C Coconut Water Pty Ltd v Natural Raw C Pty Ltd
[2014] ATMO 119
•16 December 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by C Coconut Water Pty Ltd to registration of trade mark application 1508246(32) - RAWC - in the name of Natural Raw C Pty Ltd.
| Delegate: | Nicole Worth |
| Representation: | Opponent: Stefan Balafoutis and Robert Clark of counsel, instructed by Lander and Rogers Lawyers. Applicant: Therese Catanzariti of counsel, instructed by Deutsch Partners. |
| Decision: | 2014 ATMO 119 Section 52 opposition – ss 43, 44, 59, 60 and 62A pursued – no grounds established – application may proceed to registration. |
Background:
These are proceedings pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’). Natural Raw C Pty Ltd (‘the Applicant’) applied for registration of the trade mark detailed below:
Trade Mark: RAWC (‘the Trade Mark’)
Application No.: 1508246
Filing Date: 17 August 2012
Goods: Class 32: Aerated beverages (non-alcoholic); alcohol free beverages; beverages consisting of a blend of fruit and vegetable juices; beverages made from fruit concentrates; coconut milk (beverages); edible essences for making beverages; electrolyte replacement beverages for general and sports purposes; essences for making beverages; extracts of vegetables (beverages); fruit beverages; fruit concentrates for making beverages; fruit juice beverages; fruit juice extracts (beverages or for making beverages); fruit juice nectar (beverages or for making beverages); fruit syrup (beverages or for making beverages); isotonic beverages; mineral water (beverages); fruit juice beverages that contain multi vitamins; non-alcoholic barley based beverages; non-alcoholic beverages; non-alcoholic fruit juice beverages; non-alcoholic honey-based beverages; preparations for making beverages; sorbets (beverages); spring water (beverages), other than for medical purposes; squashes (non-alcoholic beverages); vegetable extracts (beverages); vegetable juice concentrates (beverages); vegetable juices (beverages); waters (beverages)
The application was examined and accepted for possible registration. That acceptance was advertised in the Official Journal of Trade Marks on 6 December 2012. C Coconut Water Pty Ltd (‘the Opponent’) opposed registration of the Trade Mark on 5 March 2013, citing grounds of opposition under sections 59, 60, 43, 44 and 62A of the Act.
The parties duly filed their evidence, discussed in more detail below, after which the matter came before me for hearing in Sydney on 14 October 2014. At the hearing the Opponent was represented by Stefan Balafoutis and Robert Clark of counsel, instructed by Lander and Rogers Lawyers, and the Applicant was represented by Therese Catanzariti of counsel, instructed by Deutsch Partners. The parties gave oral submissions in respect of the grounds of opposition under sections 43 and 44 of the Act, and relied upon their written submissions in respect of the remaining grounds.
Evidence:
The evidence filed in respect of the opposition is as follows:
Evidence in Support
Statutory declaration of Zachary Jex (‘Jex 1’), Private Label Food and Beverage Specialist for Category Solutions Pty Ltd, an entity which “provides private label co-packing solutions to businesses that are looking to create their own food and beverage brands” and which by agreement manages the marketing and trade mark protection of the Opponent’s products, dated 5 June 2013 with Exhibits A to L.
Evidence in Answer
Statutory declaration of Dennis Ghetto, a Director of the Applicant, dated 14 October 2013 with Annexures DG1 to DG11.
Evidence in Reply
Statutory declaration of Zachary Jex, dated 16 April 2014 with Annexures A and B.
Briefly, the evidence shows that both of the parties sell coconut water.[1] Since October 2010 the Opponent has sold coconut water which it packages in Tetra Paks® featuring the trade mark below (registration number 1442550 covering, inter alia, “alcohol free beverages” in class 32, registered from 15 August 2011):
[1] Coconut water is, according to Wikipedia®, the clear liquid inside young, green coconuts that can be consumed as a drink. It has gained popularity in recent years as a health drink.
