Brenda Robinson v Nature'S Gift Australia P Ty Ltd
[2014] ATMO 96
•9 October 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Brenda Robinson to registration of trade mark application 1522209(31) - NATURE'S GIFT SNAP BAR - filed in the name of Nature's Gift Australia Pty Ltd.
| Delegate: | Iain Campbell Thompson |
| Representation: | Opponent: Brenda Robinson Applicant: Siobhan Ryan of Counsel instructed by Sean Mullins of Studio Legal |
| Decision: | 2014 ATMO 96 s52 opposition: s44, extent of notional use; use of Trade Mark likely to confuse or deceive; registration refused |
Background
In this matter Nature's Gift Australia Pty Ltd (‘the Applicant’) of Moorabbin has applied (‘the Application’) under the Trade Marks Act 1995 (‘the Act’) to register the trade mark detailed below:
Application No: 1522209
Priority Date: 2 November 2012
Goods: Class 31: Pet food
(‘the Goods’)
Trade Mark: NATURE'S GIFT SNAP BAR
(‘the Trade Mark’)
The Trade Mark was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 28 February 2013.
On 30 April 2013 Ms Brenda Robinson (‘the Opponent’) of Patterson Lakes filed Notice of Intention to Oppose and she filed her amended Statement of Grounds and Particulars on 20 May 2013. These include the section 44 ground under which I will decide this matter.
On 10 July 2013, the Applicant filed Notice of Intention to Defend.
Thereafter, the parties have filed evidence in accordance with the Trade Marks Regulations 1995 as further detailed below.
The matter duly came before me (as a delegate of the Registrar of Trade Marks) to be heard in Melbourne on 5 September 2014. The Opponent appeared on her own behalf. Siobhan Ryan of Counsel instructed by Sean Mullins of Studio Legal appeared for the Applicant.
Onus and Relevant Date
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].
The relevant date at which the grounds must be considered is the filing date of the opposed application which is here the same as the priority date for the purposes of section 44.[2]
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.
Evidence
The evidence in this matter comprises the following declarations:
In Support
Brenda Robinson made on 7 October 2013
In Answer
Paul Holt made on 15 January 2014
In Reply
Brenda Robinson made on 7 March 2014
Both parties make snack bars for dogs. These canine snack bars include the type that portions or pieces can be broken off each bar and fed to dogs as treats or rewards.
As regards the ground under section 44 of the Act, Ms Robinson relies on the following trade mark registrations:
Registration No: 766848
Priority Date: 8 July 1998
Goods: Class 31: Foodstuff for animals made wholly or predominantly of liver
Trade Mark: LIVER SNAPS
Registration No: 820796
Priority Date: 21 January 2000
Goods: Class 31: Foodstuffs for animals
Trade Mark: SNAPS
Registration No: 1055228
Priority Date: 14 May 2005
Goods:Class 31: Living animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, dehydrated pet foods and treats; nutritional supplements for animals
Trade Mark: SNAP N SHARE
Registration No: 1055258
Priority Date: 14 May 2005
Goods:Class 31: Living animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals; dehydrated pet foods and treats; nutritional supplements for animals
Trade Mark: NATURES PET SNAP N SHARE
Registration No: 1174597
Priority Date: 6 May 2007
Goods:Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; living animals; seeds, natural plants and flowers; foodstuffs for animals including treats, dehydrated treats and nutritional products; malt; none of the foregoing being fresh fruit or vegetables
Trade Mark: SNAPZ
Registration No: 1372844
Priority Date: 19 July 2010
Goods:Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, treats for animals including dried foods and dietary supplements, malt
Trade Mark: LIVA SNAPS
I will refer to the above collectively as ‘the Opponent’s trade marks’.
Both the Opponent and the Applicant have filed various materials in support of their respective positions and it is convenient to discuss these under the heading Section 44.
Section 44
Subsection 44(1) provides:
44Identical etc. trade marks
(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.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
In the circumstances of this matter, to make out this ground, the Opponent must establish all of the following to my satisfaction: the existence of a registered or pending trade mark –
1. which has an earlier priority date than that of the Trade Mark;
2. is owned by a person other than the Applicant;
3. the goods of that earlier trade mark are similar goods to those of the later application; and,
4. the trade marks in question are either substantially identical or deceptively similar.
