Caffe Ducale Pty Ltd v White Prime Group Pty Ltd

[2018] ATMO 171

TRADE MARKS ACT 1995

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

ReOpposition by Horizons (Asia) Pty Ltd to registration of trade mark application 1758589 (11, 32, 35) – ALKALINE WATER ONLINE (logo) - in the name of White Prime Group Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: written submissions by Ng Lee

Applicant: written submissions by Cooper Mills Lawyers

Decision:                   2018 ATMO 171

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42, 43, 44, 58, 58A, 60, 61 and 62A considered – none established – onus on Opponent in s 61to establish prima facie that sign is a geographical indication – trade mark may proceed to registration

Background

1. This decision concerns an opposition brought by Horizons (Asia) Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark the subject of the application detailed below in the name of White Prime Group Pty Ltd (‘the Applicant’):

Application Number:

1758589

Filing Date:

13 March 2013

Goods and Services:

Class 11: Apparatus for water filtering; Domestic water filtering apparatus; Domestic water filtering units; Drinking water filters; Machines for water filtering (purifying); Water filtering apparatus; Water filtering apparatus for domestic use

Class 32: Natural mineral water (not for medical purposes)

Class 35: Retailing of goods (by any means); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)

(‘the Applicant’s Goods and Services’)

Trade Mark:

(‘the Applicant’s Trade Mark’)

2. On 4 August 2016 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 6 October 2016. Following the grant of an extension of time to do so, a Statement of Grounds and Particulars was filed on 11 November 2016 (‘the SGP’). The SGP nominated grounds of opposition under ss 41, 42, 43, 44, 58, 58A, 60, 61 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 6 February 2017.

Evidence

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 30 April 2017. This evidence consists of:

·Declaration made on 28 April 2017 by Ng Lee with Exhibits NL-1 to NL-5 (‘Lee’). Mr Lee describes himself as an ‘administrator’ of the Opponent and—at the end of the Opponent’s submissions, discussed below—its ‘Authorised Representative’.

4. The Applicant filed Evidence in Answer (‘EIA’) on 2 August 2017. This evidence consists of:

·Declaration made on 1 July 2017 by Kemal Kose, the Director of the Applicant, with Annexures 1 to 13 (‘the Kose declaration’).

5. The Opponent filed Evidence in Reply (‘EIR’) on 7 October 2017. This evidence consists of:

·Declaration made on 2 October 2017 by Ng Lee with Annexures Exhibits HA-1 to HA-3 (‘Lee 2’).

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions; both parties chose to rely on written submissions. The Opponent’s submissions were prepared by Ng Lee. The Applicant’s submissions were prepared by its legal representatives Cooper Mills Lawyers.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, 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.

The Opponent

8. According to Lee 1, the Opponent:

has engaged in international trading and distribution of bottled water and a range of air and water machinery goods and services for approximately 8 years. Their operation is based in New South Wales, Australia. They deal directly with Australian manufacturers and overseas importers/distributors mainly in Asia. They are also engaged in direct marketing and selling a range of bottled waters and drinks to consumers and traders in and outside of Australia.

In about early 2012, [the Opponent] arranged to produce their own brand of bottled water named ‘Water Online’ as well as set up a purpose built on-line store under the same name ‘Water Online’ (namely, for the purpose of marketing their own brand of water products and a variety of other Australian brand waters and drinks, the by-products of occasional surplus of goods sent to overseas. As part of the business plans, [the Opponent] took steps to apply for trade mark registrations of ‘Water Online’ in standard character text but was informed by IP Australia that the mark was not sufficiently distinctive and consequently [the Opponent] had the mark designed in a stylised font, which was accepted and registered …

9. The Opponent is the owner of the registered trade marks detailed below (‘the Opponent’s Registrations’):

Trade Mark Number:

1486095

Priority Date:

17 April 2012

Goods:

Class 32: Waters including spring waters, mineral waters and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; beer; syrups and other preparations for making beverages

(‘the 6095 Goods’)

Trade Mark:

Trade Mark Number:

1486096

Priority Date:

17 April 2012

Goods:

Class 35: Advertising; business management; direct marketing and selling

(‘the 6096 Services’)

Trade Mark:

10.     In this decision the trade mark which is the subject of the Opponent’s Registrations, above, will be referred to as the Opponent’s Trade Mark.

The Applicant

11.     According to the Kose declaration:

The Applicant’s brand was created by me in or about January 2016.

