Boost Juice Holdings Pty Ltd v Boost Foods Holdings Pty Ltd

[2011] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by BOOST JUICE HOLDINGS PTY LTD to registration of trade mark application 1114329 (5, 29, 30, 32) - BOOST FOODS - filed in the name of BOOST FOODS HOLDINGS PTY LTD.

Delegate:	Bianca Irgang
Representation:	Opponent: Mr Ed Heerey of Counsel, instructed by Hall and Wilcox Lawyers Applicant: Not present at the hearing.
Decision:	2011 ATMO 100 s. 52 opposition: sections 42, 44, 58 and 60 pressed – s 60 ground of opposition established for all goods and services - trade marks substantially identical – use likely to deceive or cause confusion - no requirement to consider other grounds - costs awarded against the applicant.

Background

1. Boost Foods Holdings Pty Ltd (‘the applicant’) filed application number 1114329 on 18 May 2006 in classes 5, 29, 30 and 32 of the International Classification of Goods and Services. Details of the application are set out below.

   Trade mark:  BOOST FOODS

   Trade mark application:        1114329

   Filing Date:  18 May 2006

   Specification:  Class 5: Food for infants and toddlers including vegetable meals including meat, chopped and pureed fruit, cereals, dairy foods and desserts including fruit juice; juice

   
   Class 29:Salads, including prepared salads; fruit and vegetables in this class; fruit and/or vegetable based products; meat, fish, poultry and game; meat, jellies, jams, compotes; soups and soup preparations; beverages in this class; ingredients in this class for making beverages; dairy products including milk, dairy beverages, flavoured milk beverages; dairy based custards and dairy based desserts; yoghurt; yoghurt beverages including beverages based on frozen yoghurt, flavoured yoghurt beverages; yoghurt based desserts

   
   Class 30: Beverages in this class; tea; iced tea, tea based beverages, tea flavoured beverages; health food in this class; confectionary including fruit bars

   
   Class 32:Beverages including mineral aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices including fruit based nutritional drinks and juices; drinks and juices; fruit flavoured drinks; sports drinks; bottled drinking water

   Endorsements:  Provisions of paragraph 44(3)(a) applied. Provisions of paragraph 44(3)(b) applied. Provisions of paragraph 44(4) applied.

2. On 10 September 2006, a ground for rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) was raised against the application during examination, the issue being the presence on the Register of 26 earlier trade mark entries for the word BOOST or deceptively similar trade marks containing the word BOOST.

3. The applicant provided evidence and the examiner accepted the trade mark application under the provisions of sections 44(3)(a), 44(3)(b) and 44(4). The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks dated 31 January 2008.

4. Boost Juice Holdings Pty Ltd (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 29 April 2008. Thereafter the parties served and filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

5. I heard the matter in Melbourne as a delegate of the Registrar of Trade Marks on 3 May 2011. Mr Ed Heerey of Counsel instructed by Hall and Wilcox Lawyers represented the opponent. The applicant did not attend the hearing or provide written submissions.

   Grounds of Opposition

6. The Notice nominated most of the grounds of opposition available under the Act. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27

7. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on those grounds under sections 42, 44, 58 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

8. Therefore, the grounds remaining for my consideration are those under sections 42, 44, 58 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services specification, there is no requirement for any of the other grounds of opposition to be considered.

   Evidence

9. The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Sharon Behen	Account Director at Spark Communications	29 January 2009	-
Simon Hammond	Founder and CEO of Belong Pty Ltd	29 January 2009	SH-1 to SH-3
Amy Temple Roy	General Counsel and Company Secretary of Boost Juice Pty Ltd	29 January 2009	ATR-1 to ATR-14
Janine Suzanne Allis[3]	Founder and Managing Director of Boost Juice Pty Ltd	29 January 2009	JSA-1 to JSA-61
Evidence in Answer
Julie Anne-Marie Van Eps	Director of Boost Foods Pty Ltd	29 October 2009	JAVE1
Evidence in Reply
Janine Suzanne Allis[4]	Founder and Managing Director of Boost Juice Pty Ltd	25 October 2010	JA-1 to JA-12

[3] For ease of reference throughout the decision this declaration will be referred to as ‘Allis 1’.

[4] For ease of reference throughout the decision this declaration will be referred to as ‘Allis 2’.

