent’s products are actually sold via those retailers. It is however declared that sales to the domestic market (through unnamed means) now constitute approximately 30% of the Australian distributor’s sales of the Opponent’s products.
In terms of marketing and promotion, the Australian distributor declares to have attended food fairs in ‘2005/2006’ (in respect of which undated photographs of banners are exhibited), and produced and distributed recipe books, posters, pamphlets, books and manuals, all bearing the Opponent’s trade mark (some of which are the subject of photographs, undated and declared to be from years ranging from 2000 to 2011). A number of articles about an Australian tour by the Opponent’s founder are exhibited, dated September and October 2012. The Opponent’s founder created a series of videos titled Will it Blend?, in which he blends various articles such as a rake, an iPad®, a smartphone, or a pair of shoes, using one of his machines. The videos were uploaded to the internet and have since been viewed millions of times. The Opponent’s Trade Mark is visible in some of those videos, and likewise in some of the articles which show stills from the videos. Three magazine advertisements for the Opponent’s goods are exhibited, in Feast, Australian T3 and Prevention magazines, dated October 2012, November 2011 and October 2012.
The Opponent’s Trade Mark was filed in the USA in 2010 and registered in 2011 in respect of the same goods for which it is registered in Australia. The record of the USA registration states that first use of the mark in commerce occurred 7 October 2010, however subsequent to a challenge from the Applicant the Opponent has since applied to have that record amended to March 2000. It also exhibits a product manual bearing the square version of the Opponent’s Trade Mark which is dated March 2000.
The Opponent’s Trade Mark is declared to have been used in numerous countries around the world in relation to machines including blenders. Worldwide sales figures of machines are provided for the years 2011 to 2013, and the Australian distributor provides single overall sales figures for sales to commercial customers and sales to domestic customers for the period July 2009 to March 2013 (there is no explanation as to whether the sales to domestic customers took place after the launch and Australian certification of the domestic machine in 2010 and 2011). Worldwide advertising and promotional expenditure is provided, but not that which is specific to Australia.
The Applicant’s Evidence
The Australian distributor of the Applicant’s goods refers to those goods as ‘the Yonanas dessert maker’. Website material shows ‘the Yonanas dessert maker’ to be a machine that blends frozen fruit (particularly bananas) into a consistency resembling ice cream. Images of the machine show that it bears the Trade Mark in isolation, although upon the website the Trade Mark appears as the letter ‘o’ in ‘Yonanas’.
The Australian distributor declares it has sold the Applicant’s goods since March 2012 and to support that claim, undated photographs of the machine, packaging, recipe books and instructional materials are exhibited. Currently the Applicant sells its goods via a number of major retailers including Target, Harvey Norman, Myer, David Jones and Bing Lee.
The first shipment to Australia of the Applicant’s goods bearing the Trade Mark is declared to have been sent ‘in late 2011/early 2012’, directly from the Applicant’s manufacturer in China. The invoice and shipping documents are exhibited, dated 22 and 28 December 2011, although they do not show the Trade Mark but rather describe the goods as ‘Yonanas’ and ‘Yonanas Maker’. Similarly, an invoice from the Australian distributor of the Applicant’s goods to the retailer Target is exhibited, dated 5 March 2012. It too describes the goods as ‘Yonana Machine’ but does not show the Trade Mark. It is declared that the goods to which the invoice relates bore the Trade Mark (as depicted in the images of the machine referred to earlier).
A single figure of the number of units sold in Australia since March 2012 is provided, as is the price range for the Applicant’s goods (which is from $79 to $165). Similarly a single figure for marketing expenditure is provided for the period March 2012 to ‘present’ (the date of the declaration being 29 September 2014), although it is not stated whether this is in relation to Australia nor is the figure given in any particular currency.