I created the brand ALKALINE WATER ONLINE but decided it was important that those words accompany a distinctive graphical element to express the focus of the brand, which is ‘hydrating a dry continent (being Australia) with natural water’. …

The Applicant has made bona fide and extensive use of [the Applicant’s Trade Mark] in Australia, in trade and commerce, in relation to [the Applicant’s Goods and Services] …

Grounds of Opposition, Onus and Standard of Proof

12. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 41, 42, 43, 44, 58, 58A, 60, 61 and 62A of the Act. The Opponent has also provided submissions in respect of s 59. However, this ground was not nominated in the SGP and there has been no request to amend the SGP to add the ground. A s 59 ground of opposition will, therefore, not be considered.

13.     The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 13 March 2013, being the filing date of the application (‘the Relevant Date’).[3]

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

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

A comparison of the trade marks

14.     A number of the nominated grounds of opposition require an assessment of the similarity of the trade marks relevant to this matter. To facilitate this assessment the Applicant’s Trade Mark and the Opponent’s Trade Mark are juxtaposed below:

The Applicant’s Trade Mark The Opponent’s Trade Mark

15.     The only elements common to both trade marks are the words ‘Water’ and ‘Online’. The Applicant’s Trade Mark includes the additional word ‘Alkaline’. The words in the Applicant’s Trade Mark form the expression ‘Alkaline Water Online’ and those in the Opponent’s Trade Mark ‘Water Online’. Both of these expressions lack distinctiveness in connection with the goods and services with which the parties are concerned. The words indicate merely that the respective goods are alkaline water or water, which is available to purchase online, or that the services concern the online supply of those goods.

16.     The Opponent’s earlier attempt to register the plain words ‘Water Online’ failed due to their lack of distinctiveness. It was only once those words were sufficiently stylised that a trade mark examiner considered the Opponent was able to register a trade mark comprised of those words. The applications for the Opponent’s Trade Mark were accepted only because of the stylisation of the trade mark—in particular the stylisation of the ‘Online’ element. It is the stylisation of the Opponent’s Trade Mark which is distinctive, not the words within it.

17.     Had the Applicant attempted to register simply the plain words ‘Alkaline Water Online’ it would likely have encountered the same barrier to registration that the Opponent faced in its attempt to register ‘Water Online’. There is negligible stylisation of the words in the Applicant’s Trade Mark; however, it is the addition of the stylised map of Australia along with the (perhaps butterfly) device above the ‘i’ in Alkaline that makes the Applicant’s Trade Mark sufficiently inherently adapted to distinguish. It is the devices in the Applicant’s Trade Mark which give it its distinctiveness, not the words within it.

18.     The overall impression created by the stylisation of the Opponent’s Trade Mark is quite different to the overall impression of the Applicant’s Trade Mark. The significance of these differences will be discussed further, below, in connection with the grounds of opposition where a comparison of the trade marks is necessary.

Section 41

19. Section 41 of the Act 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.

Note:      For goods of a person and services of a person see section 6.

(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.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

20.     The case law setting out the necessary considerations for determining whether a trade mark is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington said:

The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.[4]

[4] (1913) AC 624, 634-5.

21.     In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

[W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of 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 signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[5]

[5] (1964) 111 CLR 511, 514.

22. The s 41 ground of opposition was particularised in the SGP as follows:

[The Applicant’s Trade Mark] is not capable of distinguishing either the Applicant’s name WHITE PREMIUM (sic) GROUP PTY LTD or the good and services promoted under [the Applicant’s Trade Mark], which has a predominant display of map (sic) of Australia next to the words ALKALINE WATER ONLINE. In particular, [the Applicant’s Trade Mark] is seen mostly used in plain character text ALKALINE WATER ONLINE rather than the applied for graphic logo, and is a way to deter/prevent other traders to use the same descriptor in ordinary course of trade in respect of similar goods/services to those of the application.

23.     The Opponent has asserted in its particulars that the Applicant is ‘mostly’ using the plain words ‘ALKALINE WATER ONLINE rather than the applied for graphic logo’. This may, or may not, be the case. That the Applicant may be using the plain words ‘alkaline water online’ in its domain name or on its website is of no concern here. This ground of opposition, and all others discussed in this decision, are concerned only with the Applicant’s Trade Mark as applied for.