Opponent’s Evidence

1. In Allis 1, Ms Allis states that the opponent commenced operating its first store in Australia on 17 April 2000 selling fresh juices, smoothies and health foods such as soups and wraps under its BOOST trade mark. In 2001 the opponent commenced franchising which assisted the opponent in expanding nationally very quickly with its BOOST juice bars. By 2006 the opponent had approximately 149 franchised stores open operating under its BOOST trade mark around Australia (Exhibit JSA-5).

2. Ms Allis also declares that the opponent has generated significant and growing revenue from the sale of its goods bearing its BOOST trade mark through the years 2000 until the present. The advertising expenditure has also been significant and increasing since 2001. The figures which are provided are substantial (Exhibits JS-28 to JSA-35, JSA-60). The opponent’s branding strategy has included the obtaining of significant trade mark protection which has involved securing trade mark registrations[5] and the adoption of uniform signage and branding for the opponent’s stores and franchised outlets (Exhibits JSA-3, JSA-4, JSA-6, JSA-8, JSA-16, JSA-20 to JSA-23).

   [5] Hereafter referred to as the ‘BOOST trade marks’.

3. It is also clear from the opponent’s evidence that food items bearing the BOOST trade marks have been sold by it through retail outlets other than the opponent’s stores or franchised outlets (Exhibit JSA-9, JSA-14, JSA-15, JSA-24, JSA-27).  The opponent has also demonstrated a considerable reputation in its BOOST trade mark before the priority date of the opposed trade mark application. In May 2005, TNS Consultants were commissioned to conduct independent surveys into Boost Juice. The surveys concluded that the Boost Group Juice brand was well known, achieving a brand awareness in Australia of 94% (Exhibit JSA-59).

4. The statutory declaration of Amy Temple Roy (‘the Roy declaration’) corroborates the opponent’s efforts in expanding its business and promoting and protecting the BOOST brand. The Roy declaration also contains documents relating to the dealings that the opponent and applicant have had in the past.

   Applicant’s  Evidence

5. Ms Van Eps states that she devised the BOOST FOODS trade mark in or about October 2004 and that the applicant was incorporated in March 2005. Exhibit JAVE1 contains a copy of Ms Van Eps’s original statutory declaration (‘the Van Eps 2 declaration’) which was filed with the Office in order to address the grounds for rejection under section 44 during the examination of the opposed trade mark.

6. Ms Van Eps states that in late 2004 – 2005 she applied for several trade marks to use on a range of fresh baby and infant foods. In October 2004 Ms Van Eps chose the name Boost Foods Pty Ltd for the corporate entity by which the Boost Foods range of foods would be manufactured and sold. Ms Van Eps states that she chose the name because she believed that it was distinctive and conveyed the essential message that the baby and infant foods which it was going to sell would allow babies to ‘leap’ ahead.

7. Ms Van Eps attests that since March 2005 the applicant has been using the trade mark BOOST FOODS on its goods. The exhibits accompanying the Van Eps declaration demonstrate that from at least May 2006 the applicant has been using the words BOOST FOODS on its website and the packaging of its baby/infant food. However, the evidence also demonstrates a number of instances where BOOST FOODS is not being used as a trade mark but rather as a business name.

8. The annual turnover figures from 2005 for sales of the applicant’s goods bearing the BOOST FOODS trade mark demonstrates that the applicant’s sales are increasing over the years (Exhibit JAV-5). The sales figures are moderately high but the figures relating to marketing and advertising expenditure are relatively low. 

   Discussion

   Section 60 - Reputation in Australia

9. At the priority date of the opposed application section 60 provided:

   The registration of a trade mark in respect of particular goods or services may

   be opposed on the ground that:

   (a)       it is substantially identical with, or deceptively similar to, a

   trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

10. In order to establish this ground the opponent must establish to my satisfaction the existence of a trade mark which is:

    • either substantially identical with or deceptively similar to the opposed trade mark and

    ·which, before the priority date, had acquired a reputation in Australia such that

    ·use of the opposed trade mark would lead to deception or confusion.

