Boost Juice Holdings Pty Ltd v Boost Foods Pty Ltd

[2010] ATMO 93

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 application under section 92 of the Act by Boost Foods Pty Ltd to remove trade mark number 1099756 (5, 29, 30, 32) - Boost Food - in the name of Boost Juice Holdings Pty Ltd

Delegate:

Claudia Murray

Representation:

Opponent: Mr Ben Hamilton, partner, of Hall & Wilcox Lawyers, Melbourne.

Applicant: Not represented at the hearing.

Decision:

2010 ATMO 93

Section 92 removal opposition – paragraph 92(4)(a) rebutted – trade mark to remain on the Register – costs awarded against removal applicant.

Background

1.     Trade mark number 1099756 is registered for the plain words trade mark:

Boost Food

2.     The registration is in Classes 5, 29, 30 and 32 of the International (Nice) Classification of Goods and Services, for:

Class 5: Health food supplements sold in take home containers and added to drinks, sold in retail outlets

Class 29: Salads, including prepared salads; fruit and vegetables in this class; fruit and/or vegetable based products in this class; meat, fish, poultry and game; soups and soup preparations

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

Class 32: Beverages in this class; mineral aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices including fruit based nutritional drinks and juices; vegetable flavoured drinks and vegetable juices including vegetable based nutritional drinks and juices; fruit flavoured drinks; vegetable flavoured drinks; ades and punches; sports drinks; bottled drinking water; a blended mixture of fresh fruit, fruit juice, sorbet and ice, in a variety of flavors; a blended mixture of fresh vegetables, vegetable juice, sorbet and ice, in a variety of flavours.

3.     The trade mark was registered from 20 February 2006 and the trade mark owner is Boost Juice Holdings Pty Ltd.

Application for removal

4. Boost Foods Pty Ltd (‘the removal applicant’), made application under section 92 of the Trade Marks Act 1995 (‘the Act’), for removal of the trade mark from the Register for non-use, on 19 November 2008. The removal application sought removal for all of the goods covered by the subject registration and cited grounds for removal under paragraph 92(4)(a) of the Act, which provides:

(a)      that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)           to use the trade mark in Australia; or

(ii)          to authorise the use of the trade mark in Australia; or

(iii)         to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

(iv)        has not used the trade mark in Australia; or

(v)         has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed

Note 1: For file and month see section 6.

Note 2: If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

Notice of opposition

5.     Notice of opposition to the removal application was filed by the trade mark owner, Boost Juice Holdings Pty Ltd (‘the opponent’) on 12 February 2009.

Evidence

6.     The evidence in relation to this removal opposition comprises:

Evidence in Support

ØStatutory declaration of Janine Suzanne Allis, with Exhibits JSA-1 to JSA-61, dated 8 May 2009 (‘First Allis declaration’).

Evidence in Answer

ØStatutory declaration of Julie Anne-Marie Van Epps, with Exhibit JAVE1, dated 27 July 2009.

ØStatutory declaration of Anthony James Bennett, with Exhibits AJB1 to AJB3, dated 29 July 2009.

ØStatutory declaration of Natalie McDonnell, with Exhibits NMD1 to NMD7, dated 29 July 2009.

Evidence in Reply

ØStatutory declaration of Janine Suzanne Allis, with Exhibits JSA-1 to JSA-30, dated 28 October 2009 (‘Second Allis declaration’).

7.     Ms Allis is the opponent’s founder and Managing Director. Her first declaration gives some background to the development of her company. She says:

As a consumer, I struggled to find anything healthy to eat and drink when I was short of time. In particular, it was difficult to find something quick and healthy for my sons. In 1998, while visiting the United States, I researched the juice and smoothie market. Upon my return, I decided to create a healthy and nutritious fast food alternative in Australia…

Boost Juice opened its first retail store trading under the name 'BOOST juice bars' in Adelaide in King William Street on 17 April 2000. This store predominately sold fresh juices and smoothies but also health food such as soups and wraps…

The products that are sold in these Boost Juice Bars include smoothies, fresh fruit and yoghurt based beverages, many of which include ice and frozen yoghurt and vitamin, mineral or herbal supplements. In addition to these beverages, Boost Juice Bars have sold and continue to sell fresh healthy fast food, including wraps, yoghurt covered fruit balls, fruit salad and banana bread…

Boost's brand strategy has evolved since its conception in 2000. Over the years, as a result of brand growth there has been less emphasis on the words 'juice bar'. Since about 2003, 'Boost' was promoted as the umbrella brand or 'house mark' for our various products and services. This paved the way for us to licence our Boost trade marks to other companies to sell their products under the name 'Boost' in supermarkets as the Licensed Products. Our ultimate goal has been to expand our range to incorporate a range of healthy food items to coincide with our smoothie range and to continue to meet the growing demand for a nutritious fast food alternative both on a domestic and global front.[1]

[1] First Allis Declaration, paragraphs 2.1, 2.4, 2.8, 4.5.