It is asserted that the Applicant’s product enjoys a significant reputation given the amount of publicity it has enjoyed in Australia. A number of extracts from various print and online publications are exhibited. Those that are dated are from between October 2013 and July 2014, and they generally discuss ‘guilt-free’ or ‘healthy’ desserts made using the machine. Links to videos accessible via the internet are provided, one of which is a television segment about the product on the Today show on Channel 9, published February 2014, and the other a television segment upon the ‘TVSN shopping network’, published 30 May 2013 (although declared to be from ‘prior to October 2012’).[5] A list of ‘media mentions in Australia’ is exhibited which gives the name of the publications, a brief description of what appeared (although not the actual extracts from the publications), and the dates of publications (dating from ‘5/6 May 2012’); however it is not clear that it is the Trade Mark, as opposed to the name ‘Yonanas’, that appeared.
[5] I note that three of the five links to videos do not work, resulting in the message ‘This video is unavailable. Sorry about that’, nor was I able to access them via a Google® search for their file names.
The Australian distributor declares that he is unaware of any instances of confusion, and asserts that the Applicant’s product is somewhat unique in that it is not a blender or traditional food processor, but rather is used to make frozen desserts from frozen fruit. (The Opponent responds to this by exhibiting packaging of its products which refers to ‘ice cream’ as one of the functions of its own products). The Applicant’s attorney also declares he is instructed that the Applicant is not aware of any instances of confusion, either in Australia or in other jurisdictions where both parties’ goods are sold under their respective trade marks. He makes a number of assertions about this being due to the different price points of the parties’ goods, although the Opponent challenges this and exhibits a number of online discussions wherein the parties’ respective products are compared for the purposes of making ‘ice cream’ from frozen bananas.
The attorney for the Applicant declares that swirling or spiral devices are common amongst registrations in classes 7 and 11. Search results are exhibited which show that 83 trade marks appearing on the Australian database of trade marks (‘ATMOSS’) in classes 7 and 11 contain spiral devices and 109 trade marks upon ATMOSS in classes 7 and 9 contain whorl devices (although the Opponent contends that these searches were not confined to registered trade marks filed before the priority date of the Trade Mark). A number of those trade marks specifically claim electric food processing equipment.
A number of statements are also made regarding the differences between the features of the Opponent’s and Applicant’s trade marks, relating to their arc, thickness, shading and shape. To that end the Applicant’s attorney submits the parties’ trade marks are not substantially identical or deceptively similar, which is argued to accord with the view of several trade mark offices around the world including the USA, wherein the Opponent’s trade mark was filed prior to the Applicant’s trade mark.
It is declared that the Trade Mark was first used by the Applicant in the USA in October 2011, and the Trade Mark replaced a previous swirl device used by the Applicant from August 2010 to September 2011. Archived website material dated 26 August and 26 October 2011 shows the previous and current form of the Trade Mark. Further archived website material is exhibited, dated 29 and 31 March 2012, to support the claim that the Applicant first used the Trade Mark in Australia in March 2012 when it published an Australian version of its website. The Trade Mark is depicted upon both archived web pages.
Section 44
It is convenient to begin with the ground of opposition under s 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.
…
(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.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Accordingly, the Opponent must establish there is another trade mark which has an earlier priority date than the Trade Mark, which is substantially identical or deceptively similar to the Trade Mark, and which is in respect of similar goods or closely related services to those of the Trade Mark. To do so the Opponent relies upon its previously identified registration, reproduced below alongside the Trade Mark for ease of comparison.
| The Trade Mark | The Opponent’s Trade Mark |
| Goods: Class 7: Electric food processors | Goods: Class 7: Electric food blenders for use in the field of food and drink preparation |
| Priority date: 6 March 2013 | Priority date: 21 December 2012 |
The Opponent’s Trade Mark has an earlier priority date than the Trade Mark, and that the goods of the parties are essentially the same. The Applicant did make submissions to the effect that the markets for the parties’ goods differed due to the different price points they were sold at. However, it is the notional scope of the goods which is to be considered in the context of s 44,[6] and notionally neither parties’ goods are limited to any particular market. I turn then to the question of whether the parties’ trade marks are substantially identical or deceptively similar.
[6] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, [11].
‘Substantially identical’ is not defined in the Act. Windeyer J, in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[7] articulated the test for substantial identity as:
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.