The first three of the above criteria are obviously established: the trade marks on which the Opponent relies have earlier priority dates than the of the Trade Mark, they are owned by a person other than the Applicant and the goods of the Opponent’s trade marks encompass the Goods.
The Opponent does not argue that the Trade Mark is substantially identical to any of the Opponent’s trade marks. Accordingly, the sole issue for my determination is whether the trade marks of the parties are deceptively similar.
In considering whether the Trade Mark is deceptively similar to any or all of the Opponent’s trade marks, some general principles apply. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 Windeyer J said at [13]:
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 television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.
Deceptive similarity is defined by section 10 of the Act:
10Definition of deceptively similar
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.
The assessment of the likelihood of deception or confusion is informed by the factors discussed in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 (‘Woolworths’) by French J at [50]:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
As an adjunct to Mason J’s observation in the preceding subparagraph, I am to consider the notional use (that is, the fair and normal use) of the trade marks in question. In Woolworths French J said at [88]:
It is not in dispute on this appeal that in applying the test provided for by s 44(2) of the Act, consideration is not to be given to the actual use made by the owners of the trade mark cited against the applicant for registration. The test to be applied is that proposed by Evershed J in Re An Application bySmith 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.
Accordingly, because all of the trade marks in suit are rendered in ordinary typeface, I am to consider deceptive similarity in view of how the parties might fairly and normally render these trade marks within the scopes of the registrations or the Application.
In considering the range of fair and normal uses of a trade mark, one is considering those uses in which the identity of the trade mark is not altered. One is, in effect, considering the possible uses of the trade mark with alterations or additions which do not substantially affect its identity. Such considerations are circumscribed, in my consideration, by the same principles as those applied in relation to subsection 7(1) of the Act:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
Accordingly, the factors that apply are those discussed in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 at [67]-[69] (‘Gallo’) and PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; [1999] AIPC 40,117; (1999) 47 IPR 47 at [22] to [39] (‘Malanda’). The notional (or fair and normal) use of the trade marks in suit may extend to alterations or additions of the type referred to in Gallo and Malanda and include alterations or additions such as statements as to the nature of the goods, differences in typeface, the relative sizes of fonts and words in composite trade marks, the addition or absence of pictorial devices depicting the nature of the goods or illustrating a word in the trade mark and the inclusion or absence of other material which does not substantially affect their identity. Such material may or may not be otherwise inherently adapted to distinguish the goods or services: see Gallo and compare with Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506 at 536 at [110] where to quote the High Court in Gallo, “… the trade mark for the word ‘Colorado’ had been used in conjunction with a mountain peak device, which reinforced the geographical connotation of the word. Allsop J found that the mark used was a composite mark and that the mountain peak device was not a mere descriptor but a distinguishing feature.”
The above approach to the consideration of notional use is particularly apposite where there is evidence of the use of one or more of the trade marks under consideration.
Finally, as a general principle, the trade marks are to be compared within the context of the relevant market: Parker J, said in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 at 777:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.
The Opponent is the only person who has Australian trade marks registrations which consist of, or contain, the words ‘snap’ or ‘snaps’.
The evidence shows that the trade mark NATURE’S GIFT is a house mark of the Applicant’s and is registered in various permutations as below:
Registration No: 1445441
Priority Date: 2 September 2011
Goods: Class 31: Pet Food
Trade Mark: Nature’s Gift – The Healthy Petfood Co.
