British American Tobacco (Brands) Limited v Philip Morris Products S.A

[2019] ATMO 147

TRADE MARKS ACT 1995

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

Re:Opposition by British American Tobacco (Brands) Limited to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 1861677 (International Registration number 1357370) (classes 9, 11, 17, 19, 20, 24, 34 and 35) - TETRAPOD - in the name of Philip Morris Products S.A.

Delegate:

Jock McDonagh

Representation:

Opponent: Frances St John of Counsel instructed by Davies Collison Cave, patent and trade mark attorneys

Applicant: Francesca Colubriale, Special Counsel of Spruson and Ferguson, patent and trade mark attorneys

Decision:

2019 ATMO 147

Trade Marks Act 1995 (Cth) – Opposition to extension of protection to IRDA – reg 17A.33 of the Trade Marks Regulations 1995 - grounds under sections 44 and 59 pressed – no ground of opposition established – protection of IRDA to be extended to Australia.

Background

1. On 23 January 2015, Philip Morris Products S.A. (‘the Holder’) applied for extension of protection to Australia of International Registration no. 1227675. The current details of the resulting International Registration Designating Australia (‘the IRDA’) are:

Trade mark:       

TETRAPOD

Trade mark application:

1861677

International Registration:

1357370

Filing Date:

12 January 2017 

Convention Priority Date

13 July 2016 (‘priority date’)

Specification:

Class 9: Batteries for electronic cigarettes; batteries for electronic devices that are used for heating tobacco, chargers for electronic devices that are used for heating tobacco; USB chargers for electronic devices that are used for heating tobacco; car chargers for electronic cigarettes; car chargers for devices that are used for heating tobacco; battery chargers for electronic cigarettes

Class 11: Air filters for household use; air filtration apparatus and installations; electronic vaporizers except electronic cigarettes; apparatus for heating liquids; apparatus for generating vapor; none of the aforesaid goods for use in pet care

Class 17: Synthetic padding to be used for filtration in filters; semi-processed cellulose acetate for use in filtration; filtering materials for absorbing aerosols; insulating materials and insulating fabrics; floating anti-pollution barriers; soundproofing materials; none of the aforesaid goods for use in pet care

Class 19: Non-metallic building materials; paneling materials for use in buildings; woven materials for use in buildings; non-woven textiles for use in buildings and by the building industry; coverings of non-metallic materials for use in buildings

Class 20: Furniture; screens (furniture); panels (furniture); upholstered furniture

Class 24: Coverings for furniture (in this class); fitted coverings for furniture (in this class); fabrics and textiles for the manufacture of coverings for furniture; lining fabrics and textiles; fabrics; fabrics and textiles for making clothing; filtering materials (textiles); filtering materials (of textile) for absorbing aerosols

Class 34: Wired vaporizers for electronic cigarettes and electronic smoking devices; tobacco, raw or manufactured; tobacco products, including cigars, cigarettes, cigarillos, tobacco for roll-your-own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); smokers' articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; matches; tobacco sticks, tobacco products for the purpose of being heated, electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; liquid nicotine solutions for use in electronic cigarettes; electronic smoking devices; electronic cigarettes; electronic cigarettes as substitute for traditional cigarettes; electronic devices for the inhalation of nicotine-containing aerosol; oral vaporizing devices for use by smokers, tobacco products and tobacco substitutes; smokers' articles for electronic cigarettes; parts and fittings for the aforesaid products included in this class; devices for extinguishing heated cigarettes and cigars as well as heated tobacco sticks; electronic rechargeable cigarette cases

Class 35: Retail services and online retail services connected with the sale of air filters, filtration devices, materials used as filters or in filtration apparatus, building materials, furniture and furnishings, fabrics and textiles, tobacco products, heated tobacco products, devices for heating tobacco, electronic cigarettes, electronic smoking devices, e-liquids, tobacco substitutes, batteries and chargers for electronic cigarettes, smokers' articles

1. The IRDA was examined as required by Regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’). IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 14 September 2017. 

2. British American Tobacco (Brands) Limited (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection to Australia of the IRDA on 14 November 2017. Thereafter the parties filed, respectively, a Statement of Grounds and Particulars (‘the Statement’) a Notice of Intention to Defend and evidence as provided by the Regulations.

3. I heard the matter in Canberra on 12 April 2019 as a delegate of the Registrar of Trade Marks. The Opponent was represented by Frances St John of Counsel instructed by Davies Collison Cave, patent and trade mark attorneys. The Holder was represented by Francesca Colubriali, Special Counsel of Spruson and Ferguson, patent and trade mark attorneys.