Photographs of packaging, advertising material and store displays are in evidence. I note that some of these appear to show the letter “C” as a curl of toasted coconut with the same shape and dimensions of the “C” shown above. A number of extracts from social media and the Opponent’s website are included in the exhibits and they show either people drinking the packaged product so that the trade mark is displayed or further photographs of the packaging.
The Opponent declares that its beverages are sold through 3000 stores in Australia, including supermarkets ‘Thomas Dux’ and ‘IGA’, and gives amounts committed to its 2012-2013 marketing campaign. It also provides two examples of alleged confusion between the parties’ trade marks.
A feature of the Opponent’s evidence is examples of the Trade Mark in use, which shows that the word “raw” is mostly distinguished from the letter “c”, either by way of a space when in plain type or by way of different placement and colour when in logo form. Examples are shown below:
For its part, the Applicant has sold coconut water under the Trade Mark in stores and online since January 2013. It is declared that “the brand RAWC was decided on due to the product being 100% pure and unprocessed coconut juice” and because the Applicant’s founders “liked the visual and aural effect of the combination of the word ‘raw’ with the interlocking ‘c’ as it was unique and eye-catching”. Documents relating to the development of the trade mark are exhibited: those that are dated being from October, November and December 2012, and including an undated page of hand-drawn logos all of which emphasise the letter “c” and some of which emphasise the letter “r” as well.
The Applicant declares that its product is sold to at least 10,000 stores across Australia and it exhibits a list of some of the stores, including ‘Thomas Dux’ and ‘IGA’ supermarkets. It promotes its product via its website and social media, and the product has gained publicity by virtue of Pete Evans, chef and television personality, who is a co-owner of the product and has identified it in a number of newspaper, magazine and internet articles (although I note that not all of the articles in evidence mention the Trade Mark but rather “coconut water” or “Natural Raw C coconut water”).
In its advertisements the Applicant describes its product as “100% pure”, commonly using the phrase “No added sugar, no preservatives, no funny stuff, and not from concentrate”. For the most part the Applicant does not mention whether the product has undergone processing (other than packaging), with the exception of one wherein the advertisement states “Our special harvesting and processing procedures allow us to package and pasteurise natural Coconut Waters that are biologically pure, with no need for adding any preservatives”[2].
[2] At Exhibit DG4.
Grounds and onus
The Opponent pursued all of its grounds of opposition and it bears the onus of establishing at least one of them, the relevant standard of proof being the civil standard of the balance of probabilities.[3] Here, the date at which the rights of the parties are to be determined is the date the application was filed,[4] which is 17 August 2012 (‘the filing date’).
[3] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.
[4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.
The Opponent began by addressing section 43, so for convenience I will do likewise.
Section 43 – Trade mark likely to deceive or cause confusion
Section 43 of the Act provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The Opponent raises two arguments in respect of section 43: firstly, that the Applicant’s products are pasteurized and therefore not raw (in the sense of being uncooked, unheated or unprocessed), such that the Trade Mark is likely to deceive; and secondly, that the Trade Mark is likely to connote an affiliation with the Opponent and the Opponent’s products.
In respect of the first argument, the Opponent submits that the Trade Mark should be rejected because it contains a misleading connotation as to the character of the goods.[5] It submits that the likely pronunciation of the Trade Mark is “raw c”, such that the “c” is pronounced as an element separate to “raw”, with “raw” referring to the uncooked, unprocessed or untreated character of the goods (per definitions in the Macquarie Dictionary[6]) and “c” being understood as referring to coconut water. The relevant market is submitted to comprise health conscious individuals who are concerned with natural, unprocessed health foods and drinks. Accordingly, it is submitted, the Trade Mark carries a connotation that the product is raw coconut water which is misleading to the relevant market because the product is not raw. Rather, it is pasteurised (pasteurisation being the process of heating to kill bacteria). Additionally, the nature of the product is such that the transaction involved in its purchase does not normally include careful inspection of the packaging, but rather is a quick purchase conducted without great consideration.
[5] Per Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt [1998] ATMO 10; (1998) 41 IPR 632, approved of by Kenny J in McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582.