[7] [1963] HCA 66, [12].
I do not consider that, upon a side by side comparison, a total impression of resemblance emerges. Despite there being a degree of tolerance for slight differences between marks in the assessment of substantial identity,[8] here the respective trade marks are readily distinguishable when placed side by side. They are comprised of relatively simplistic spiral designs, unlike the trade marks at issue in University of Sydney (referred to in the previous footnote) which were comprised of a somewhat more complex arrangement of features including a capital letter G within a circular shield device and a dot within the letter G. Nor do they appear as differing versions of the same thing, per Insight Clinical Imaging (or, for that matter, Ferrari) also referred to in the previous footnote. Here, one mark may appear as somewhat three dimensional due to the use of shading, whereas the other does not appear so, and one is contained within a circle whereas the other has a squared base (perhaps reminiscent of a stylised device of a wave). Accordingly, where both marks are side by side before the observer, they are not so similar that they amount to being substantially identical.
[8] Which the Opponent submits is indicated by the Registrar’s decisions Ferrari SpA v Wicara Enterprises [2010] ATMO 96; University of Sydney v Cameron Jenkinson and Bim Recketson [2002] ATMO 106; and Insight Clinical Imaging v Insight Radiology Pty Ltd [2014] ATMO 85.
The next inquiry is whether the Trade Mark is deceptively similar to the Opponent’s Trade Mark. Unlike ‘substantially identical’, ‘deceptively similar’ is defined in the Act which states at s 10 ‘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’.
Continuing on in Shell, Windeyer J articulated the test for deceptive similarity as:
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].[9]
[9] [1963] HCA 66, [13].
Additionally, the impression of a trade mark may be imperfectly recalled, as was recognized in Re Rysta Ltd’s Application:
It is the person who knows only the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is likely 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.[10]
[10] (1943) 60 RPC 87.
Obviously neither of the trade marks at issue here are comprised of words. However, the observation regarding ‘meticulous comparison’ between trade marks being of little assistance is relevant. I consider that a number of the Applicant’s submissions are a meticulous comparison between the parties’ marks, such as a comparison between whether the centre of the respective spirals is bulbous or not and the numeric arc values of the respective lines of spiral.
I consider that the impression of both trade marks is that they comprise relatively simplistic spirals. It is true that the Trade Mark may appear as three dimensional due to the use of shading, although I do not think that this is certainly so. It is also true that the Opponent’s Trade Mark appears only as two dimensional, and that its lower section is squared and its upper section is open (unlike the Trade Mark which is contained within a circle). Nonetheless, I consider their impressions similar. They are comprised of simplistic spirals with no other differentiating features – were they to appear upon blenders, in isolation (and notionally they may appear in the same or similar colours), then it is likely that consumers will be confused based upon the similar impressions the trade marks leave, which may be imperfectly recalled.
I note also the Applicant’s reference to other trade marks on the Register containing spirals and whorls. Whilst it is true that there are several such trade marks, most are combined with other features so that they are sufficiently distinguishable from each other. There are few that comprise a spiral or whorl device solus and are in respect of food processing machines or machines encompassing such goods: they are depicted below. I do not consider any of them bear the degree of resemblance that the subject marks do to each other, nor do I consider it indicative that the Registrar considers spiral and whorl devices solus in respect of machinery ought to coexist on account of ordinariness. In any event, the state of the Register does not outweigh the application of the tests under s 44, which I find here lead to the conclusion of deceptive similarity.
Accordingly, s 44(1) is established. The next inquiry is whether the Applicant can establish that it has used the Trade Mark either prior to, or honestly and concurrently with, the Opponent’s Trade Mark.