   Evidence

4. The following evidence was filed in the opposition:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Katherine Louise Kemp	Trade mark searcher employed by Opponent’s legal representatives	7.05.18 (‘first Kemp declaration’)	KK-1 to KK2
Evidence in Answer
Francesca Colubriale	Special Counsel employed by Applicant’s legal representatives	16.08.18 (‘the Colubriale declaration’)
Evidence in Reply
Katherine Louise Kemp	Trade mark searcher employed by Opponent’s legal representatives	18.10.18 (‘second Kemp declaration’)

1. The first Kemp declaration, in Exhibit KK-1, provides the following details of trade mark registrations containing the word ‘pod’ in the IP Australia database in Class 34, and in Classes 5, 10 or 11 for goods including the search terms ‘nicot* OR vape OR vapo* OR smoker* OR smoking OR cigarette,*" which encompasses goods including nicotine, vape, vapour, smoker's articles, smoking foods and cigarettes’:

Number	Trade Mark	Priority Date	Goods	Owner
1556035 (IR 1157932)	TASTE PODS	10.10.2012	Class 34: Cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles	Opponent
1675489 (IR 1235515)	NANOPODS	19.02.2014	Class 34: Cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles	Opponent
1797149	vPod	16.09.2017	Class 34: Electronic cigarette lighters; Electronic cigarettes; Electronic cigarettes, not for medical purposes; Flavorings, other than essential oils, for use in electronic cigarettes; Flavourings, other than essential oils, for use in electronic cigarettes; Liquid nicotine solutions for use in electronic cigarettes	Vapertech Limited

1. The search of the IP Australia database referred to above in the first Kemp declaration also discovered the IRDA and also two applications under examination, one owned by the Opponent – 1891537 PODS – and 1902476 MI-POD owned by SV3 LLC.

2. The first Kemp declaration, in Exhibit KK-2, provides the online Macquarie Dictionary definition of the word ‘pod’, and at Exhibit KK-3 a copy of a survey entitled ‘Survey of market participants on the perception of the term PODS in the UK’.

3. Exhibit KK-4 to the first Kemp declaration shows the results of searches of the Internet using the Google search engine on 3 May 2018 for the mark ‘TETRAPOD’ combined with ‘Phillip Morris’.

4. The Colubriale declaration states (at [11]) an intention by the Holder to use the IRDA in the future in combination with the Opponent’s IQOS branded products, and annexes the following:

   ·     Annexure A, a print-out from the Madrid Monitor of the International registration, showing designated countries for protection

   ·     Annexure B showing the Swiss trade mark registration upon which the IRDA is based.

   ·     Annexure C shows the results of a Google search on search terms including the word ‘pod’ and words ‘cigarette’, ‘e-cigarette’, ‘nicotine’, ‘tobacco’, vape’, and ‘tobacco industry’.

   ·     Annexure D is a bundle of online articles and other materials demonstrating the use of ‘pod’ or ‘pods’ in the context of tobacco products.

   ·     Annexure E is an article entitled "What's going on with cigarette packets as menthol cigarettes are banned from 2020" which was published on the website on 19 May 2016.

5. The second Kemp declaration annexes a copy of the decision of the Fifth Board of Appeal of the EU Intellectual Property Office in J.T.  International S.A.  v British American Tobacco (Brands) Limited R 20151/2015-5 (2 December 2016) (‘JT International’) concerning the meaning of the term ‘pods’ in the context of tobacco products.

   Grounds of Opposition

6. Regulations 17A.28 and 17A.34 extend grounds for rejection of and opposition under the Act to IRDAs. The Opponent nominated the following grounds of opposition under the Act in the Statement:

   ·     Section 44: Identical etc. trade marks

   ·     Section 59: Applicant not intending to use trade mark

7. To succeed in its opposition the Opponent bears the onus of establishing at least one of the grounds on the ‘balance of probabilities’[1] based on the evidence before me.[2]

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

   [2] Cantarella Bros Pty Ltd  v Espresso Enterprises Pty Ltd [2014] ATMO 68, Hearing Officer Kirov at [34].

8. The time at which the grounds of opposition must be established is the date of filing of the application for registration.[3]

   [3] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

   Discussion

   Section 44

9. Some relevant provisions of the Act with respect to the ground pursuant to s 44 are reproduced below:

   Section 44 - Identical 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)it 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.

   (2)…

   (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. 

   Note:  For limitations see section 6.

   (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.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition 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.

10. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1) being that any one of the Opponent’s Trade Marks:

    ·     has a priority date which is earlier than the Priority Date (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar goods, to the Applicant’s Goods (‘the third requirement’).

11. The Opponent has cited trade mark registrations 1556035 TASTE PODS and 1675489 NANOPODS (‘the Opponent’s Trade Marks’; see paragraph 6, above) in the SGP.

12. Each of the Opponent’s Trade Marks has a priority date that is earlier than the relevant date.  The first requirement is satisfied.  The Holder has claimed goods in Class 34.  Both of the Opponent’s Trade Marks are registered for goods including Cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles in Class 34.  This is sufficient to satisfy the third requirement.  I shall now consider the second requirement.

    Substantially identical or deceptively similar?

13. While the Statement pleaded both substantial identity and deceptive similarity, at the hearing the Opponent only pressed the deceptive similarity limb of the ground.