[6] The Opponent provided a copy of the definitions of “raw” from the online edition of the Macquarie Dictionary, which it accessed on 13 October 2014.
The Applicant disputes what “raw” signifies. It submits there is no reason why “raw” has an implied or secondary meaning that necessarily means “unpasteurised” given there are several other definitions of raw, including “not diluted, as spirits” in the Macquarie Dictionary. Additionally, it is submitted that an unpasteurised food product would not be able to be sold in Australia because of food safety guidelines. The Applicant emphasizes that the connotation of the words must be looked at in the context in which the products are sold: they are sold commercially, in shops, in pre-packaged Tetra Paks® and the connotation must therefore be looked at in that context. Accordingly it is unlikely that the relevant market would necessarily believe a pre-packaged product sold in shops is not pastuerised. This is particularly the case given the relevant market comprises health conscious people, who would be concerned about the consumption of unpastuerised products that could potentially expose them to harmful bacteria.
Although it takes a somewhat different stance in respect of the ground under section 44, in respect of the ground under section 43 the Applicant appears to have agreed that the Trade Mark would be separated into the elements “raw” and “c”.[7]
[7] In its oral submissions the Applicant stated that it accepted that there is a connotation of “raw” in the Trade Mark, and its written submissions neither agree nor disagree but state “To the extent that the letters ‘RAW’ in the Applicant’s Mark ‘RAWC’ signifies anything, it is a reference to the fact that it is not diluted and unprocessed [and then goes on to provide some of the definitions given in the Macquarie Dictionary]”.
I proceed on the same basis. Although the mark applied for is RAWC and it is possible that it would be perceived and pronounced as a single invented word, it is also possible that it will be rendered in fonts and/or colours which differentiate the letter “c” from “raw”. Where a trade mark is applied for in block capitals, such conventional embellishments generally fall within what might be considered notional use of it:
[T]he registration of a word in block capitals must cover use of that word in any clearly legible form of lettering and not be confined to its representation in block capitals. Otherwise the registration of a mark consisting of a name in block capitals would give virtually no protection at all, for anyone could use the same word in some other form of type or lettering in imitation handwriting or some other form of that kind; and it would obviously be impossible for anyone seeking to register a particular word…to cover in his application or applications every conceivable form of lettering in which it might be represented.[8]
Additionally “raw” is a familiar word with some currency in respect of the goods. As such it is reasonable to consider what, if any, connotation may arise from the Trade Mark being interpreted as comprising the elements “raw” and “c”.
[8] Morny Ltd's Trade Mark (1951) 68 RPC 131.
I do not consider that the letter “c” would be taken as a reference to coconut water per se. It does not normally signify coconut, but rather relates variously to: the chemical carbon, the Roman numeral for 100, centigrade, Celsius, century,[9] or perhaps vitamin c. Nonetheless, when the letter “c” appears in conjunction with the expression “coconut water” and upon packaging of coconut water, then a relatively undefined association may be made (although I am not persuaded that it would be sufficiently definite as to signify “coconut water”, any more than it might signify “cranberry juice” or “cream” if it appeared on the packaging of those products).
[9] Being definitions provided in the Macquarie Dictionary.
In respect of “raw”, there are fifteen definitions of the word given in the Macquarie Dictionary, replicated below:
raw /rɔ/ (say raw)
adjective 1. uncooked, as articles of food.
2. (of foods, textiles, etc.) not having undergone processes of preparing, dressing, finishing, refining, or manufacture.
3. untreated: raw sewage.
4. (of numerical data) exactly as counted, before scaling, adjustment, etc.
5. unnaturally or painfully exposed, as flesh, etc., by removal of the skin or natural integument.
6. painfully open, as a sore, wound, etc.
7. painfully exposed or sensitive: raw nerves.
8. crude in quality or character; not tempered or refined by art or taste: raw talent; raw energy.
9. ignorant, inexperienced, or untrained: a raw recruit.
10. brutally or grossly frank: a raw portrayal of human passions.
11. Colloquial harsh or unfair: a raw deal.
12. disagreeably damp and chilly, as the weather, air, etc.