Registration No: 1522208
Priority Date: 2 November 2012
Goods: Class 31: Pet Food
Trade Mark: Nature’s Gift Since 1994
Registration No: 1545413
Priority Date: 19 March 2013
Goods: Class 31: Pet food
Trade Mark:
Amongst the material submitted by both parties is evidence of how the Trade Mark is being used. The Applicant submitted copies of website material which shows that the Trade Mark is being used by the Applicant as shown below:
(‘the packaging example’)
Product which more clearly shows the packaging example (as above) was handed to me by the Opponent at the hearing. This clarifies that both the words ‘snap bar’ and ‘nature’s gift’, above, have the letters ‘tm’ alongside them and the reverse side of the package bears the claim:
(TM Registered Trademark
Nature’s Gift Australia)
While Ms Ryan submitted that the trade mark on the packaging example is outside the range of possible uses of the Trade Mark that might be considered to be fair and normal (or notional) uses of the Trade Mark, I would conclude otherwise. If considered from the viewpoint of subsection 7(1) and the approach taken by the Courts in Gallo and Malanda, the use of the trade mark on the packaging example is a use of the Trade Mark with alterations or additions which do not substantially affect its identity. The actual use is thus within the range of notional or normal uses of the Trade Mark which I might consider for the purposes of comparison under section 44. I do not consider that the apparent (and erroneous) claim that the words ‘snap bar’ are a separately registered trade mark of the Applicant detracts from this conclusion. Words such as ‘Just Natural’ or the device of the kangaroo to one side of the above trade mark are not (in terms of the High Court’s remarks in Gallo, above) distinguishing features and the relative sizes of the words NATURE’S GIFT to the words SNAP BAR are within bounds of what is ‘fair and normal’ use of the Trade Mark. The use on the packaging example thus falls within the range of notional uses of the Trade Mark as filed.
I also note that the fact that the Applicant has applied to register the Trade Mark as NATURE’S GIFT SNAP BAR and tendered the packaging example as evidence of its use strongly suggests that the Applicant itself believes that the use on the packaging example is a use of the Trade Mark.
Ms Ryan submitted that “the word ‘snap’ is a descriptive word that denotes the ‘breaking’ concept of treats designed for the consumer to ‘snap’ into pieces for their pet and, thus, does not retain distinctive elements in and of itself when used as a part of the Opposed Mark.”
However, this approach to the comparison if adopted by me would render, to a large extent, the Opponent’s registrations 820796 SNAPS and 1174597 SNAPZ to be effectively acknowledged by the Registrar to be invalid as I would be in effect completely discounting an entire trade mark, or trade marks, in the comparison. Obviously, if the Applicant’s position is that the Opponent’s registrations are invalid because they lacked inherent adaptation to distinguish the goods in respect of which they are registered at the date of filing, the Applicant may have a remedy under section 88 of the Act. However, as these trade marks of the Opponent are registered they, by definition, prima facie cannot be inherently unadapted and subsequently discounted in a comparison.
Ms Ryan submitted:
Simply because one of the Cited Marks is wholly contained in the Applicant’s Mark, does not automatically lead to a conclusion that the two marks are substantially identical or deceptively similar. The question is whether the wholly included word(s) have retained a distinctive identity as a part of the whole: Angoves Pty Ltd v Johnson (1982) 43 ALR 349 at 362.
The thinking behind cases such as Seven Up Co v Bubble Up Co Inc (1987) IPR 259 is outmoded. As noted by the authors of Lahore Patents Trade Marks and Related Rights:
The better view now is that the fact that the application mark includes the whole of another mark, or an essential feature of it, does not, in itself, make the second mark deceptively similar to the earlier mark. The question will still be whether the use of the second mark is likely to deceive or cause confusion. That will depend on the effect of the incorporation of the earlier mark. If it retains its identity, or it is likely to be used as an abbreviation or diminutive of the later mark, the risk of deception or confusion is likely to be substantial.[3]
[3]Lahore J & Dufty A, Lahore Patents Trade Marks and Related Rights LexisNexis on-line at [50,270]; see also Wilkinson v Jockey International Inc (2010) 86 IPR 612 at [33] to [34].
Obviously the judicial view is to be preferred until it is replaced or modified by a subsequent decision of the Courts. However, addressing Ms Ryan’s argument, when the Trade Mark is considered from the viewpoint of the range of its notional use, which I have found extends to that on the packaging example, the prominence of the element SNAP BAR within the Trade Mark makes it very likely that it will be perceived as being related to the Opponent’s trade mark SNAPS or SNAPZ despite the presence of the Applicant’s house mark NATURE’S GIFT in proximity. The element SNAP in the Trade Mark retains its identity and a person seeking the Opponent’s goods under the trade marks SNAPS or SNAPZ is likely to see the Trade Mark as indicating that the goods sold thereunder are, in fact, a ‘bar’ of the Opponent’s goods.
Accordingly, in my consideration the Trade Mark is deceptively similar to the Opponent’s registrations 820796 SNAPS and 1174597 SNAPZ and the Opponent has established her opposition under section 44 of the Act.
Decision
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.
I refuse to register application 1522207.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
9 October 2014
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