Caffe Ducale Pty Ltd v Dukes Coffee Roasters (Wholesale) Pty Ltd

[2018] ATMO 172

TRADEMARKSACT 1995

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

Re:Oppositions by Caffe Ducale Pty Ltd to registration of  trade  mark  applications 1513450 & 1777007 (both in classes 30, 35, 40, 43) - DUKES (stylised) and DUKES (plain text) - in the name of Dukes Coffee Roasters (Wholesale) Pty Ltd.

DELEGATE:

Nicole Worth

REPRESENTATION:

Opponent:      written     submissions    prepared     by   Phillips   Ormonde Fitzpatrick Patent & Trade Mark Attorneys.

Applicant: Tony Lolis and Nicholas Butera of Davies Collison Cave Patent & Trade Mark Attorneys.

DECISION:

2018 ATMO 172

Trade Marks Act 1995 (Cth) – grounds of opposition under ss 41 and 44 pursued – trade marks capable of distinguishing - surnames – trade marks not deceptively similar to prior marks – similarity to words in Italian language - evidence shows use of trade marks with additions or alterations not substantially affecting identity – neither ground of opposition established – registration of both marks to proceed.

Background

1. This decision is pursuant to oppositions under s 52 of the Trade Marks Act 1995 (‘the Act’) by Caffe Ducale Pty Ltd (‘the Opponent’) to registration of the trade marks detailed below, both in the name of Dukes Coffee Roasters (Wholesale) Pty Ltd (‘the Applicant’).

(‘the stylised mark’)*

DUKES

(‘the plain text mark’)*

Application No.: 1513450

Application No.: 1777007

Goods and Services:

Class 30: Coffee, coffee beans, unroasted coffee and coffee beans, roasted coffee and coffee beans, ground coffee, flavoured coffee, freeze- dried coffee, coffee mixtures, coffee products, artificial coffee, coffee essences, coffee extracts, additives for coffee; coffee beverages, including, beverages consisting principally of coffee, coffee beverages with milk, beverages with coffee base, aerated beverages (with coffee); coffee flavourings (flavourings), coffee oils , coffee substitutes; decaffeinated coffee; instant coffee; preparations for making  beverages  (coffee based); artificial coffee

Goods and Services:

Class 30: Coffee, coffee beans, unroasted coffee and coffee beans, roasted coffee and coffee beans, ground coffee, flavoured coffee, freeze- dried coffee, coffee mixtures, coffee products, artificial coffee, coffee essences, coffee extracts, additives for coffee; coffee beverages, including, beverages consisting principally of coffee, coffee beverages with milk, beverages with coffee base, aerated beverages (with coffee); coffee flavourings (flavourings), coffee oils , coffee substitutes; decaffeinated coffee; instant coffee; preparations for making  beverages  (coffee based); artificial coffee

Class 35: Retail and wholesale service, including retail and wholesale services in relation to coffee, coffee beans, roasted coffee and coffee beans, unroasted coffee and coffee beans, coffee products and coffee beverages; including such services provided on-line

Class 40: Coffee roasting; coffee flavouring and processing; coffee grinding; coffee processing; food and drink preservation; food and drink processing (for others); food grinding; food milling

Class 43: Restaurant, café, canteen, cafeteria, coffee shop, coffee bar and snack bar services, catering services; coffee supply services for offices; office coffee supply services; contract food services; food preparation; preparation and sale of carry out foods and beverages; services for providing food and drink; temporary accommodation

Class 35: Retail and wholesale service, including retail and wholesale services in relation to coffee, coffee beans, roasted coffee and coffee beans, unroasted coffee and coffee beans, coffee products and coffee beverages; including such services provided on-line

Class 40: Coffee roasting; coffee flavouring and processing; coffee grinding; coffee processing; food and drink preservation; food and drink processing (for others); food grinding; food milling

Class 43: Restaurant, cafe, canteen, cafeteria, coffee shop, coffee bar and snack bar services, catering services; coffee supply services for offices; office coffee supply services; contract food services; food preparation; preparation and sale of carry out foods and beverages; services for providing food and drink; temporary accommodation

Filing date: 10 September 2012

Filing date: 15 June 2016

Endorsements: Provisions of subsection 41(5) applied. Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.

Endorsements: Evidence and/or other circumstances provided under subsection 41(4). Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied. Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

*Collectively referred to as ‘the Applicant’s trade marks’.

1. The applications were examined as required by s 31 of the Act. The stylised mark was examined under the Act as it stood prior to amendments made by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, and the plain text mark was examined under the amended Act. The differences in the provisions of the Act will become relevant to the ground of opposition under s 41, discussed later in this decision. For now it is sufficient to note that the applications were eventually accepted under the provisions of: s 41(5) or equivalent 41(4), s 44(3)(a), and in the case of the later application, s 44(4). The acceptances were advertised in the Australian Official Journal of Trade Marks on 22 December 2016.