13. not diluted, as spirits.
–phrase 14. in the raw,
a. in a crude, uncultured state: the play portrayed life in the raw.
b. Colloquial in a state of nakedness; nude: she sunbakes in the raw.
15. on the raw, at a point of emotional vulnerability: her remark touched him on the raw.
[Middle English, Old English hreaw; distantly related to Latin crudus, raw, cruor blood, Greek kreas raw meat]
The first three definitions of the word “raw” are likely the most commonly understood out of all of the definitions provided. Although the quality of being undiluted does fall within the definition of “raw”, and there is nothing to say that that particular definition is limited to spirits, I consider it unlikely that the word would be interpreted in that way in the context of coconut water. At the same time, although I accept that the first three definitions are the most commonly understood out of the fifteen provided, I have some doubt over whether “raw”, in the context of “raw c” and upon coconut water, necessarily connotes so definite a notion as “unpasteurised”, “uncooked” or “unheated”.
Firstly, “raw c” is some way removed from “raw coconut water”: the second expression is a direct reference clearly describing a quality of coconut water, whereas it is not entirely clear what the first expression conveys.
Secondly, there is a likelihood that “raw” in this context merely aligns the product with a general notion of healthiness or naturalness as opposed to conveying that the product is unpasteurised, uncooked or unheated. The popularity of healthy diet and lifestyle products has risen in recent years, as evidenced for example by Pete Evans’ own ethos which has received significant publicity. From my own knowledge I am aware that dietary regimes based on unprocessed foods have garnered significant market presence as have the restaurants, takeaway shops and food and beverage companies that cater to them. Expressions such as “natural”, “whole”, “clean”, “macro”, “paleo” and “raw” are commonly applied, and whilst they are guided by certain principles they are not precisely defined. In combination with the point that the goods are sold pre-packaged in a commercial setting, the public are equally as likely to perceive the Trade Mark as a relatively imprecise indication that the product is healthy and natural as they are to perceive that the Trade Mark connotes that the product is unpastuerised or unheated. [10]
[10] I accept that “raw” in the context of milk does indicate a definite notion of unpastuerised (as raised by the Opponent), however I do not consider that that particular context necessarily translates to coconut water.
I do note that one of the Applicant’s examples of promotion is a review of its product which does not itself identify the product as being raw, but appears upon a website named ‘therawfoodforum.com’. Such use may well support the Opponent’s stance, however other than its presence on that website there is nothing to indicate whether or not the reviewer (or the reviewer’s followers) was confused or deceived as to the character of the goods. Additionally, although not itself determinative, the Applicant’s own advertising of its product does not make any claims that it is unpasteurised but rather focusses on it being “100% pure” (and one of its descriptions identifies that its product is pasteurised, as identified in paragraph 11).
Ultimately there are relevant arguments each way as to whether or not “raw” connotes that the Applicant’s product is unpasteurised or unheated. In weighing up the relative likelihoods, I am not satisfied that the meaning of “raw” in the context of “raw c” upon coconut water is sufficiently definite to give rise to a confusing or misleading connotation. Accordingly, although I do have some reservations, I consider the Applicant ought to be given the benefit of the doubt,[11] and the ground of opposition under section 43 is not established by the first leg of the Opponent’s argument.
[11] Per the so-called “presumption of registrability” existing by virtue of section 33 of the Act.
In respect of the second leg, section 43 is generally concerned with deception arising by way of a connotation inherent in a trade mark and not deception by way of similarity to some other trade mark.[12] At the same time, confusion or deception may occur in circumstances where the connotation is one of sponsorship or association, whereby a trade mark comprises or contains a sign that is so closely associated in the public mind with a certain source that it connotes the sponsorship of, or association, with that source.[13]
[12] Winton Shire Council v Lomas [2002] FCA 288; (2002) 56 IPR 72; Pfizer Products Inc v Karam, supra.
[13] See for example Pfizer Products Inc v Karam, supra; Radio Corporation Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448; or McCorquodale v Masterson [2004] FCA 1247;(2004) 63 IPR 582.