I will address honest concurrent use first because I consider it more easily disposed of. Sales of the goods in Australia appear to have commenced in March 2012. I note that shipping documents show a shipment of goods to the Australian distributor in December 2011, however it is not clear that this use was in trade and the documents do not in any event show use of the Trade Mark. Placing the evidence at its highest (bearing in mind that some of the evidence is summary in nature or does not show use of the Trade Mark in trade), this means that by the priority date the Applicant’s concurrent use of the Trade Mark had occurred for only one year. (I note that Lander J in Hills Industries v Bitek Pty Ltd [2011] FCA 94 [163]-[164] considered at which date use for the purposes of s 44(3)(a) ought to be considered, and found that such use should be before the priority date, consistent with Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd 91 CLR 592 and McCormick & Co v McCormick [2000] FCA 1335). Additionally, although the number of the Applicant’s goods sold ‘by October 2012’ is not insignificant (nor is the number sold at the time of the declaration in 2014), it is not so high that it might counteract the short period of only one year of concurrent use. Accordingly, I am not satisfied that the Applicant has established honest concurrent use of its Trade Mark.
I turn then to prior use. The priority date of the Opponent’s Trade Mark is 21 December 2012, and it is continuous use prior to then that the Applicant must establish in order for the provisions of s 44(4) to apply. The Applicant exhibits an invoice dated 5 March 2012 for a number of units sold to the retailer Target. The invoice does not depict the Trade Mark but rather refers to a ‘Yonanas Machine’, and the Applicant declares that the goods sold displayed the Trade Mark (as depicted in undated photographs of its goods). The Applicant also exhibits archived web pages of the Australian version of its website, dated 29 and 31 March 2012. Those web pages show the Trade Mark appearing as the letter ‘o’ in the word ‘Yonanas’, and also show images of the Applicant’s machine which bears the Trade Mark solus. I note that one of the pages lists the retail locations from which the goods may be purchased, including Target, Myer, Harvey Norman and Harris Scarfe – indicating that such goods were available on a relatively large commercial scale. The remaining use prior to 21 December 2012 is evidenced only by declared statements: the number of units sold as at October 2012; the list of ‘media mentions’ in Australia dating from ‘5/6 May 2012’; and the statement that the video published on 30 May 2013 was shown on the TVSN shopping network ‘prior to October 2012’. I note that several exhibits demonstrate use after 21 December 2012 (including use upon third parties’ and the Applicant’s own website).
The Opponent contends that the above-described evidence does not demonstrate continuous prior use of the Trade Mark because there are approximately nine months between March and December 2012 wherein the use is supported only by declared statements rather than documentary evidence of sales. I note that the delegate in Challenge Cancer Support Network Inc v Leukemia Foundation (Qld) commented:
I note that the provisions of s 44(4) were applied in the examination stages. At that stage, full force was given to the assertions of [the applicant], and I think that this is generally appropriate in an ex parte situation. However, s 44(4) is a provision that leaves the registrar no discretion once it is triggered. I think that, if the application of that provision is challenged in the opposition forum, the alleged triggering facts should be required to be clearly demonstrated, and this requires a correspondingly high evidentiary threshold. If the applicant, once opposed, intends to rely on this provision, it needs to establish the date of first use positively, by way of facts and not simply by assertion.[11]
[11] [2002] ATMO 29.
Additionally, in respect of what constitutes continuous use Tamberlin J stated in Canon Kabushiki Kaisha v Robert James Brook and Rachel Brook Trading as the Cannon Watch Company[12]:
The use required must be more than that which might suffice to avoid showing abandonment. There must also be a continuous user which is more than an occasional user. In Smith Bartlett and Co v British Pure Oil Grease and Carbide Co Ltd (1934) 51 RPC 157, Maugham J held that use on three occasions in six years was not continuous.
[12] [1996] FCA 1734, [75].
Here, I am satisfied that the evidence as a whole paints a picture of continuous use which commenced prior to the priority date of the Opponent’s Trade Mark. The invoice and archived web pages from March 2012 satisfy me that use of the Trade Mark in Australia commenced as early as that time. The declared number of units sold up to October 2012, together with the evidence that (a) as at March 2012 the goods were available in several major retail chains, (b) as at 2013 and 2014 the goods continued to be promoted upon the Applicant’s website and upon third party websites, and (c) in 2014 the goods were promoted upon the Today show and in 2013 upon the TVSN Shopping Network (although declared to be in 2012), all satisfy me that trade in the goods continued over the relatively short nine month period in question. At the very least such a scenario is, to my mind, more likely than there being an unexplained hiatus in sales, especially where the Applicant’s goods were widely commercially available only shortly beforehand through major retailers in Australia.
