Cadbury Ltd v Unilever PLC
[2001] ATMO 59
•9 July 2001
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Application 795879 and a request by Unilever PLC for suspension of opposition proceedings and opposition by Cadbury Limited to that request.
Background
Cadbury Ltd (‘Cadbury’) filed application 795879 on 1 June 1999 (‘the priority date’). The application was accepted for registration and subsequently advertised as such in the Official Journal of Trade Marks on 8 June 2000. The trade mark appears below:
On 4 September 2000, Unilever PLC (‘Unilever’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The grounds stated in the Notice are:
· the opposed trade mark is not capable of distinguishing the Applicant's goods;
· use or registration of the opposed trade mark would be contrary to law;
· use of the proposed trade marks in relation to the specified goods would be likely to deceive or cause confusion;
· the opposed trade mark is substantially identical with or deceptively similar to one or more trade mark registrations and/or applications having an earlier priority date in respect of similar goods or closely related services;
· the Applicant is not the owner of the opposed trade mark;
· the Applicant does not intend to use, or authorise the use of, the opposed trade mark in relation to all the goods specified in the application;
· the opposed trade mark is substantially identical with or deceptively similar to a trade mark that, before the priority date of the opposed trade marks, had acquired a reputation in Australia such that the use of the opposed trade mark would be likely to deceive or cause confusion;
· the application or a document filed in support of the application to register the opposed trade mark was amended contrary to the Trade Marks Act, 1995;
· the opposed trade mark was accepted for registration on the basis of evidence or representations that were false in material particulars; and
· by reason of the matters set forth in any one or more of the foregoing paragraphs the Registrar in the exercise of his discretion ought to refuse registration of the opposed trade mark.
On 10 April 2001, the solicitors for Unilever wrote to the Trade Marks Office (‘the Office’) requesting a stay in the proceedings before the Registrar pending determination of Federal Court proceedings. The reasons for the request were stated in this letter. By letter dated 8 May 2001, the solicitors for Cadbury wrote to the Office opposing the proposed stay in proceedings. Accordingly, the issue was set down for a hearing of the parties’ arguments. As a delegate of the Registrar, I heard the parties, respectively represented by Michael Roberts and Ron Webb, both of Counsel, in which the former attended the hearing in person and the latter attended by teleconference.
Prior to discussing the submissions or giving my reasons, it is convenient to set out in more detail the broader background to both the Federal Court proceedings and the proceedings before the Registrar in the opposition itself in tabular form.
| Date | Event |
| 24 July 1998 | Application 664808 refused by Hearing Officer Williams. |
| April 1999 | Federal Court Proceedings 287 of 1999 initiated by Unilever. |
| 1 June 1999 | 795877 filed by Cadbury, the application is accepted and Unilever’s watching service misses the acceptance – the Federal Court proceedings seek rectification in respect of this registration. |
| 1 June 1999 | 795878 filed by Cadbury, the application is accepted and Unilever’s watching service misses the acceptance – the Federal Court proceedings seek rectification in respect of this registration. |
| 1 June 1999 | This application (795879) filed by Cadbury. |
The Federal Court statement of claim alleges infringement of the registered trade marks appearing below:
Reg Number: 175701
Owner: Unilever Australia Limited
Priority Date: 27 August 1962
Goods: Ice cream, frozen confectionery and water ices
Trade Mark:
Reg Number: 184103
Owner: Unilever Australia Limited
Priority Date: 11 November 1963
Goods: Ice cream, frozen confectionery and water ices
Trade Mark:
Reg Number: 363610
Owner: Unilever Australia Limited
Priority Date: 29 July 1981Goods:Ice cream, flavoured ice, ices, milk ices, fruit ices, waterices [sic] and ice confections
Trade Mark:
Unilever Australia Limited (‘UAL’) is the applicant in the Federal Court proceedings and is a subsidiary of Unilever PLC.
Cadbury have filed a cross claim in the Federal Court proceedings and claims that it is a person aggrieved by the registration of UAL registration 175701 and seeking removal of the trade mark from the register of trade marks on the grounds of non-use or lack of intention to use at the filing date of 175701.