The Opponent’s position in this regard is that a significant, identifying feature of both parties’ trade marks is the letter “C”, and this has caused confusion because the Opponent’s product is allegedly referred to as “C” or “C Coconut Water” and its distributor has allegedly been approached by numerous customers asking for the “raw” version of its product (being a mistaken reference to the Applicant’s product). A further allegation is made that consumers and the media perceive the Applicant’s product is the raw version of the Opponent’s product.
Such considerations are more relevant to section 44. There is insufficient evidence before me to show that the letter “C” is so closely associated in the public mind with the Opponent that it connotes the Opponent’s sponsorship or affiliation with the product. There is no direct evidence of consumers’ appreciation of its trade mark, and that upon which any inference could be based is scant: the Opponent’s products have been available a relatively short period of time, sales figures are not provided, only one year of amounts “committed” to marketing have been provided (and most of that year takes place after the priority date), and only one example of so-called consumer appreciation is in evidence (being a comment upon a social media site from a person praising the Opponent’s product). Given this, I am not satisfied that there is a confusing or misleading connotation present in the Trade Mark.
Accordingly, the ground of opposition under section 43 is not established by either legs of the Opponent’s case and I move on to consider the ground of opposition under section 44.
Section 44 – Identical etc trade marks
Section 44 relevantly provides:
(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.
(The referred-to subsections (3) and (4) relate to use of an applied-for trade mark or other circumstances which make acceptance of a trade mark proper, however they are not relevant here.)
To establish an opposition under section 44 an opponent must show that there is another trade mark which:
- is registered or is pending registration;
- has a priority date earlier than that of the opposed trade mark;
- is owned by a person other than the applicant;
- is in respect of similar and/or closely related goods and/or services; and
- is substantially identical or deceptively similar to the opposed trade mark.
In this regard the Opponent relies upon its trade mark registration referred to in paragraph 5, details of which appear below along with details of the Trade Mark for ease of comparison:
| The Opponent’s trade mark | The Trade Mark |
| RAWC | |
| Registration no.: 1442550 | Application no.: 1508246 Priority date: 17 August 2012 Class 32: Aerated beverages (non-alcoholic); alcohol free beverages; beverages consisting of a blend of fruit and vegetable juices; beverages made from fruit concentrates; coconut milk (beverages); edible essences for making beverages; electrolyte replacement beverages for general and sports purposes; essences for making beverages; extracts of vegetables (beverages); fruit beverages; fruit concentrates for making beverages; fruit juice beverages; fruit juice extracts (beverages or for making beverages); fruit juice nectar (beverages or for making beverages); fruit syrup (beverages or for making beverages); isotonic beverages; mineral water (beverages); fruit juice beverages that contain multi vitamins; non-alcoholic barley based beverages; non-alcoholic beverages; non-alcoholic fruit juice beverages; non-alcoholic honey-based beverages; preparations for making beverages; sorbets (beverages); spring water (beverages), other than for medical purposes; squashes (non-alcoholic beverages); vegetable extracts (beverages); vegetable juice concentrates (beverages); vegetable juices (beverages); waters (beverages). |
It was not disputed that the Opponent’s trade mark has an earlier priority date and is in respect of similar goods.[14] Nor was it pressed that the Trade Mark is substantially identical to the Opponent’s trade mark. That which remains to be determined is whether the Trade Mark is deceptively similar to the Opponent’s trade mark.
[14] The Opponent did not address potential similarity between its services and the Applicant’s goods, however as will become clear it is not necessary to do so.
SAection 10 of the Act states that “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 test for determining whether this is the case was considered in Shell Co. of Australia v Esso Standard Oil (Australia) Ltd[15]:
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].
[15] [1963] HCA 66 at [13]; (1963) 109 CLR 407 at 415.
In this regard the Opponent submits:
· Each mark contains the letter “C” as a common distinctive element, it arising in the Trade Mark because of the likely pronunciation of it as “raw c”;
· The distinctive element, the letter “C”, is effectively an invented word because it contains no meaning in and of itself;
· Each of the marks contain additional material which is descriptive and therefore unlikely to dispel any notions of similarity;
· Each of the marks are applied to precisely the same goods and promoted to the same market; and
· The phonetic similarity is greater than the visual similarity, given the likely pronunciation of the Trade Mark.