I am therefore satisfied that the provisions of s 44(4) apply. Accordingly, the ground under s 44 is fails.
I mention in passing that it is unlikely, on the evidence before me, that the Opponent would have established the ground under s 58A that it so earnestly sought to have included. Its own evidence is largely based upon assertion: its first sale and subsequent trade being supported by declared statements and undated (or hand dated) photographs said to relate to trade in Australia. It is not until September and October 2012, when the Opponent’s founder toured Australia, that substantial, clearly dated evidence of use in Australia is shown. However, unlike in the Applicant’s case, the period of time over which sales would need to be inferred from the totality of the evidence is very substantial - approximately 12 years (as opposed to nine months in the case of the Applicant).
Section 58
Section 58 of the Act provides:
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 well established that in order to succeed under this ground of opposition the Opponent must establish three factors, being the use of another trade mark:
i) that is either identical or substantially so to the Trade Mark[13],
ii) in relation to goods which are ‘the same kind of thing’ as that for which registration is sought[14], and
iii) which occurred prior to the application to register or any actual use of the Trade Mark, whichever is the earlier.[15]
[13] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (‘Carnival’) [1994] FCA 936, [62].
[14] Hick's Trade Mark (1897) 22 VLR 626, 640 (Holroyd J)
[15] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
I have already found, in the discussion relating to s 44, that the trade marks in question here are not substantially identical. It was noted in Carnival Cruise Lines Inc. v Sitmar Cruises Ltd that:
When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice…It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.[16]
[16] Carnival, above n 13.
Given the trade marks here are not substantially identical, the case under s 58 fails at the first hurdle and the ground is not established.
Section 60
Section 60 of the Act provides:
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.
To establish the ground of opposition under section 60 the Opponent must demonstrate that its trade mark had acquired a reputation in Australia by 6 March 2013 such that the use of the Trade Mark in respect of the Applicant’s goods would be likely to deceive or cause confusion.
Reputation in this context refers to the recognition of the Opponent’s Trade Mark by the public generally,[17] although the size and nature of the relevant market must be taken into account.[18] Here, the relevant market is not specialised. It comprises those who may wish to purchase, or who may be interested in, electric food processors – a common household item. It is irrelevant that the Applicant markets its goods as specific-purpose goods (namely, a machine which creates ‘ice cream’ from frozen fruit). Rather, it is the notional scope of the goods which is to be borne in mind and notionally the goods may be used in relation to any foods.[19] Accordingly, I consider the relevant market includes almost all Australian households.
[17] McCormick & Company Inc v McCormick (‘McCormick’) [2000] FCA 1335.
[18] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587.
[19] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, [11].
Reputation amongst that market may be proved by a variety of means[20] and it is common to infer reputation of a trade mark, without any direct evidence of consumer appreciation of it, from a high volume of sales together with substantial advertising expenditures and other promotions.[21]
[20] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159.
[21] McCormick, above n 17.
Much of the Opponent’s evidence of its use and promotion of its trade mark relies upon unsupported declared statements. Photographs of products, their packaging and manuals do little to convey to what extent the public may have been exposed to the Opponent’s Trade Mark. It is declared that the Opponent’s products are supplied to a number of well-known food and drink franchises, however there are no invoices or statements from those franchises to support the Opponent’s claims. Nor is it clear that it is the swirl device, as opposed to the name ‘BlendTec’ (or perhaps ‘K-Tec’, which the Opponent’s Australian distributor uses to refer to the products) that has garnered a reputation amongst those customers. I note the Opponent’s reference to a photograph of a face plate which bears the Opponent’s Trade Mark along with the words 1‑800BLENDTEC and BLENDTEC.COM, and its assertion that such use is use of the Opponent’s Trade Mark in isolation. However I consider that 1‑800BLENDTEC and BLENDTEC.COM suggest trade source equally as much as the logo.
