Cadbury Limited v Cream & Dream s.r.o.

[2008] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Cadbury Limited to registration of trade mark application 1078914(29, 30, 43) (International Registration Designating Australia No 861591) - CREAM & DREAM - filed in the name of Cream & Dream s.r.o.

Delegate:

Alison Windsor

Representation:

Opponent:  Chris Sgourakis of Griffith Hack, Patents and Trade Mark Attorneys

Applicant:  not represented

Decision:

2008 ATMO 60

Reg 17A.29 opposition: section 59 ground established – no intention to use the trade mark within Australia – protection refused. Costs awarded against holder.

Background

1. Cream & Dream s.r.o., a company based in the Czech Republic (“the holder”) requested protection in Australia for the following international registration designating Australia (“IRDA”):

Application number:  1078914

Priority date:  29 June 2005

Advertised accepted:                    8 December 2005

Goods/Services:  Class 29:  Meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and dairy products, edible oils and fats

Class 30:Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flours and preparations made from cereals, bread, pastry and confectionery, edible ices, honey, treacle syrup, yeast, baking-powder, salt, mustard, vinegar, sauces(condiments), spices, ice for refreshment

Class 43:Services for providing food and drink, temporary accommodation

Trade Mark:  

1. Section 189A of the Trade Marks Act 1995 (“the Act”) governs the consideration of IRDAs.  This section makes provisions for the regulations to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”

2. Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29 of the Trade Marks Regulations 1995 (“the regulations”).

3. On 13 January 2006, Cadbury Limited, a company based in the United Kingdom, (“the opponent”) filed a Notice of Opposition (“the notice”).  After requesting and being granted a number of extensions of time for the purpose, the opponent filed its evidence in support of the opposition on 4 May 2007. 

4. IP Australia then wrote directly to the holder at its address of record in the Czech Republic advising it of the date by which its evidence in answer was due, and reminding it of the requirement to nominate an address for service in Australia before it could take part in the opposition process.[1]  The holder did not respond within the allowed time, and no evidence in answer was filed.  Subsequently the opponent applied for, and was granted, permission to file a copy of further evidence.  Despite IP Australia again writing to the holder at its Czech Republic address advising of this application, there was still no response from the holder.

   [1] See subregulation 17A.33(3)

5. The opponent requested to be heard and the matter came before me, as a delegate of the Registrar, in Melbourne on 16 June 2008.  Chris Sgourakis, trade mark attorney and principal of Griffith Hack, Patent and Trade Mark Attorneys represented the opponent.  The holder was not represented and filed no written submissions in support of its trade mark application.

Notice of opposition, grounds of opposition pursued and onus

1. The notice canvassed most of the grounds of opposition allowable under the Act. However, at the hearing, Mr Sgourakis advised that the opponent would only be pursuing grounds under the provisions of sections 44, 59 and 60 of the Act. For completeness, I note that none of the other grounds claimed on the notice have been established.

2. It is common ground that the onus of establishing any ground of opposition rests with the opponent.  The ground need only be established on the balance of probabilities.

Evidence and submissions

Evidence in support

1. The opponent’s evidence in support consists of a declaration of Mike Busuttil, Marketing Manager – Moulded Chocolate, of Cadbury Schweppes Pty Ltd, Melbourne, made on 3 May 2007.  Cadbury Schweppes Pty Limited is a member of the Cadbury Schweppes group of companies, and uses trade marks under licence from the opponent, a UK member of the group.

2. The opponent states it is the owner in Australia of the following registered trade marks:

Number	Trade Mark	Goods and Class
835044	DREAM	Class 30:  Chocolate; chocolates; non-medicated confectionery; biscuits; wafers; cakes; pastry; snack foods, including ice cream and frozen confections
839974	CADBURY DREAM	Class 30:  Chocolate; chocolates; non-medicated confectionery; icecream; frozen confections; biscuits; wafers; cakes; pastry; snack foods
894469	CADBURY DREAM	Class 29:  Milk and milk products; milk based beverages including flavoured milk; yoghurt and yoghurt based beverages; beverages from milk substitutes

1. Mr Busuttil says the Cadbury DREAM trade mark was launched in Australia in January 2001, following extensive market research extending over a number of years.  The product is a white block chocolate, and promotion was targeted towards a particular demographic, being mainly women in the 25 – 34 year category.  In the eight weeks following its launch, as a result of extensive merchandising promotions, the product was the highest selling confectionery product in Australia. 

2. The product is sold throughout all Australian states and territories via large national supermarkets and retailers, service stations, convenience stores and many thousands of individual retailers including sporting venues, milk bars and take-away food stores.  Annual sales amount to several hundreds of tonnes, with annual sales values amounting to many millions of dollars.  Advertising figures are similarly very significant, and the product is advertised very widely throughout Australia, via a large number of different media. 

3. Due to the success of the DREAM brand for confectionery, Cadbury has extended the brand into other areas, including different flavour combinations, as well as into ice-creams and cake and biscuit mixes. 

Further Evidence

1. The opponent’s further evidence consists of a declaration by Chris Sgourakis, the opponent’s Australian legal representative.  This declaration goes to an investigation of the holder’s presence on the Internet, via searches using the Google® search engine.