1. The Opponent filed Notices of Intention to Oppose the registrations on 22 February 2017 and Statements of Grounds and Particulars (‘SGPs’) on 22 March 2017. The SGPs particularised grounds of opposition under ss 41, 44 and 60. The Applicant filed Notices of Intention to Defend on 28 April 2017.

1. The parties filed evidence to support their cases, described in more detail below, after which the Applicant requested a hearing. I heard the matter, as a delegate of the Registrar

of Trade Marks, in Canberra on 3 August 2018. The Opponent did not attend the hearing but written submissions were prepared on its behalf by Phillips Ormonde Fitzpatrick Patent & Trade Mark Attorneys. The Applicant was represented at the hearing by Tony Lolis and Nicholas Butera of Davies Collison Cave Patent & Trade Mark Attorneys, who made verbal and written submissions on the Applicant’s behalf.

Grounds, onus and relevant date

1. Prior to the hearing the Opponent indicated that it no longer pursued the ground of opposition under s 60, leaving grounds of opposition under ss 41 and 44. The Opponent bears the onus of establishing at least one of those grounds. The standard of proof is the ordinary civil standard of the balance of probabilities.1

2. The relevant dates at which the rights of the parties are determined are the filing dates of the applications,2 being 10 September 2012 in respect of the stylised mark and 15 June 2016 in respect of the the plain text mark.

Evidence

1. The evidence filed in these matters comprises the following declarations:

Evidence in support

Separate declarations for each opposed application by Russell John Waters, Partner of the firm Phillips Ormonde Fitzpatrick, with attachments RJW-1 to RJW-3, each dated 7 August 2013.

Evidence in answer

A declaration in respect of both applications by Tony Lolis, attorney of Davies Collison Cave Patent & Trade Mark Attorneys, with Confidential Exhibit TVL-1, dated 9 November 2017.

Confidential Exhibit TVL-1 consists of a declaration of Peter Frangoulis, Director and founder of the Applicant, with Exhibits PF-1 to PF-6 and dated 5 December 2016, filed during the examination stages of the applications.

Evidence in reply

Separate declarations for each opposed application by Russell John Waters, with attachment RJW-4, each dated 11 January 2018.

1. The Opponent’s evidence provides the details of the prior registered trade marks identified in the SGPs under s 44 (all owned by third parties), as well as the details of a prior pending trade mark owned by the Opponent identified only in the SGP relating to

1 Pfizer Products Inc v Karam [2006] FCA 166, [6]-[26].

2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.

application 1777007 (application 1777007 having a later filing date). The details of these trade marks are shown below.3

DUKE’S	DUCALE	THE DUKE
Registration No.: 509222	Registration No.: 914265	Registration No.: 1319047	Application No.: 1557039
Priority date: 21 April 1989	Priority date: 27 May 2002	Priority date: 2 September 2009	Priority date: 15 May 2013
Goods: Class 29: All goods in this class, edible oils and fats.	Goods: Class 30: Coffee, coffee flavouring, coffee beverages in this class.	Goods: Class 30: Coffee, coffee flavouring, coffee beverages in this class. Class 32: Soft drinks, spring water, mineral water.	Goods: Class 30: Coffee, coffee flavouring, coffee beverages in this class.
Owner: Ngo Chew Hong Edible Oil Pte Ltd	Owner: Conga Foods Pty Ltd	Owner: Conga Foods Pty Ltd	Owner: Caffe Ducale Pty Ltd

1. The Opponent’s evidence also provides an extract from the Collins-Sansoni Italian- English Dictionary4 which shows that ‘ducale’ is an Italian adjective meaning ‘ducal’ or ‘duke’s’ in English; and the result of a Search for Australian Surnames wherein a search for the surname DUKE resulted in a count of 1235 instances on the electoral role of that surname.

1. Lastly the Opponent’s evidence exhibits archived pages of the Applicant’s website from the ‘Internet Archive: Wayback Machine’, dated from 28 February 2011 (the earliest available) to 15 July 2014. The archived pages do not appear to have captured all of the information  (there  are  large  blank  spaces  on the  archived  pages,  which  presumably

   contained text and/or images). Of what has been captured the image  appears on five of the six pages archived, the sixth page showing the stylised mark.

1. The Applicant’s evidence, specifically the declaration of Peter Frangoulis, contains the following statements:

   ·I established the DUKES brand in 2008. At that time, my Company was based in the Melbourne suburb of Windsor and I adopted the name DUKES after

3 I note that registration 509222 was cited during examination of both of the Applicant’s trade marks, and application 1557039 was cited during examination of the plain text mark. Those citations were overcome on the basis of honest concurrent use and prior continuous use. Neither registrations 914265 or 1319047 were cited during examination.