The Opponent also points to one of the examples of the Trade Mark in use, shown in exhibit I of Jex 1 and replicated below, as one of the surrounding circumstances to take into account when considering deceptive similarity.
It submits that the consumer who sees the Trade Mark as depicted on the sign above will inevitably be confused or deceived because it appears to refer to the “raw” version of the Opponent’s “C Coconut Water”. It also points to two alleged examples of confusion, one being an email from a member of the public stating:
Hey guys, I am big fans of C coconut water and it’s my regular brand of choice. I thought I’d let you [know] that some guys have just started a brand called Raw C. It’s a bit confusing to me as a consumer and thought you should know. Kind of infringes on your brand name in my opinion
and the other being an email written by Zachary Jex and sent to himself that notes that a member of the public had called his company to order the Applicant’s products.
The Applicant submits that the respective trade marks are not deceptively similar because the comparison is between, on the one hand, a stylised mark the dominant feature of which is the letter “C”, and on the other hand, the plain word RAWC wherein no one letter is emphasized over the others. It also points out that the comparison must relate to the mark applied for, not the mark in use, and alleges that the Opponent is attempting to gain a “back door monopoly” over the letter “C” (which it would otherwise be unable to register because the letter “C” is not distinctive).
I too do not consider the parties’ trade marks to be deceptively similar. On their face they are visually quite different. When considering the various forms in which the Trade Mark might notionally be used - including that the letter “C” might be separately identified – one must bear in mind that it is the trade marks as wholes that must be compared. Considered in this light, each party’s trade mark comprises elements which separately may not be distinctive but as wholes are sufficiently differentiated. The Opponent’s trade mark is dominated by a large letter “C” accompanied by the words “coconut water” in the form of a logo, whereas the letter “C” in the Trade Mark (if it is so differentiated) is accompanied by the word “raw”.
In respect of the potential confusion arising by the example shown in the picture above, it shows neither the Opponent’s registered mark nor the Applicant’s applied-for mark. Rather it shows the words “Raw C Coconut Water” in plain text which could equally be argued to be a reference to the Applicant’s product (“Raw C” coconut water) as to the Opponent’s product (“C Coconut Water” which is raw). The two examples allegedly demonstrating confusion are not convincing. The first does not demonstrate confusion, rather it provides the writer’s opinion as to a likelihood of confusion. The second does appear to demonstrate confusion (notwithstanding that it is a note written by the Opponent’s declarant) however I do not consider that one example justifies an inference that confusion is likely amongst the greater public, especially in the face of the differences I have noted.
As such I am not satisfied the parties’ trade marks are deceptively similar, either on their face or when considering that the letter “C” might be separately identified in the Trade Mark. The ground of opposition under section 44 is therefore not established.
Section 59 – Applicant not intending to use trade mark
Section 59 of the Act provides:
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.
The act of filing an application to register a trade mark is prima facie evidence of an applicant’s intention to use that trade mark in respect of the goods or services specified in the application.[16] A mere allegation of non use by the Opponent is not enough by itself to shift the onus of proof to the Applicant, however where a prima facie case against it has been made then it is for the Applicant to rebut the allegation.[17] The relevant date to assess intention is the date the application was filed,[18] here being 17 August 2012, and a lack of use is not itself determinative.[19]
[16] Aston v Harlee Manufacturing Co (‘Aston’) [1960] HCA 47; (1960) 103 CLR 391.
[17] Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited (1966) 116 CLR 254.
[18] Suyen Corporation v Americana International Limited (‘Suyen’) [2010] FCA 638; (2010) 87 IPR 262.
[19] Suyen, ibid.
The Opponent submits that the Applicant does not intend to use the Trade Mark in plain word form as applied for, but rather in ways that distinguish the letter “C” from the letters “RAW” and such separation does not constitute use of the Trade Mark.