Also, Cadbury, in the cross claim, seeks rectification of the register by cancelling or removing registration 175701 on the grounds that the trade mark did not, at the commencement of proceedings, distinguish the goods of UAL from the similar goods of other persons.
I further observe that the proceedings before the Registrar are, as noted by Mr Webb, a sub-set of the Federal Court proceedings.
The Submissions
10. Mr Roberts drew my attention to the lack of any supporting declarations filed by Unilever to support its application for a stay in the opposition proceedings in the trade marks registry. In proceedings before the Registrar it is customary to file statutory declarations, drafted in accordance with regulation 21.6, which attest to facts not on the official file, or within the Registrar’s knowledge, in order that these facts may enable the Registrar to decide particular matters. However, in the absence of declaratory material filed in relation to proceedings, the Registrar will decide the issue based on the material on the official file and within the Registrar’s knowledge. The Registrar may also, of course, inform him or herself, in terms of regulation 21.16(8), on any matter that is before him or her in any way that the Registrar reasonably believes to be appropriate. The Registrar, Deputy Registrar and delegates of the Registrar are, therefore, used to making decisions, based on material on file, without the benefit of declaratory material. As any ‘appeal’ to a Court from the decision of the Registrar is de novo, it is open to a party to bring more, or fresh, evidence in the Court proceedings: Jafferjee v Scarlett (1937) 57 CLR 115, at 119 and 126. In this particular matter, I have details of the application for registration, details of opposition proceedings before the Registrar and sufficient detail of Federal Court proceedings 287 of 1999 on file and within my knowledge to consider the issues involved.
11. Mr Roberts also drew my attention to an extensive body of case law and argued that the principles to be extracted from the cases to which he referred show that the Courts prefer to have the benefit of the Registrar’s expertise when deciding issues such as the deceptive similarity of trade marks. Mr Roberts submitted that it is the Registrar’s function to determine opposition proceedings and that, in suspending opposition proceedings, the Registrar would be abrogating his responsibility in terms of section 55 to decide the matter and this would burden the Court with consideration of the application. Mr Roberts also sought to distinguish this opposed application for a stay in proceedings from others that the Registrar has decided.
12. I think that much of Mr Roberts submissions appear to be premised on the misconception that, if the stay in proceedings sought by Unilever is allowed, the Federal Court will then consider the issue of this application. In fact, what occurs in such instances is the suspension of the timetable set out in the Trade Mark Regulations that specify the timeframes for the service and filing of evidence-in-support, evidence-in-answer and any evidence-in-reply until the proceedings in the Federal Court are complete and a decision has been made. Once the decision of the Federal Court issues, and if there is no appeal from that decision, the opposition is ‘revived’ and the usual regulatory provisions for the service and filing of evidence then apply. The Registrar, once these formalities have been completed, is then in a position to comply with his responsibilities under section 55.
Reasons
13. Regulation 5.16 provides:
5.16 Conduct of opposition proceedings generally
(1)The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.
(2)A direction given under subregulation (1) must not be inconsistent with these regulations.
(3) The Registrar must not give a direction unless the Registrar:
(a)is reasonably satisfied that parties to the proceedings have been notified of the proposed direction; and
(b)has given the parties a reasonable opportunity to make representations concerning the proposed direction; and
(c) is reasonably satisfied that the proposed direction is appropriate.
(4)For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
14. In Outrigger Hotels Hawaii v Evangelista Pty Ltd (2000) 49 IPR 164, at 173, I noted:
The above provisions (and case law referred to in submissions) make it clear that I am, in considering the issue of the possible suspension of this application from the opposition, to balance and reasonably consider the interests of the parties; the most expeditious way of running the hearing of the substantive issue when it comes on before a delegate of the registrar; and, the public interest which includes the efficiency of the courts, the maintenance of the Trade Marks Register and the interests of any third parties.
Prior decisions of the delegates of the Commissioner of Patents or the Registrar of Trade Marks can provide some guidance, but it is clear that I should primarily consider what direction is reasonable in the particular circumstances of this issue.