4 Macchi, Vladimiro, RCS Sansoni Editore S.p.A. Firenze, 1988.

Duke  Street  which was  going  to  be  the  original location  for  the  DUKES business.

·The DUKES Brand includes a number of different trade marks, all of which share the word DUKES. Various embodiments of the DUKES Brand is set out below, but the unifying features of these trade marks is the word DUKES.

·My Company’s profile in the competitive coffee industry has grown significantly since 2009 and we now provide our coffee products sold under the DUKES brand and  Logo to almost 100 cafes, restaurants and hotels as well as offering coffee at our dedicated DUKES branded cafes including our DUKES COFFEE HOUSE located at 247 Flinders Lane in the Melbourne CBD.

·My Company also has roasteries in Melbourne and Perth. In addition, my Company has a training centre located in Melbourne. At our centre, we train [baristas] in the art of coffee making.

1. The Applicant provides confidential sales figures for the years 2009 to 2016, which are significant, as well as confidential advertising expenditure also for the years 2009 to 2016, which are likewise significant (with particular escalation in the years 2014-2016).

1. Undated photographs of the   mark on shop signage, a door and a menu are in evidence as well as  an undated photograph of ‘Dukes  Coffee  Roasters’ depicted  in

   wrought iron and attached to a building wall.

1. Similarly, undated images of the website ‘ are in the Applicant’s evidence which show use of the stylised mark and the plain text mark on web pages advertising packages of coffee, coffee making equipment, art prints, a carry bag, and information pages about the source of the Applicant’s coffee, its location, its wholesale services, and coffee brewing guides. The Applicant’s trade marks are also shown in undated images of the Applicant’s Facebook® and Instagram® pages, the latter showing that the Applicant had 13,000 followers at the time the image was saved.

1. Lastly 53 dated articles are in evidence which name ‘Dukes Coffee’ or ‘Dukes Coffee Roasters’, published between September 2009 and March 2016. The articles are from

publications such as The Age, Australian Financial Review, Herald Sun, Sunday Telegraph, The Sydney Morning Herald, and The Australian, as well as industry specialist publications such as beanhunter.com, espressomelbourne.com and The Age Good Café Guide.

Section 41

1. As a preliminary matter I note that each of the Applicant’s trade marks is subject to different forms of legislation under s 41. The stylised mark was filed in 2012, nearly four years before the plain text mark. Section 41 was repealed and re-enacted by the the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which came into effect on 15 April 2013. The purpose of the changes made to s 41 was to clarify that the presumption of registrability applied to that section, whereas previously there had been a tension between the presumption and the step-by-step operation of ss 41(3) to 41(6).5 Nonetheless, I do not consider that the difference between the legislation applying to each of the Applicant’s trade marks materially affects the outcome of the determination – as will become clear I am satisfied in both cases that the trade marks are capable of distinguishing the Applicant’s claimed goods and services.

The stylised mark

1. As at the filing date of the stylised mark, 10 September 2012, s 41 of the Act relevantly provided:

   (2)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

(3)    In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)    If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)    the Registrar  is to consider  whether,  because  of  the combined  effect  of  the following:

5  See for example Blount Inc v Registrar of Trade Marks [1998] FCA 440 and Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891.

(i)   the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)  if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

(c)   if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

(6)    If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)   if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)   in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

1. The starting point is therefore an assessment of the extent to which the stylised mark, shown below for convenience, is inherently adapted to distinguish the goods and services of the Applicant, per s 41(3).

2. Inherent adaptation to distinguish is tested:

…by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the ordinary signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.6

1. Once the ordinary signification of the word is established an enquiry can then made into whether other traders might legitimately need to use it in relation to their own goods and services.7 The ordinary signification of the word ‘Dukes’ may be one of: a surname, a plural or possessive surname, a hereditary title, or a colloquial term for fists (as in, for

6  Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, cited in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’) [2014] HCA 48, [26].

7 Cantarella, [71].

example, the expression ‘put up your dukes’). The most relevant here, and that which is asserted by the Opponent, is that of a plural or possessive surname (albeit there is no apostrophe).

1. As stated previously the Opponent has conducted a Search for Australian Surnames for the surname DUKE which resulted in a count of 1235. The Opponent submits that DUKE is a common surname and, referencing IP Australia’s publically available Trade Marks Office Manual of Practice and Procedure (‘the Manual’), that a word which is not capable of distinguishing because it is a common surname will likewise not be capable of distinguishing in the possessive or plural forms.