24.     The Opponent has made lengthy submissions regarding the lack of distinctiveness of the words ‘alkaline water online’: submissions which I accept.  The appearance of non-distinctive words within composite or stylised trade marks is not uncommon; the words comprising the Opponent’s Trade Mark are similarly non-distinctive (at least the meaning of those words is non-distinctive). Such non-distinctive aspects do not necessarily prevent a trade mark from being inherently adapted to distinguish the goods and/or services of the owner of the trade mark from the goods or services of other traders. As touched on in my discussion headed A comparison of the trade marks beginning at para 14, above, distinctive stylisation and/or additional distinctive elements may serve to make a trade mark distinctive when considered as a whole.

25.     In the present matter, the particular combination of the distinctive material (the graphical devices) and the non-distinctive material (the words) which constitute the Applicant’s Trade Mark is not one which other traders are likely to think of and wish to use in connection with their similar goods or services. The combination is sufficient to make the Applicant’s Trade Mark inherently adapted to distinguish the Applicant’s Goods and Services from the similar goods and services of other traders. The Opponent has failed to establish this ground of opposition.

Section 44

26. Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a)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.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)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.

Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

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

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note: For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)      the similar goods or closely related services; or

(ii)     the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

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

Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

27. In the SGP the Opponent nominated the Opponent’s Registrations in respect of s 44.

28. To successfully oppose the application pursuant to s 44 of the Act the Opponent needs to establish the requirements of s 44(1) and/or 44(2), i.e. that:

·     the Opponent’s Registrations have a priority date which is earlier than the Relevant Date (‘the first requirement’); and

·     the Opponent’s Registrations are in respect of at least some goods/services which are similar/closely related to at least some of the Applicant’s Goods and Services (‘the second requirement’); and

·     The Opponent’s Trade Mark is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the third requirement’).

29.     The Opponent’s Registrations have priority dates which are earlier than the Relevant Date. The 6095 Goods encompass natural mineral water (not for medical purposes) claimed by the Applicant in Class 32. Of the 6096 services, direct marketing and selling are similar to retailing of goods (by any means) claimed by the Applicant in the same class. The first and second requirements are, therefore, satisfied. I move now to consider the third requirement.

Substantially identical or deceptively similar?

30.     With reference to my discussion headed A comparison of the trade marks beginning at para 14, above, I am satisfied that on a side by side comparison the Applicant’s Trade Mark and the Opponent’s Trade Mark are not identical or substantially identical due to the significant differences between them.[6]

[6] Applying the test in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12].

31.     Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[7]

[7] [1963] HCA 66, [13].

32. The Opponent’s submissions in respect of this ground of opposition have also been based in part on the use of the plain words ‘alkaline water online’ by the Applicant. The relevant consideration under s 44 is whether the Applicant’s Trade Mark as applied for is deceptively similar to the Opponent’s Trade Mark as registered.

33.     The Opponent has also submitted that the connotations contained in the Applicant’s Trade Mark and the Opponent’s Trade Mark are similar, submitting in part:

[T]he impression connoted by the general public derived from the appearance, sound (pronunciation) and connoted meaning must be that the offered goods and services are of alkaline water sold or obtainable online, such as those sold under the Opponent’s earlier mark WATER ONLINE via its online portal …

It is contended that the conflicting marks need not be compared side by side, but rather the connoted meanings perceived by the general public as to the similarities or confusions arisen due to such similarities.(sic) In this instance, it is without doubt that [the Applicant’s Trade Mark], adding a prefix ‘ALKALINE’ to what is the Opponent’s earlier mark ‘WATER ONLINE’ is indeed unavoidably … deceptively similar to the Opponent’s mark.

34.     Again, the relevant comparison is whether the Applicant’s Trade Mark when considered as a whole is deceptively similar to the Opponent’s Trade Mark. Both trade marks suggest that the respective owners sell water online, be that alkaline or otherwise. However, it is not this suggestion contained in the trade marks that distinguishes the trade source. It is important to remember that it is deception or confusion as to trade source that is implicitly referred to in s 10. As discussed above, it is the stylisation and additional elements in the respective trade marks which serve to distinguish the trade sources here.

35.     It is open to any trader to sell water online. To find that any trader who wished to include the words ‘water online’ in their trade mark—in the absence of any other similarity between the trade marks—was attempting to register a trade mark which was deceptively similar to the Opponent’s Trade Mark would be to grant to the Opponent a monopoly in words which it ought not have. Doing so would grant a monopoly in words ‘other traders are likely, in the ordinary course of their businesses and without improper motive’ desire to use ‘upon or in connexion with their own goods’.[8] This would limit ‘the common right of the public to make honest use of words forming part of the common heritage’.[9] This cannot be the intention of the Act.