I note that Mr Roberts attempted to distinguish the circumstances of this application from Outrigger, above, (on the basis of whether it was the applicant or opponent who made the request for suspension of opposition) and other decisions he referred to in his submissions. He also cited passages from a number of other cases – none of which I consider to be directly relevant – which I believe have no application here since the passages appear to be obiter and, further, their applicability is limited by the contexts in which they occur.
15. I consider that the suggested approach to the decision-making process to be inappropriate since regulation 5.16 makes it clear that either party may file the application for a direction in relation to a hearing; or, it may be initiated by the Registrar. Adherence to a set of rules extracted from prior decisions would preclude full consideration of the factors considered in Outrigger, above; and, such a course would limit full consideration of a direction which is reasonable and appropriate in the circumstances of this application for a direction by Unilever.
16. The Interests of the Parties. It is in the interests of both parties that the status of the trade marks in question be resolved in the quickest and most effective way and with the minimum of expense to either party. Both Cadbury and Unilever have Australian subsidiaries, UAL and PB Foods Limited (‘PBF’), whose operations may, or will, reasonably be expected to be affected by the outcome of the proceedings in the Federal Court. It is not obvious that proceedings before the Registrar would be completed before completion of those in the Federal Court. In the event that proceedings before the Registrar were not completed before completion of the Federal Court proceedings, the Registrar and parties involved would, naturally, follow the decision of the Court in the determination of the issue before the Registrar. The parties would have then been burdened with the expense and inconvenience of running parallel proceedings in both forums only to have the matter before the Registrar effectively resolved in the superior forum. In the event that the matter before the Registrar were determined prior to the Federal Court, it would appear possible that either party could appeal the decision of the Registrar to the Federal Court with considerable expense and inconvenience and this would not have added any certainty to the status of the trade mark the subject of proceedings before the Registrar. It appears that such an outcome might also delay resolution of the Federal Court proceedings, while, as I have noted, the operations of UAL and PBF might reasonably be expected to be affected by the outcome of the Federal Court proceedings. In the event that proceedings before the Registrar and the Federal Court were completed at the same time, it would appear probable that the Registrar would adjourn proceedings, or delay issue of reasons, in order that the decision of the Federal Court be taken into account in those reasons. The effect of such an outcome is the same as a direction, now, that the proceedings before the Registrar be suspended pending resolution of proceedings before the Federal Court. However, a suspension of the proceedings now would not have burdened both parties with additional expense and inconvenience of prosecuting proceedings before the Registrar.
17. The hearing of the substantive issue. The Federal Court proceedings will include consideration of the Cadbury cross claim that it is a person aggrieved by the registration of UAL registration 175701 and seeking removal of that registration from the Register of Trade Marks. Cadbury also seeks rectification of the Register in respect 175701 on the ground that the trade mark did not, at the commencement of proceedings, distinguish the goods of UAL from the similar goods of other persons. As the substantive matter before the Registrar includes a ground of opposition that, “the opposed trade mark is substantially identical with or deceptively similar to one or more trade mark registrations and/or applications having an earlier priority date in respect of similar goods or closely related services”, and those trade mark registrations include 175701, it is obvious that the proceedings before the Registrar will be affected by the outcome of Cadbury’s cross claims. It is preferable, therefore, to have the status of 175701 resolved by the Court before the substantive matter before the Registrar proceeds.
18. Further, proceedings in the Federal Court include discovery of documents, examination, and cross-examination of witnesses. The Registrar, in terms of section 202, may summons witnesses, however this is not a normal course of events and is not foreshadowed in these proceedings. The Court, therefore, will have more fact before it on which to base its decision than would the Registrar.
19. The public interest. Unilever alleges that the use of Cadbury’s trade mark infringes its trade marks, registration details of which are listed above under the heading Background. As such, it alleges, in terms of section 120 of the Trade Marks Act 1995, that Cadbury’s trade mark is deceptively similar to its registered trade marks. Deceptive similarity is defined by section 10 of the Act:
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.