1. It is useful here to reproduce the relevant parts of the Manual, at Part 22.16.

16.1 Searching for Australian Surnames

The Research Facility for Trade Marks offers search results for a word which is also an understood surname within Australia (see Australian Surnames field). It the word is an understood Australian surname, this field will indicate how common it may be considered (in number value)…

This search result should be taken into account when considering the likelihood that a trader with that name would wish to use the name in connection with his or her goods and/or services. The more common the surname, the less inherent adaptation to distinguish it will have. The consideration as to whether a trade marks containing or consisting of a surname is inherently capable of distinguishing is multifaceted however and how common it may be in number value is only one of the factors that should be considered.

16.4 Plural or Possessive Surnames

A word which is not capable of distinguishing because it is a common surname will likewise not be capable of distinguishing in the possessive or plural forms.

If a common surname is applied for in the plural form, and the plural form is an uncommon surname in its own right, a ground for rejection is still appropriate. The plural form of the surname takes precedence over the uncommon surname.

1. The count of 1235 for the surname DUKE indicates that the surname is not altogether infrequent in the Australian population, but neither is it so unusual that it may be considered rare or unlikely to be recognised as a surname. As an indication of scale the Registrar’s delegate in Garrett Electronics Inc8 noted ‘114,997 persons have the surname Smith and 29,798 have the surname Nguyen’.9 The count of 1235, although sufficient to

8 [2015] ATMO 48, [26].

9 At a time when the Registrar’s practice was to consider surnames common where they occurred more than 750 times in the population, taking into account also the nature of the goods or services, the nature of relevant customers and the practices of the relevant industry.

trigger s 41(5) in the context of the goods and services here, is accordingly not especially high.

1. Other considerations relevant to the question of distinctiveness include the nature of the goods and services, whether those in the relevant industries commonly use surnames as trade marks and whether the surname has other meanings or associations. Here the nature of the goods and services are relatively commonplace (with the exception perhaps of the services in class 40). They are not highly regulated, they do not require particular qualifications (although success in relevant industries is likely to be greater where traders are suitably qualified), nor do they require highly specialised equipment or infrastructure. There is no evidence before me as to whether traders in the relevant industries commonly use surnames as trade marks. However, given the nature of the goods and services is relatively commonplace and that the practice of using surnames as trade marks generally is, I accept, not unusual, I consider there to be a likelihood that some traders in these industries would use their surnames so. At the same time, as previously recognised the word ‘Dukes’ carries multiple significations. These, to a degree, add to the ‘ambiguity

   and richness of meaning from a consumer standpoint’.10 Lastly, it must be acknowledged

   that the stylised mark contains a degree of embellishment, which although of itself is not to such a degree that it renders the trade mark distinctive, is nonetheless a factor in assessing the mark’s capacity to distinguish the Applicant’s goods and services.

1. Bearing all of these factors in mind I consider that the stylised mark is to some degree inherently adapted to distinguish the Applicant’s goods and services from those of other traders, but is not so capable on that basis alone. Accordingly, I move on to a consideration of the Applicant’s use and/or any other circumstances, per s 41(5).

1. As a preliminary matter I will deal with the Opponent’s assertion that the evidence of use fails to show sufficient use of the mark applied for and that the articles in various publications do not demonstrate use of the stylised mark by the Applicant or its authorised users, but rather are third party references to the Applicant’s business.

10  Per Beach J in Red Energy Pty Limited v Registrar of Trade Marks [2018] FCA 1449, [13], discussing the distinctiveness of a word with multiple meanings.

1. In respect of the first assertion the Opponent submits that it is              , and to a lesser extent, the plain text mark DUKES COFFEE ROASTERS that is used. To that end, it is submitted, although ‘COFFEE ROASTERS’ may be descriptive of some of the claimed services it is not in relation to others, and even if the words were seen as descriptive they still form part of the mark used by the Applicant which does not constitute use of the mark applied for, per Master Plumbers and Mechanical Services Association of Australia v Master Plumbers and Mechanical Contractors Association of NSW (‘Master Plumbers’)11 and Woolworths Ltd v BP plc (No. 2).12

2. I do not find either of the cases cited by the Opponent relevant to the matter here. Woolworths Ltd v BP plc (No. 2) dealt with the colour green in respect of services stations. Evidence relating to the use of green alone was not considered to represent evidence of use of the trade mark applied for (which was the colour green, in combination with some other unspecified colours, as the predominant colour of parts of service stations). Of further issue was that the evidence did not show use of the colour as a trade mark. The significance of a colour as a trade mark and the potential for its branding power to be heightened or neutralised by the absence or presence of other colours are wholly different considerations to those before me. As discussed below, I do not consider the capacity of the element DUKES to distinguish the relevant goods or services to be materially affected by the presence or absence of the words ‘COFFEE ROASTERS’.