14. The principal authority for guidance in determining whether trade marks are deceptively similar comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    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].[4]

    [4] Ibid [13].

15. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[5] at [49]; Australian Woollen Mills[6] at 658.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[7] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[8] at 594 – 595.

    Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[9]

    [5] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

    [6] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

    [7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

    [8] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

    [9] [2012] FCA 1022, [38]-[46].

16. Finally in Registrar of Trade Marks v Woolworths Ltd, French J noted the following test for deceptive similarity:

    The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd[10]. 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.[11]

    [10] (1945) 63 RPC 97 at 101.

    [11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [88].

1. The IRDA contains similarities with the Opponent’s Trade Marks in that its suffix is ‘POD’, which is similar to ‘PODS’ at the end of both of the Opponent’s Trade Marks.

2. Nevertheless, when comparing the IRDA and the Opponent’s Trade Marks there are several differences.  Firstly, TETRAPOD is a dictionary word, describing something four footed; typically, four limbed animals or types of structure. This definition is only applicable when POD is a suffix. There is no dictionary definition of NANOPOD in either the Oxford Dictionary of the Macquarie Dictionary.

3. Neither of the Opponent’s Trade Marks is a single dictionary word, although TASTE and PODS are words. PODS has a variety of dictionary meanings, which are discussed in some detail in JT International. The meanings involved fruits containing seeds, seedcases, aerodynamic structures suspended from aircraft, or enclosed cabins suspended from cables or big wheels. There was also discussion about PODS describing capsules containing substances, such as coffee, flavourings, or tobacco. Ultimately, the decision found that it could not be concluded that the relevant public would perceive that the term POD referred to any particular characteristics of tobacco products.

4. Further, I note that NANO- is a unit prefix meaning ‘one billionth’, but generally used to indicate something very small or minute. This is conceptually very different to TETRA. The words TASTE PODS are arguably descriptive of anything involving pods, and is quite different to the IRDA.

5. I consider that the IRDA is sufficiently conceptually, aurally, and visually different from the Opponent’s Trade Marks such that I do not think that a relevant person of ordinary intelligence would be likely to be confused or deceived by the IRDA, even allowing for an imperfect recollection.

6. I find that the IRDA is not deceptively similar to any of the Opponent’s Trade Marks. The Opponent has failed to establish the ground of opposition under s 44.

   Section 59

7. Section 59 of the Act is reproduced below:

   Section 59 - Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the Applicant does not intend:

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

   (b)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 specified in the application.

   Note: For Applicant see section 6.

8. The act of applying for registration is taken to be evidence of a real and definite intention to use the trade mark in relation to all the goods and services nominated: Aston v Harlee Manufacturing Co.[12]

   [12] (1960) 103 CLR 391.

9. The Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP[13] found that the applicant’s lack of intention to use its trade mark must be established at the filing date, while acknowledging that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application”.

   [13] [2010] FCAFC 58 at [74].

10. In Suyen Corporation v Americana International Ltd[14] Dodds-Streeton J noted:

    Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. … Opposition has … succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.

    [14] [2010] FCA 638 at [212].

11. If an opponent establishes a prima facie case the onus shifts to the Holder to establish that the requisite intention existed at the time of filing: Health World Ltd v Shin-Sun Australia Pty Ltd[15].

    [15] [2008] FCA 100).

12. The Opponent submits that the number of non-tobacco related products (eg in classes 19, 20 and 24) are unrelated to the Holder’s business. Further, an internet search on ‘tetrapod Phillip Morris’ returned no results that appeared to be in Australia.

13. The Colubriale declaration lists the various countries (and the European Union) designated in the IRDA, and the details of the Swiss Trade Mark registration upon which the IRDA is based is annexed.

14. Further, Colubriale states that there is an intention by the Holder to use the Trade Mark in the future in combination with the Opponent’s IQOS branded products.

15. I do not consider that the limited internet search conducted by the Opponent’s representatives establishes a prima facie case sufficient to shift the onus to the Holder. I am satisfied that the act of seeking to extend protection of the IRDA to Australia, along with several others, is sufficient evidence of intention to use the IRDA for all goods and services nominated.

16. I am not satisfied that the Opponent has established this ground of opposition. 

Decision

1. Reg. 17A.34N of the Regulations provides:

   (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2) The Registrar must notify the International Bureau of the Registrar's decision.

2. I have found that the Opponent has not established either of its grounds of opposition. I therefore direct that protection of the IRDA be extended to Australia one month from the date of this decision in respect of all of the goods and services listed.

3. If the Registrar has been served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued or, if this decision be successfully appealed, that the IRDA be dealt with as the Court sees fit. If there is no appeal the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with reg. 17A.34N(2).

Costs

1. The Holder sought an award of costs. As the successful party, it is appropriate that costs be awarded against the Opponent at the scale set out in Schedule 8 to the Regulations.

   Jock McDonagh

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   9 October 2019