[8] Registrar of Trade Marks v W & G Du Cros Ltd (1913) AC 624, 634-5.

[9] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, 514.

36.     Referring, again, to my discussion headed A comparison of the trade marks beginning at para 14, above, there are significant differences between the respective trade marks. The differences are sufficient such that the Applicant’s Trade Mark is not likely to deceive or cause confusion. The Opponent has, therefore, failed to establish this ground of opposition.

Section 58

37. Section 58 of the Act is reproduced below:

Section 58 – Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:For applicant see section 6.

38.     In the SGP the Opponent particularised this ground of opposition as follows:

The opposed mark ALKALINE WATER ONLINE are for goods and services identical to WATER ONLINE registered under trade mark numbers 1486095 and 1486096 with first use in Australia in as early as April 2012, which is more than four years earlier than the priority date of the opposed application

39.     The owner of a trade mark for particular good/services is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:

·     that the Applicant’s Trade Mark is identical, or substantially identical, to the Opponents’ Trade Mark;[10]

·     that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods and services for which the Opponent’s Trade Mark was used;[11] and

·     that the Opponent has the earlier claim to ownership of the Applicant’s Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Applicant’s Trade Mark by the Applicant.[12]

[10] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

[11] Re Hicks’ Trade Mark (1897) 22 VLR 636.

[12] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

40. The Opponent relies on its use of the Opponent’s Trade Mark to support this ground of opposition. I found in my discussion of the s 44 ground of opposition, above, that the Opponent’s Trade Mark is not identical or substantially identical to the Applicant’s Trade Mark. This ground of opposition has, therefore, fallen at the first hurdle. The Opponent has failed to establish this ground of opposition.

Section 58A

41. The ground of opposition under s 58A is particularised in the SGP as follows:

Based on the contentions in the abovementioned paragraphs, the Opponent believes it does have earlier use of the same similar trade mark to [the Applicant’s Trade Mark] and accordingly, the ground of s 58A is met (sic) out.

42. Section 58A is reproduced below:

Section 58A – Opponent’s earlier use of similar trade mark

(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a)subsection 44(4); or

(b)a similar provision of the regulations made for the purposes of Part 17A.

Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a)first used the similar trade mark in respect of:

(i)    similar goods or closely related services; or

(ii)   similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b)has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:  For predecessor in title see section 6.

43. The Applicant’s Trade Mark was not accepted because of s 44(4) or a similar provision of the regulations made for the purposes of Part 17A: as is required by s 58A(1) to enliven the remaining provisions of s 58A. Consequently, this ground of opposition is not available to the Opponent.

Section 60

44. The ground based on s 60 of the Act is particularised in the SGP as follows:

[The Opponent] has acquired a reputation in Australia and overseas from as early as April 2012 which predates the priority date of the opposed application by minimum four years for the same types of goods and services in classes 32 and 35 and the use has continued from 2012 to present.

45. Section 60 of the Act is reproduced below:

Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

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.

46. To establish a ground of opposition under s 60 the Opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.

47.     In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[13] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[14]

[13] [2000] FCA 1335, [81].

[14] [1992] FCA 159, [118].

48.     On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[15]

[15] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

49. As stated above, as well as the consideration regarding reputation, another factor relevant to an opposition under s 60 is the question of what constitutes a significant number of persons in the relevant market. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[16] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:

What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[17]

[16] [2000] FCA 1587.

[17] Ibid [91]. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted.

50.     It is not clear from the particulars in the SGP which trade mark(s) the Opponent is relying upon to support this ground of opposition. The Opponent’s submissions are also of limited assistance in answering this question. The Opponent has submitted:

The Opponent's predecessor in title has promoted bottled natural alkaline water from 2009 to the present. The Opponent's set up of the purpose built online selling platform in as early as April 2012, offers on exclusive basis various types and brands of Australian bottled water, including that of the category of natural alkaline water under the Opponent's own brand KANGEN. …

[T]he Opponent has continued to maintain its market position as a reliable and established source of supply for natural waters originated from Australia, including natural alkaline water, and has consistently grown and accumulated a customer base for such goods and services in Australia (nationwide) and overseas for in excess of 5 years. Unlike its competitors, the Opponent's reputation and goodwill in relation to supply of water goods and services is gained from the characteristics and quality standard of its offered brands rather than gimmicky marketing slogans and/or non‑qualified health claims.