1. In Master Plumbers the omission of the geographical notation ‘NSW’ from the trade mark applied for, present in the mark shown to be used, had a significant impact because multiple such associations existed which were traditionally differentiated by a reference to a State (or to the Federal body). The delegate noted ‘Ordinarily, of course, such a simple geographical indication would not greatly contribute to the inherent adaptation of a trade mark’ before finding that:

   The present is a complex situation, involving a number of parties using similar renditions of the goddess Hygeia, continued dissent about the extent of rights, and cross-border trading issues…[the Applicant’s] case is based on the use of a different mark, one that is a significantly more precise indication of origin because it contains an indication of the state in question.

11 [2003] ATMO 44.

12 [2006] FCAFC 132.

1. Here, the words ‘coffee roasters’ do not carry such significance. They are merely descriptive or suggestive of the goods and services in question. The Applicant has provided a list of over 70 pending and registered trade marks which contain those words, many of which are registered in classes 30, 35, 40 and 43 (or some combination thereof), indicating, in my consideration, that services in those classes are typical in the industry and that the application of trade marks incorporating ‘coffee roasters’ to those services is not unusual. Accordingly I do not regard ‘coffee roasters’ as an essential feature contributing significantly to the identity of the trade mark as a whole.

1. I therefore do not consider that the presence of the element COFFEE ROASTERS renders the trade marks shown to be used in the evidence13 different to that applied for, in terms of s 7(1) of the Act.14 Accordingly I will consider such examples to be evidence of use of the Applicant’s trade marks, and specifically here, use of the stylised mark.

1. As to whether the references in third party publications can be considered as evidence of use, I consider that they can. The third party publications use ‘Dukes Coffee Roasters’ and ‘Dukes Coffee’ to refer to the coffee, café, and coffee roasting of the Applicant. They are not merely references to the Applicant’s business but rather identify those goods and services as being of the Applicant. The words accordingly serve the ‘badge of origin’

   function described  in  Coca-Cola  Co  v  All-Fect  Distributors  Ltd.15   Additionally,  the

   embellishment of the stylised mark does not substantially affect its identity: the font is not unusual, nor is the dotted underline.

1. Turning then to the evidence of use, the Applicant claims to have used its trade marks since 2008. Significant parts of the evidence are undated and are therefore of limited assistance. Nonetheless, I note that the Applicant made significant sales in the years 2009 to 2012 and incurred significant expenses in advertising and marketing for those years (although I bear in mind that not all of the 2012 figures will relate to the period before filing). I note also that 15 articles in The Age, Geelong Advertiser, Sunday Age, Stonnington Leader, and The Australian and on the website espressomelbourne.com date from before the filing date and refer to the Applicant’s coffee, coffee roasting and/or

13 Being those shown in paragraph 11, with the exception of the mark incorporating a device of an animal.

14 Which provides that the Registrar may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

15 [1999] FCA 1721

cafés, using the names ‘Dukes Coffee’ or ‘Dukes Coffee Roasters’. Lastly, the Opponent’s evidence from the Internet Archive: Wayback Machine shows that the Applicant has used the  sign upon its website since at least 28 February 2011.

1. These factors tend to indicate that the stylised mark acquired a degree of distinctiveness by the filing date. Coupled with later evidence showing that it has continued to distinguish the Applicant’s services (and therefore that the true position as at filing was that the trade mark was capable of distinguishing),16 I am satisfied on the basis of the evidence before me that the Applicant has satisfied the provisions of s 41(5) in respect of the stylised mark.

The plain text mark

1. Section 41 of the Act following its amendment in 2013 now relevantly provides:

   41 Trade mark not distinguishing applicant’s goods or services

   (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   …

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)This subsection applies to a trade mark if:

   (a)    the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)    the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)This subsection applies to a trade mark if:

   (a)    the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)    the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances.

1. The considerations relevant to the stylised mark are relevant also to the plain text mark. As discussed, the embellishment of the stylised mark is not so great that of itself it

16 Per the discussion of evidence of use after the filing date in Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [54].

contributes in any substantial manner to the mark’s identity as a whole. Accordingly, the stylised mark is in my estimation substantially identical to the plain text mark. Accordingly, the discussion already had in respect of inherent adaptation applies here also, such that I find the plain text mark is to some extent inherently adapted to distinguish and I move on to consider the combined effect of the inherent adaptation to distinguish, the evidence of use and any other circumstances.

1. As with the stylised mark, the Opponent submits that the evidence does not show use of the plain text mark. Its assertions in respect of the stylised mark are made in respect of the plain text mark also. I am satisfied that the evidence of use shows use of the plain text mark, for the same reasons as those already outlined – I do not consider there to be a substantial difference between the marks shown to be used in the evidence and the plain text mark.