2. The Google® search enabled retrieval of what appears to be the holder’s website.  The website, however, appeared only in Italian.  Mr Sgourakis organized to have the wording in the website translated into English, and says that the mark is only being used with respect to ice-cream parlour services, and only in the cities of Prague and Venice, and “coming soon” to Paris, New York, Tel Aviv and Tokyo.  There is nothing on the website which points to an intention to use the mark in any other city or country, particularly in Australia.

3. Mr Sgourakis also attests to the opponent’s attempts to contact the holder, even though technically not required to do so as the holder had not nominated an Australian address for service, in order to try to settle the matter and to serve evidence.  The annexures to the Sgourakis declaration include copies of a number of attempts by the opponent to contact the holder, through the address on record at IP Australia, or to the legal representative recorded in the relevant WIPO database.

Submissions

1. At the hearing, Mr Sgourakis submitted that while it is acknowledged that filing an application to register a trade mark is prima facie evidence of an intent to use it, section 59 of the Act refers to a continuing intention to use the trade mark. The holder’s failure to respond to correspondence from IP Australia and from the opponent, including correspondence proposing terms to settle the opposition, Mr Sgourakis said, suggests that the holder never had, or no longer has, any intention to use the trade mark in Australia.

2. Mr Sgourakis also advised me that he had sent a copy of the opponent’s further evidence to the holder, via a letter dated 26 February 2008.  At the hearing he provided me with a declaration attesting to the veracity of this claim, with the specific letter as an annexure.  As with the opponent’s other attempts to elicit a response from the holder, this was also unsuccessful.

Discussion

1. At the hearing, as mentioned earlier, the opponent pursued grounds of opposition under sections 44, 59 and 60 of the Act. It is my opinion that the ground under section 59 has been established, thereby establishing the opposition. My reasons for this opinion follow.

2. Section 59 of the Act reads as follows:

Applicant not intending to use trade mark

59. 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.

1. As submitted by the opponent, it is generally acknowledged that filing an application to register a trade mark is prima facie evidence of an intent to use it in respect of the goods and services nominated, at least at the time the application was filed:  Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401.

2. Section 59, however, refers to a continuing or current intention to use the trade mark. This matter was noted by the delegate in Sapient Australia Pty Ltd and Sapient Corporation v SAP AG [2002] 55 IPR 68 as follows:

   This ground is also one where an applicant's intention to use is relevant. However, it is a ground written in the present tense and looks at the present state of the intention of the applicant. ... Thus, section 59 deals with current defects in intention to use, interlocking with s 58, under which the intention and facts at the time of filing are the relevant elements.

3. Since the opponent has provided evidence implying a lack of intention to use, the onus of establishing its intention to use the trade mark shifts to the holder.  Jacobson J, in Health World Ltd v Shin-Sun Australia Pty Ltd and Others (2008) 75 IPR 478 stated:

   [162] However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].

   [163] The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.

4. This application is somewhat different from two decisions upon which the opponent sought to rely in support of its case in establishing a ground under section 59. In both Japan TobaccoInc v JTI d.o.o. (2006) 69 IPR 430 and Greenfield Products Pty Ltd v Yellostrom Verwaltungsgesellschaft Mbh (2007) 73 IPR 549 there was additional information available on the file or within the evidence which pointed strongly to a lack of intention on the respective holder’s part to use its trade mark in Australia, at least since the notice of opposition was served.

5. In Japan Tobacco, for example, the opponent advised that it was involved in disputes with the holder on a worldwide basis because of the holder’s practice of appropriating the opponent’s trade marks for use in respect of the sale and distribution of counterfeit cigarette products.  In addition, at least one letter sent from the office to the holder’s address in Beograd was returned as undeliverable (“left address”).

6. In Greenfield Products, the Australian legal firm that had prosecuted the IRDA during the examination process advised IP Australia that the holder had given instructions that it was not interested in proceeding any further with the application.  The attorney firm had therefore closed its file on the matter, some years before the opposition came before me.

7. In this case there is no such additional information available to me.  However, I consider I am able to infer a lack of intention to use from the evidence provided in the Sgourakis declaration and from the trade marks office file.  The opponent has made every attempt to contact the holder in order to advise it of the basis of the opposition.  IP Australia has likewise attempted to ensure the holder has had every chance to take part in these proceedings.  Neither IP Australia nor the opponent has elicited a response from the holder. 

8. I am therefore satisfied that, whatever its original intentions may have been, the holder has no current intention to use its trade mark in Australia. I find the ground of opposition under the provisions of section 59 has been established. The opponent is thus successful in its opposition, and there is no requirement for me to consider the grounds pursued under sections 44 and 60.

Decision

1. The opponent having established the ground of opposition under section 59, I refuse to extend protection to Australian trade mark application 1078914, (International Application Designating Australia No 861591).

Costs

1. In its submissions at the hearing the opponent requested its costs if it was successful in this action.  I gave my opinion that, given the history of failed attempts to communicate with the holder, the likelihood of actually being successful in this endeavour was slight.  However, as the successful party, the opponent is entitled to attempt to secure some recompense for its actions if it so chooses.  I award costs against the holder according to the official scale

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

8 July 2008