11. The application was filed on 18 May 2006, prior to the amendment of section 60 which took effect from 23 October 2006. The requirements of the section prior to the amendment are that the trade marks under consideration be substantially identical or deceptively similar. Therefore, it needs to be considered whether the trade marks in question are either “substantially identical” or “deceptively similar” to each other, as required by the section. The relevant principles are often quoted, familiar and well-established and it is neither necessary nor appropriate to restate them all here[6]. However, when comparing the two trade marks I draw particular guidance from Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 where Windeyer J said at paragraph 12:

    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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

    [6] Those principles are enunciated in the following authorities: In the matter of an Application by the Pianotist Company Limited for the Registration of a Trade Mark (1906) 23 RPC 774 at 777 (per Justice Parker); Australian Woollen Mills Limited v F.S. Walton & Co.Limited (1937) 58 CLR 641 at 658 (per Justices Dixon and McTiernan); Application by Smith Hayden & Co.Limited (1946) 63 RPC 97 at 101 (per Justice Evershed); Cooper Engineering Co. Pty. Limited v Sigmumd Pumps Limited (1952) 86 CLR 536 at 538; Southern Cross Refrigerating Co. v Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 594-5 and 607; Berlei Hestia Industries Limited v The Bali Company Inc. (1973) 129 CLR 353; and Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson).

12. A consideration of the applicant’s trade mark shows that it consists of the two words BOOST FOODS. The opponent has used its BOOST trade mark and also has a number of trade mark registrations which contain the word BOOST or which consist of the word BOOST solus. In comparing the opponent’s BOOST trade mark with the opposed BOOST FOODS trade mark the common element of both marks is the word BOOST. I note the addition of the descriptive word FOODS to the applicant’s trade mark but this element is a minor variation and not sufficient to distinguish the trade marks from each other. I must consider both the visual and verbal uses of the respective trade marks and in doing so I note that in a verbal sense both may be used as simply BOOST. I consider the applicant’s BOOST FOODS trade mark to be substantially identical to the opponent’s BOOST trade mark. Therefore, the opponent has satisfied the first test in establishing the section 60 ground of opposition.

13. I must now consider whether the opponent has demonstrated that a reputation existed in Australia before the priority date of the opposed trade mark such that use of the opposed trade mark would be likely to deceive or cause confusion. Reputation must be established as a matter of fact.[7]  While it is not necessary to prove reputation by direct evidence of consumer appreciation it is commonplace to infer reputation from a high volume of sales together with substantial advertising and other promotions.[8]

    [7] Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 23 FCR 302

    [8] McCormick & Co Inc v McCormick (2000) 51 IPR 102, at 129.

14. The opponent’s evidence shows that it has generated substantial and growing revenue for sale of its goods from the years 2000 until present. The advertising expenditure has also been significant and it has increased markedly since 2001 until the priority date. It is also clear that the opponent has pursued a widespread marketing strategy which has reached a significant portion of the Australian public before the priority date of the opposed application.

15. As noted earlier (at paragraph 12 above), the surveys conducted by TNS Consultants concluded that the Boost Group Juice brand was well known, achieving a brand awareness in Australia of 94% (Exhibit JSA-59). When taken together with the fact that the opponent had approximately 149 franchised stores operating at that point, I am satisfied that that the opponent has established the existence of a significant reputation in Australia for its BOOST trade marks before the priority date of the opposed trade mark. However it needs to be determined if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion.

16. In my consideration of the likelihood of confusion or deception, I am not to be influenced by the evidence that the applicant uses its trade mark on goods which may be different from the opponent’s goods. I am to consider any of the uses of the opposed trade mark that would be within the scope of the registration which is sought, should it be granted in the terms presently sought. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[9], based on the proper allowance for the possibility of confusion of one trade mark for the other at a time when only the other and competing trade mark is present. As stated by Branson J in Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 45 IPR 411; (1999) AIPC 91-499 at paragraph 88:

    The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

    [9] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

17. Ms Van Eps has stated that she is unaware of any instances of confusion ever having taken place between the opponent’s goods and the applicant’s goods. However, I note that exhibit ATR-7 accompanying the Roy declaration constitutes an admission that the opponent has already dealt with a situation of confusion between the applicant’s goods and its own products when it responded to a complaint.

18. Overall I consider that, given the significant reputation evidenced by the opponent in its BOOST trade mark, a significant number of consumers would at the very least experience a reasonable doubt[10] as to the existence of some sort of connection between the opponent’s trade mark and the applicant’s BOOST FOODS trade mark if it were used to the extent of all of the goods and services enlisted in the opposed application. I have noted that it appears that there is already some confusion in the marketplace between the opponent’s BOOST goods and those of the applicant.

    [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

19. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

    Decision

20. Section 55 of the Act provides:

    Decision

    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.

21. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark application 1114329.

    Costs

22. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    12 September 2011