It is, obviously, in the public interest that these claims of deception or confusion be decided one way or the other as soon as possible. In these circumstances, the factors which I have discussed under the heading Interests of the Parties apply.
The third parties affected by the outcome in the dispute before the Registrar are those directly involved in the Federal Court proceedings. It is not suggested that the interests of any other third party will be damaged if the proceedings before the Registrar are suspended pending outcome of the Federal Court proceedings.
20. Other. The factors nominated in Outrigger, above, for consideration are not an exhaustive list. I note that in Cadbury Limited v Unilever PLC [1998] ATMO 36 (24 July 1998) the Registrar’s delegate, Mr Williams, refused registration of trade mark application 664808 filed by Cadbury. I further note that Cadbury filed this application (795879) shortly after Unilever commenced the Federal Court proceedings in question. I draw no inferences from this behaviour. However, it is apparent that, if the proceedings before the Registrar were completed prior to completion of the Federal Court proceedings, and the outcome were consistent with Cadbury Limited v Unilever PLC [1998] ATMO 36 (24 July 1998), Cadbury might reasonably be expected to do what they have previously done in the face of the same Federal Court proceedings and simply re-file the application for registration. It might be reasonably expected that then Unilever would again oppose registration of the trade mark. As well as involving a great deal of inconvenience and expense for both parties, this does not make for the efficient running of the trade mark registry.
21. Cadbury have argued that the Courts prefer to have the benefit of the Registrar’s expertise when deciding issues such as the deceptive similarity of trade marks. In Unilever Australia Ltd v PB Foods Ltd [1999] FCA 1083, in which Unilever sought a direction from the Federal Court that certain defences be struck out from PBF’s defence, Moore J observed:
The second additional reason advanced by counsel for Unilever for striking out paras 3 and 5 of PB Food's defence is that they relate to marks that have already been the subject of an unsuccessful application by Cadbury Ltd for registration. That fact answers, it was submitted, the question posed by s 121(1)(f). That is, Cadbury Ltd would not obtain registration of the marks. However, the earlier rejection of the application was founded on opinions formed by the Registrar. Section 121(1)(f) is, in terms, directed to the opinion of the Court. The extent to which, if at all, the Court seeks to ascertain what the opinion of the Registrar might be were an application considered under s 44 of the 1995 Act, is an issue of potentially some complexity. I am not presently satisfied that the fact of earlier refusal warrants the striking out of paras 3 and 5 of the defence.
In Registrar of Trade Marks v Woolworths [1999] FCA 1020, French J, after reviewing the authorities observed, at para 32:
There is therefore no presumption in favour of the correctness of the Registrar's decision save that weight will be given to the Registrar's opinion as that of a skilled and experienced person. But the Court on appeal from the Registrar must, in determining the question of acceptance of the application, apply to it the same legal criteria that the Registrar is required to adopt. That is to say the application must be accepted unless the Court is satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it. If the matter is left in doubt, then the application should be accepted. That is consistent with the possibility, adverted to earlier, that after a contested opposition registration may eventually be refused. Weight can be given to the Registrar's opinion without compromising the duty of the Court to construe the relevant legal criteria. When the proper principles are applied to the manner in which a judgment is to be made about an issue such as "deceptive similarity" there is room for a degree of deference to the evaluative judgment actually made by the Registrar. That does not mean the Court is bound to accept the Registrar's factual judgment. Rather it can be treated as a factor relevant to the Court's own evaluation.
There is, therefore, I believe, no preference by the Court to have the Registrar’s opinion – if present, it is merely a factor to be taken into account in the Court's own evaluation. However, if the opinion of the Registrar is of any weight to the Court, the Registrar has already expressed an opinion in Cadbury Limited v Unilever PLC [1998] ATMO 36 (24 July 1998).
Decision
22. After considering the above factors, I direct that the matter be suspended from opposition until Federal Court proceedings have been finalised.
Costs
23. Having been successful in this matter, Unilever is entitled to its costs.
Ian Thompson
Hearing Officer
9 July 2001
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