1. As noted above significant parts of the Applicant’s evidence are undated and therefore of limited assistance. Nonetheless, in the case of the plain text mark there are a further four years of sales revenue and advertising expenditure prior to its filing date in evidence (although I note that not all of the 2016 figures will apply to the period before filing). Additionally all of the 53 dated articles, which appear in major Australian publications as well as industry-specific publications, relate to the period before filing. Lastly, the Opponent’s evidence from the ‘Internet Archive: Wayback Machine’ shows, in addition

   to use of the  sign since 2011, use of the sign              upon its website since 15 July 2014.

1. I am accordingly satisfied that the combined effect of the inherent adaptation of the plain text mark to distinguish the Applicant’s goods and services, and the use made of it, is such that the trade mark is capable of distinguishing per s 41(4).

1. Accordingly, the grounds of opposition under s 41 are not established in respect of either of the Applicant’s trade marks. I move on then to consider the grounds of opposition under s 44.

Section 44

1. Section 44 relevantly provides:

Identical etc. trade marks

44.(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.

…

(2)   Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) 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 services or closely related goods; or

(ii)   a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

…

(3)If the Registrar in either case is satisfied:

(a)  that there has been 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 include that the use of the trade mark is to be restricted to that particular area.

…

(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.

1. I note that the priority date, referred to in the text of s 44, is in this case the same as the filing date in respect of each of the Applicant’s trade marks.

1. The trade marks relied upon by the Opponent for its oppositions under s 44 are reproduced again, below, for convenience. The first three are relied upon in respect of the stylised mark, and all four are relied upon in respect of the plain text mark.

DUKE’S	DUCALE	THE DUKE
Registration No.: 509222	Registration No.: 914265	Registration No.: 1319047	Application No.: 1557039
Priority date: 21 April 1989	Priority date: 27 May 2002	Priority date: 2 September 2009	Priority date: 15 May 2013
Goods: Class 29: All goods in this class, edible oils and fats.	Goods: Class 30: Coffee, coffee flavouring, coffee beverages in this class.	Goods: Class 30: Coffee, coffee flavouring, coffee beverages in this class. Class 32: Soft drinks, spring water, mineral water.	Goods: Class 30: Coffee, coffee flavouring, coffee beverages in this class.
Owner: Ngo Chew Hong Edible Oil Pte Ltd	Owner: Conga Foods Pty Ltd	Owner: Conga Foods Pty Ltd	Owner: Caffe Ducale Pty Ltd

1. Applying s 44 to the matter at hand, the questions for my determination are:

·whether the priority dates of the Applicant’s trade marks are later than that of the prior trade marks;

·whether the Applicant’s trade marks are in respect of goods and/or services similar or closely related to those of the prior trade marks;

·whether the Applicant’s trade marks are substantially identical or deceptively similar to the prior trade marks; and

·whether, if the previous questions are answered in the affirmative, I am satisfied that there has been honest concurrent use or prior continuous use of the Applicant’s trade marks or that other circumstances exist which would make acceptance of the Applicant’s trade marks proper.

Prior registration 509222

1. I consider it straightforward that the priority date of registration 509222 is earlier than that of both of the Applicant’s trade marks.

1. As submitted by the Opponent, registration 509222 is in respect of goods similar to those of the Applicant and closely related to some of the Applicant’s services. For example, the ‘edible oils and fats’ specified in registration 509222 are similar to the ‘coffee oils’ specified in the Applicant’s trade marks. Furthermore, since registration 509222 is in respect of ‘all goods’ in class 29, it implicitly covers goods such as ‘milk beverages’, ‘flavoured milk’ and ‘prepared foods’. They have been found to be similar to ‘coffee

beverages’, ‘prepared coffee’ and ‘provision of meals and refreshments’ respectively.17 Coffee beverages, prepared coffee and the provision of meals and refreshments are encompassed within the scope of the Applicant’s goods and services, and accordingly these goods and services, at least, are similar or closely related to the goods of registration 509222.

1. Windeyer  J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd

   (‘Shell’) articulated the test for substantial identity as:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.18

For convenience the trade marks are reproduced side by side, below.

Registration 509222	The stylised mark	The plain text mark
DUKE’S	DUKES

1. In a side by side comparison, the differences between the trade marks are trivial. The difference in stylisation, as previously discussed, is not material. All are pronounced identically. The presence of the apostrophe in registration 509222 makes explicit that it is a possessive form of the word, whereas it is not explicit in the Applicant’s trade marks. Nonetheless, whilst there is some ambiguity as to whether the Applicant’s trade marks are a possessive or plural form of the word ‘duke’, this absence of an apostrophe means only that the trade marks are substantially identical rather than identical.