8.     Ms Van Eps is the Director of the removal applicant. She declares that the her company was incorporated on 16 March 2005 and that, since incorporation, it has used the trade mark BOOST FOODS ‘on a continuous basis as the main mark or brand in relation to its business and to promote its products’. The single exhibit to her declaration, JAVE1, is a copy of a ‘Without Prejudice’ letter addressed to her from the opponent, dated 21 February 2006 and headed: ‘Possible infringing and misleading use of the BOOST trade mark’. The letter indicates the opponent’s objection to the registration of the removal applicant’s company name, its intention to oppose the company’s pending applications for four ‘Baby Boost’ trade marks (including trade mark number 1095647 which also contains the words BOOST FOODS and which I will mention again later), and to take other action as necessary to protect its trade mark rights.

9.     A copy of the ‘home page’ of the removal applicant’s website has been annexed to Ms Allis’ second declaration.[2] The page advertises a range of ‘Boost’ food products: ‘Baby Boost’, ‘Boost Kids’, ‘Fruit Boost’ and ‘Nutri Boost’. Further perusal of the website reveals that the evolution of the removal applicant’s company appears to have had many similarities with that of the opponent. Ms Van Eps’ inspiration for the ‘Baby Boost’ concept apparently came from her noticing a gap in the market, after she had fruitlessly searched in supermarkets for freshly-prepared baby food suitable for her son.[3] It is easy to envisage how both parties may have independently arrived at their chosen variations of a ‘boost’ trade mark, given the positive connotations of the word, especially in relation to fresh as opposed to processed foods. Ms Allis describes her choice thus:

I chose the name 'Boost' because, in my view, it has an uplifting meaning. The Boost name goes beyond the product. People don't say 'I want a smoothie/juice/booster' etc, they say I want a "Boost". The Boost name is an action word that epitomises the brand and the products: ie "gotta get a Boost".[4]

[2] Second Allis declaration, Exhibit JSA-3

[3] ‘Our Story’.

[4] First Allis declaration, para 4.2

Hearing

10.   The removal applicant requested a hearing at the completion of the evidence stages, and this was held in Canberra before me, as delegate of the Registrar, on 11 August 2010. Mr Ben Hamilton, partner, of Hall & Wilcox Lawyers, Melbourne, provided written submissions and represented the opponent by telephone. Having requested to be heard, it transpired that the removal applicant was not represented on the day. Its legal representatives advised by email after close of business on the eve of the hearing that Administrators had been appointed to the removal applicant, and that the Administrators did not propose to take part in the hearing or to file written submissions.

Discussion

Burden on opponent to rebut grounds of removal

11. The provisions of section 100 place the burden squarely upon an opponent to rebut a removal applicant’s allegations under paragraph 92(4)(a) of the Act. Section 100 relevantly provides:

(1)      In any proceedings relating to an opposed application, it is for the opponent to rebut:

(a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)           to use the trade mark in Australia; or

(ii)          to authorise the use of the trade mark in Australia; or

(iii)         to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or

(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services;…

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

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

Intention to use and use in good faith

12. The majority of removal applications are pursued under paragraph 92(4)(b) of the Act, which creates a relevant non-use period of 3 years ending a month before the non-use application was filed. By virtue of subsection 93(2), such an action may not be brought before a period of 5 years has passed from the filing date of the application for the registration of the trade mark. The emphasis in a paragraph 92(4)(b) opposition is squarely upon determining the true extent and nature of use by a trade mark owner (who is usually also the opponent) of what, by that time, should be a trade mark registration underpinned by clearly established use. Ms Allis indicates in her second declaration that her business planning for the Boost Food trade mark has in fact taken into account a possibility of attack on that ground. She comments:

In appreciation of the fact that [the opponent has] a period of 5 (five) years in which to use the Boost Food mark from the date of filing, [the opponent has] adopted a strategic implementation strategy associated with the use of the Boost Food mark within our Boost Juice Bar Outlets.[5]

[5] Second Allis declaration at para 6.1

13. However, the emphasis and timing relevant to paragraph 92(4)(a), the ground for removal at issue here, is quite different. The opponent bears the onus of demonstrating either that it had an intention at the time of filing to use the trade mark on the goods specified, or that it has used the trade mark in good faith in the period up to one month prior to the date the removal application was filed. A removal application based on this ground may be made at any time after a trade mark application is filed. Its unpopularity with removal applicants is testament to their quite limited prospects for success under it, should the application be opposed.[6]

[6] Health World Limited v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 at paras 161, 235

14.   Some of the matters covered in the evidence and Mr Hamilton’s submissions have ultimately turned out to be ‘red herrings’ for the purposes of this determination. The most significant of these relates to the deletion (during examination) from the opponent’s statement of goods of ‘food for babies and infants, including pureed vegetables and fruits’. This deletion was made in order for the opponent’s trade mark application to be accepted for registration in the face of three earlier filed trade marks raised as citations by the examiner. Julie van Eps owned two of these citations, trade mark numbers 1034117 and 1095647. All three citations eventually lapsed. Relevant details of Ms van Eps’ trade marks are:

TM No.	Priority Date	Trade Mark	Goods
1034117	13 Dec 04	BABY’S BOOST	Class 5: Food for babies and infants, including pureed vegetables and fruits excluding cereal based products
1095647	23 Jan 06	Class 5: Food for babies and infants

15.   The opponent was concerned that the amendment to its goods may have impugned its claim that it had intended in good faith at the time of filing to use its trade mark on all the goods originally applied for. It also sought to address the inference to be drawn from the evidence that it was already aware of the removal applicant’s presence in the marketplace at the time it filed its application, having sent the letter of demand to Ms van Eps the very next day. Mr Hamilton made the following submissions on this point:

It is submitted that it would be a curious result if amending an application to register a trade mark to remove some goods or services in response to an adverse report from IP Australia would render either a part or the whole of an application (once registered) vulnerable to be removed under section 92(4)(a).

In filing a removal application under section 92(4)(a) of the TMA, the Applicant seems to be suggesting that deleting goods from a pending application during the course of examination should be construed as demonstrating a lack of good faith intention to use the mark at the time of filing…

The Applicant, by its own admission was, as of 19 May 2008, limited to selling baby food (see paragraph 13(b) of the letter exhibited as JSA-2 in the Opponent's evidence in reply)…

There is nothing in the Applicant's evidence in answer, except for an unsubstantiated and vague statement that: 'Since incorporation, the Applicant has used the Trade Mark BOOSTFOODS on a continuous basis as the main brand in relation to its business and to promote its products' (Paragraph 3 of Ms Van Eps' declaration) to suggest that the Applicant had:

(i) any common laws rights in the words BOOST FOOD(S);

(ii) prior use of the words BOOST FOOD(S) in respect of the goods specified in the Opponent's Mark (or the Applicant's Mark); or

(iii) even sold products that are designated in the Opponent's Mark (as registered)…

Even if the Applicant had such common law rights, this would not be enough to sustain a removal action under section 92(4)(a) (Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd).

16. I agree with Mr Hamilton’s interpretation of the relevant issues here. The expression ‘good faith’ in section 92 must be understood in terms of either an intention regarding, or actual ‘genuine commercial use’ as opposed to token use, leaving aside what the courts have found to be the irrelevant considerations of ‘elements of honesty or subjective good intention’.[7] Notwithstanding any of the surrounding circumstances, I have a declaration by Ms Allis which clearly states that, at the time of filing, her company intended to use the trade mark on all the goods specified in the application. The removal applicant has not entered anything into evidence which serves to negate that declared intention.[8]

[7] Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd (2009) 79 IPR 437

[8] Compare, for example, Health World Limited v Shin-Sun Australia Pty Ltd ((2008) op. cit.)

17. Further, subsection 100(2) envisages that an opponent will be able to rebut a removal applicant’s allegations under paragraph 92(4)(a) by establishing use in good faith on the relevant goods of the trade mark, ‘or the trade mark with additions or alterations not substantially affecting its identity’. The removal applicant’s evidence attempts to lead the reader to the conclusion that the opponent has used the trade marks BOOST and BOOST JUICE, but not Boost Food in relation to some of the goods specified, such as smoothies, soups and wraps. However, I consider that in relation to food products, use of BOOST solus represents use of the subject trade mark with an alteration that does not substantially affect its identity.[9] The evidence of both parties shows such use of BOOST by the opponent on many food items prior to the relevant date of 19 October 2008. Finally, it is also worth mentioning that the opponent, in accordance with its previously quoted understanding that it had five years to plan its use of the trade mark, has also provided detailed evidence of those plans, and demonstrated use of Boost Food dating from July 2009.

[9] PB Foods Ltd. v. Malanda Dairyfoods Ltd (1999) 47 IPR 47.

Decision

18.   The opponent has met its burden to rebut the removal applicant’s allegations. It has established that, at the time of filing, it had a genuine intention to use the Boost Food trade mark on all the goods specified, and this has been borne out by its demonstrated use of the substantially identical trade mark BOOST in relation to many of the goods specified. Partial removal for the remaining goods upon which the opponent has not demonstrated use would only be appropriate if it had also been unable to establish its intention to use on those goods at the time of filing.[10] The opposition is established in its entirety and I refuse to remove trade mark number 1099756 from the Register.

[10] Health World Limited v Shin-Sun Australia Pty Ltd, ((2008) op. cit. paras 231-236), John Patrick Sheils v LLeyton Hewitt Marketing PTY LTD [2010] ATMO 41, paras 20-22.

Costs

19.   The opponent has requested its costs in this removal opposition matter. It is usual for costs to follow the event and as the successful party the opponent is entitled to its costs. Accordingly, I award costs against the removal applicant as per Schedule 8 of the Trade Marks Regulations 1995.

Claudia Murray

Hearing Officer

Trade Marks Hearings

23 September 2010