I do not consider that a case sufficient to shift the onus to the Applicant has been established. Even taking into account that the post-filing date evidence of use of the Trade Mark may shed light on the Applicant’s true position as at the filing date,[20] I am not persuaded that the use of an interlocking “c” with the word “raw” (as shown on the packaging of the Applicant’s product) cannot constitute use of the Trade Mark - I refer again to my comments at paragraph 19 and the reference to Morny Ltd’s Trade Mark.
[20] Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505 at 509.
Additionally, the Applicant points out that “there is sufficient intention to use at the date of the application if there was a number of possibilities at the planning stage and this was one of the possibilities but it had not finally decided which one to use”.
The ground of opposition under section 59 is therefore not established.
Section 60 – reputation
Section 60 of the Act provides:
60. 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.
Note: For priority date see section 12.
Accordingly, section 60 contemplates confusion or deception between trade marks that are not necessarily deceptively similar. It is primarily concerned with the use of the Trade Mark in the face of the demonstrated reputation in Australia of another trade mark, and the likelihood of deception or confusion arising from that use. The Registrar’s delegate in Rogers Seller & Myhill v Reece Pty Ltd[21] qualified that general proposition, stating:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
[21] [2010] ATMO 5; (2010) 85 IPR 647.
Additionally, Kenny J in McCormick & Company Inc v McCormick[22] referred to reputation as “the recognition of the [trade mark] by the public generally” (although where appropriate this proposition may be modified to account for specialised or narrow markets, which is not the case here).
[22] [2000] FCA 1335; (2000) IPR 102.
To establish reputation the Opponent points to the goodwill associated with the Opponent’s trade mark, allegedly demonstrated by the duration of its trade mark’s use, the volume of sales, the promotions and the consumer following. The Opponent’s trade mark has been used since October 2010, a little under two years before the filing date of the Trade Mark. No sales figures are provided, and the amounts committed to marketing the Opponent’s product relate to the 2012-2013 period (which, in financial year terms, would mean that only July and the first half of August 2012 are before the filing date). The examples of the trade mark in use, and the consumer following purportedly demonstrated by social media, are either undated or dated after the priority date. Accordingly, there is little upon which reputation could be inferred.[23] Notwithstanding that I consider there are significant differences between the parties’ trade marks, I am not satisfied that the Opponent has established the first leg of section 60, namely a sufficient reputation in its trade mark.
[23] Per McCormick & Company Inc v McCormick, supra, at [86].
The ground of opposition under section 60 is therefore not established, and I turn to the final ground of opposition under section 62A.
Section 62A – Application made in bad faith
Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. In this regard the Opponent submits that given the limited number of major coconut water suppliers in Australia in early 2013[24] the Applicant was, or ought to have been, aware of the Opponent’s trade mark which relies heavily on the letter “C” to distinguish its products. The Opponent submits therefore that it is reasonable to assume the Applicant’s selection of its branding was intended to take advantage of the Opponent’s reputation and market presence.
[24] Which is not the filing date but when the Applicant first began to sell its product.
I am not satisfied that either is the case. Even had the Applicant been aware of the Opponent’s prior trade mark the differences between the two to belie the proposition that the Applicant sought to improperly benefit from the market presence or reputation of the Opponent’s marks. Additionally, the Applicant had the benefit of co-ownership and public endorsement of its products from a television celebrity, lessening the likelihood that it would have felt the need to “springboard” off the reputation of another’s products. Accordingly there is little to suggest that the Applicant’s actions were unscrupulous, underhand or unconscientious in character[25], and the ground is not established.
[25] Per Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 94 IPR 551.
Decision
Section 55 provided, at the date the application was filed:
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.
Note: For limitations see section 6.
The Opponent has not established any of the grounds of opposition and the opposition fails. Accordingly, I direct that trade mark application 1508246 may proceed to registration after one month from the date of this decision.
If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.
The parties sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Opponent as per Schedule 8 of the Regulations,
Nicole Worth
Hearings Officer
Trade Marks Hearings
16 December 2014
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