1. I proceed then to a consideration of whether the Applicant has made honest concurrent use or prior continuous use of its trade marks, per ss 44(3) and 44(4). The Opponent submits, for the same reasons as those given in respect of the ground under s 41, that the evidence does not show use of the trade marks applied for prior to either the priority dates of the Applicant’s trade marks or prior to the priority date of registration 509222.

17 See Société des Produits Nestlé SA v Strasburger Enterprises Inc [1995] ATMO 5; McDonald’s Corp v Victoria Dairy Industry Authority (1987) AIPC 90-425; and Winton Shire Council v Lomas [2002] FCA 288, that finding not overturned on appeal.

18 [1963] HCA 66, [12].

1. For the reasons already articulated in respect of the ground under s 41, I am satisfied that the Applicant’s evidence shows use of the Applicant’s trade marks in terms of s 7(1).

1. The evidence does not show use prior to 21 April 1989, being the priority date of registration 509222. Accordingly the provisions of prior continuous use under s 44(4) do not apply.

1. The evidence does show use from 2009 in the form of 53 third party articles (15 before the priority date of the stylised mark), and from 2011 upon the Applicant’s website. I note also the sales figures and advertising expenditure for the years 2009 to 2016 (bearing in mind that only those prior to 2012 are relevant to the stylised mark). I consider therefore that the extent of use by the Applicant has been reasonable. The Applicant has given a reasonable explanation for its adoption of the name DUKES, such that I am satisfied it was honestly adopted. Despite there being a high degree of confusion likely between the trade marks themselves, and despite at least three years of concurrent trading (in respect of the stylised mark – seven years of concurrent trading in respect of the plain text mark), no instances of confusion are in evidence. The inconvenience to the Applicant would be considerable should it be unable to protect its trade marks. It appears to have built considerable recognition since 2009 of its branding of goods and services. There is no evidence before me that goes to the potential inconvenience to the owner of registration 509222, so I am unable to say what the relative inconvenience would be to it. I do note in any event that the owner of registration 509222 would have been notified on two separate

   occasions of the acceptance of the Applicant’s trade marks,19  and it has not taken any

   action.

1. I am therefore satisfied that sufficient public use of the Applicant’s trade marks was made both before the priority date of the stylised trade mark and the priority date of the plain text mark, such that the provisions of s 44(3)(a) may be applied to both of the Applicant’s trade marks with respect to registration 509222.

Prior registrations 914265 and 1319047

1. Where appropriate I will refer to registrations 914265 and 1319047 collectively as ‘the Ducale marks’. I consider it straightforward that the priority dates of the Ducale marks

19  Owing to the Registrar’s practice of notifying the owners of similar trade marks when a mark has been registered under the provisions of s 44(3) or 44(4).

are before those of the Applicant’s trade marks, and that the goods in class 30 of the Ducale marks are similar at least to the goods in class 30 of the Applicant’s trade marks.

1. For the purposes of the side by side comparison required to establish substantial identity, the party’s trade marks are reproduced below.

Registration 914265	Registration 1319047	The styled mark	The plain text mark
DUCALE	DUKES

1. I do not consider the Ducale marks substantially identical to the Applicant’s trade marks. As discussed in more detail below, they are differ visually, aurally, and conceptually.

1. Deceptive similarity relies upon impression rather than a side by side comparison. The expression ‘deceptively similar’ is defined in s 10 of the Act, which indicates ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. The assessment of impression relies upon ‘on the one hand, the impression based on the recollection of [the prior trade mark], that persons of ordinary intelligence and memory would have; and, on

   the other hand, the impression that such persons would get from [the later trade mark]’.20

   Relevant also to this assessment is that the impressions left by the trade marks may be imperfectly recalled.21

1. The Opponent submits that the Ducale marks may be translated from Italian as meaning ‘Ducal Coffee’ or ‘Ducal’, and that the extract from the Italian-English Dictionary in the Opponent’s evidence shows that ‘Ducale’ may be translated into English as ‘Duke’s’, such that the Ducale marks may be seen as ‘Duke’s Coffee’ and ‘Duke’s’. On account of the shared idea of the trade marks, and a submitted significant Italian speaking population of Australia, the Opponent submits that consumers familiar with the meaning of CAFFÉ DUCALE and DUCALE in English may be led to believe that the DUKES marks are connected to them. The Opponent further submits that the similarity between DUCALE and DUKES is increased on account of the first syllable being identical (although I note DUKES has only one syllable and this obviously is not identical to the first syllable, DUC-, of DUCALE).