The Opponent’s declaration by Mr Elgaaen provides worldwide annual sales and advertising expenditure for the years 2011 to 2013, which although substantial do not reflect which portion is attributable to Australia, nor are specific submissions attempting to establish spill-over reputation made. The Opponent’s declaration by Mr Kelly declaration provides a single total sales figure for sales in Australia to commercial customers between 30 July 2009 and 31 March 2013. That figure is not insignificant, although it is one that I would characterise as relatively modest given the unit price of the Opponent’s goods. Similarly, Mr Kelly provides single total figures for: (a) sales to domestic retail customers in Australia between 1 July 2009 and 31 March 2013; and (b) ‘providing service and repair activities’ on behalf of the Opponent; which are both likewise not insignificant but relatively modest.
There is limited information about the marketing activities undertaken by the Opponent during its period of claimed use in Australia since 2001. The Opponent’s Australian distributor declares that it attended food fairs in Brisbane, Melbourne and Adelaide. However, other than photographs of a banner depicting the name BLENDTEC together with the Opponent’s Trade Mark, which are notated ‘FFS’ Trade Show Gear for Fine Food Fair in Brisbane, Sydney, Melbourne & Adelaide – Year 2005/2006’, there is no information about that exhibition, such as number of attendees, number of samples or brochures distributed, sales generated from exhibiting at the fair, and so forth. Similarly, photographs of ‘Marketing/Supporting Books & Manuals’ do not provide information as to how many amongst the relevant market may have actually been exposed to these marketing materials.
Other than a single magazine advertisement in November 2011, it is not until the latter half of 2012, when the Opponent’s founder toured Australia that substantial, clearly dated evidence of use of the Opponent’s Trade Mark in Australia is shown. The Opponent had created a highly successful ‘viral’ video campaign entitled Will it Blend?, discussed above. The name BlendTec and the images of the Opponent’s Trade Mark are visible in the background of those videos. In the latter half of 2012, a number of magazines, radio shows, television shows and blogs referred to these videos and to the Opponent’s founder who was touring Australia (or was about to tour). Some reputation might be inferred from consumers having viewed the videos and/or the still shots of those videos published in 3rd party articles. However, given the relatively short period of time (between September and October 2012 and the priority date in March 2013) and the fact that the Opponent’s Trade Mark is not the only, or even primary, trade mark referred to in those videos and articles, I do not consider such evidence sufficient to satisfy me that the Opponent’s Trade Mark had a acquired a reputation at the relevant date.
Given I am not satisfied that the Opponent has established a reputation in its trade mark (as opposed to the names BlendTec or Will it Blend?), the ground under s 60 fails.
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 the Australian Consumer Law (‘ACL’) in Schedule 2 of the Competition and Consumer Act 2010 that the Opponent contends is the basis for the ground for rejection. Section 18 of that Act provides that a person must not, in trade or commerce, engage in conduct that is misleading or deceptive or likely to mislead or deceive.
Section 42(b) of the Act requires that the Registrar’s delegate be satisfied that the Trade Mark would (not ‘could’) be contrary to law. Section 18 of the ACL stipulates that the conduct complained of ‘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 ACL, I am not satisfied that the Trade Mark would mislead or deceive under the higher threshold of the ACL.
Accordingly the ground under s 42(b) of the Act fails.
Decision and costs
Subsection 55(1) of the Act provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, 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 Opponent has established the ground under s 44(1) however the Applicant has satisfied me that the provisions of s 44(4) apply.
Accordingly trade mark application 1544596 may proceed to registration one month from the date of this decision with an entry in the register in the form of an endorsement that reads ‘Provisions of subsection 44(4) and/or Reg 4.15(5) applied’ (being the standard wording to reflect that an application has been accepted on account of prior continuous use). 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 and that the disposition of the application should be in accordance with the Court’s order or direction.
Costs normally follow the event, and as there is no apparent reason to depart from the principle I award costs against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.
Nicole Worth
Hearing Officer
Trade Marks Hearings
07 September 2016
13
0