20 Shell, supra, [13].

21 De Cordova v Vick Chemical Co, (1951) 68 RPC 103, 106.

1. I do not consider the Ducale marks to be deceptively similar to the Applicant’s trade marks in terms of either their visual or aural similarity. Visually, it is true that both sets of trade marks commence with the identical letters ‘DU’. However DUCALE contains clearly different letters to DUKES: ‘CALE’ as opposed to ‘KES’. Additionally I consider that the presence of the letter ‘K’ is, to a degree, memorable owing to its relatively less frequent occurrence in English words. Aurally, the pronunciation of DUCALE is somewhat ambiguous. It is a word unlikely to be familiar to a majority of Australian consumers, who may consider that it should be pronounced ‘dew-cale’ or ‘dew-ca-lay’. On the other hand, Australian consumers will know the pronunciation of DUKES, which is significantly different to either of the possible pronunciations of DUCALE. I note further that DUKES is a single-syllable word, whereas DUCALE has either two or three syllables (depending upon how the observer pronounces the word).

1. In terms of conceptual similarity, I am not satisfied that a significant number of Australian consumers would be aware of the meaning of DUCALE. The Opponent cites Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’), namely that there is ‘a large Italian speaking population in Australia’. 22 I note firstly  that the Opponent cites the dissenting judgement of Gageler J. The majority of the High Court agreed with the primary judge’s finding that only a ‘very small minority’ of English speakers in Australia would understand the meaning of the Italian words ORO and CINQUE STELLE and that the Italian language is not ‘so widely spread’ that the words would generally be understood to mean ‘gold’ and ‘five stars’ respectively. Their Honours noted ‘it is not the meaning of a foreign word as translated which is critical, although it might be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods.’23

2. There is no evidence before me that English speakers in Australia would be any more aware of the meaning of DUCALE than of ORO or CINQUE STELLE, the latter two being words which arguably would have had a greater likelihood of comprehension given their translated meanings are commonly used as indications of quality. Moreover I am not satisfied that DUCALE would be recognised as an Italian word, as opposed to an assumption it is a name or invented word. Similarly I am not satisfied that the translation to  ‘ducal’  would  be  connected,  in  the  minds  of  Australian  consumers,  to  the  word

22 [2014] HCA 48, [101]-[103].

23 Ibid, [48].

DUKES. ‘Ducal’ is not commonly used in Australia, perhaps owing to the absence of hereditary titles in this society.

1. For these reasons I am not satisfied that either of the Applicant’s trade marks are deceptively similar to  or DUCALE. The s 44 ground of opposition is therefore not established on the basis of registrations 914265 or 1319047.

Prior application 1557039

1. The ground of opposition under s 44 based upon prior application 1557039 is pursued only in respect of the plain text mark (the stylised mark having a priority date earlier than that of application 1557039). I note that 1557039 has not achieved registration, having had application 1513450 (being the stylised mark in this decision) cited against it.

1. It is straightforward that the priority date of 1557039 is earlier than that of the plain text mark, and that goods of the parties, at least, are similar.

1. Side by side, the trade marks at issue are THE DUKE versus DUKES. Although they are very close, I do not consider them to be substantially identical. THE DUKE refers to a (single) person holding a hereditary title, whereas DUKES may refer to a surname, fists, or the plural of the title ‘Duke’.

1. I do, however, consider the trade marks to be deceptively similar. Whilst there is some ambiguity as to precisely what the plain text mark refers to, there is a likelihood that it would be taken to refer to the title ‘Duke’. A plural reference to the title, being DUKES, is conceptually linked to a reference to a person holding the title, THE DUKE. Moreover, the aural and visual similarity arising from the presence of DUKE in both trade marks lends further weight to their similarity.

1. Given I am satisfied that prior application 1557039 is deceptively similar to the plain text mark, I turn to consider whether the provisions of s 44(3) or 44(4) apply.

1. For the reasons already expressed in this decision, I consider that use of the trade marks shown in the evidence is use of both of the Applicant’s trade marks – the differences not substantially affecting their identity. Use has been shown in respect of, at least, coffee and cafes since 2009. This use predates the priority date of application 1557039, being 15 May 2013. Accordingly, the prior continuous use provisions of s 44(4) apply.

1. As such, the ground of opposition under s 44 based upon prior application 1557039 is not established.

Decision

1. Subsection 55(1) of the Act provides:

55  Decision

(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:       For limitations see section 6.

1. The Opponent has not established any ground of opposition.

1. Accordingly trade mark application 1513450 may proceed to registration under the provisions of 41(5) and 44(3)(a) one month from the date of this decision. Similarly, trade mark application 1777007 may proceed to registration under the provisions of 41(4), 44(3)(a) and 44(4) one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.

1. Costs normally follow the event, and as there is no apparent reason to depart from the principle I award costs against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Nicole Worth Hearing Officer

Oppositions and Hearings 26 October 2018