The entering of the Applicant's business, ALKALINE WATER ONLINE, claimed to have commenced trading in Australia in 2016, is not only very likely to deceive and/or confuse the marketplace that the offered goods and services are that of the alkaline water quality originated from Australia, which it is not, there is a real and tangible risk of a misleading connotation or confusion that the Applicant's goods and services are affiliated with, licensed by or emanated from the same source as the Opponent's established brand of WATER ONLINE goods and services on offer online in Australia since 5 years ago.

In conjunction with the facts and evidence provided for the opposition, the Opponents holds that its established reputation and goodwill for being a quality brand and reliable source of supply for goods and services relating to bottled water of Australian origin is unique and is rivalled by none. Accordingly, the Opponent believes the ground under Section 60 is made out.

51. The Opponent has referred in its submissions to its offering ‘various types and brands of Australian bottled water including … KANGEN’. The Opponent has also referred to its ‘established brand of WATER ONLINE goods and services’. The submissions by the Opponent suggest that it has made the (not uncommon) error of confusing the requirement under s 60 for a particular trade mark to have acquired a reputation, with the acquisition of a reputation by the Opponent itself. In its submissions the Applicant has noted the same lack of clarity and confined its submissions in respect of this ground to the Opponent’s Trade Mark and the plain words ‘Water Online’.

52.     In any case, the Opponent’s evidence does not satisfy me that any trade mark which might support this ground of opposition had, at the Relevant Date, acquired a reputation of any significance. The Opponent’s evidence includes: examples of use of the Opponent’s Trade Mark and the plain words ‘Water Online’ on goods on a website selling bottled water; a very few invoices bearing the Opponent’s Trade Mark; and internet search results which demonstrate little more than the inherent lack of distinctiveness of the expression ‘water online’. There are no sales figures or promotional expenditure disclosed beyond the ‘setup costs for the “Water Online” operation’.

53.     The Opponent has failed to satisfy me that any trade mark which might support this ground of opposition had acquired a reputation in Australia at the Relevant Date. Consequently, the Opponent has failed to establish this ground of opposition.

Section 62A

54. In the SGP the ground under s 62A was particularised as follows:

By exercising lay diligence of an average business person in conducting researches in trade mark office and domain WHOIS data, it is unlikely that the applicant would not be aware of pre-existing and long established trade marks such as WATER ONLINE prior to applying to register ALKALINE WATER ONLINE as recently as 6 months ago other than that the application of the opposed mark and its associated business and domain names (such as afkalinewateronline.com.au) is made in bad faith.

55. Section 62A of the Act is reproduced below:

62A Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

56.     The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provides some non-exhaustive examples of applications made in bad faith:

• persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
• persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
• persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

57.     The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section of the Act. In that case, Dodds-Streeton J made the following comments:

Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards. …

The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[18]

[18] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [24]-[26].

58.     Her Honour continued later in the same decision:

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[19]

[19] Ibid [165]-[166].

59.     The Opponent’s submissions in respect of this ground concern matters which, even were they accepted to be so, do not indicate that the application was made in bad faith. Matters such as: how many bottles of water the Applicant might have sold; what trade marks those bottles might have borne; and, whether use of the Applicant’s Trade Mark on brochures and business cards constitutes use as a trade mark, do not support the Opponent’s case. The Applicant in this matter has applied to register a trade which is not substantially identical with, nor even deceptively similar to, the Opponent’s Trade Mark. The mere presence in the Applicant’s Trade Mark of some non-distinctive elements which also happen to appear in the Opponent’s Trade Mark does not mean that the application was made in bad faith. This is so whether or not the Applicant was aware of the Opponent’s Trade Mark. The Opponent has failed to establish this ground of opposition.

Section 42

1. Section 42 of the Act is reproduced below:

   42 Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a) the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law.

   61. Section 42 contains two distinct grounds of opposition. The ground of opposition under sub-s (a) allows registration to be opposed on the basis of the scandalous nature of the trade mark or scandalous material contained within a trade mark. The ground of opposition under sub-s (b) allows registration to be opposed on the basis that use of a trade mark would be contrary to law. The particulars for these grounds provided in the SGP are as follows:

   [The Applicant’s Trade Mark] is scandalous and contrary to law, it is an imitation and infringement of the Opponent’s registered mark WATER ONLINE used for the same goods including bottled alkaline water.

   62.     The Opponent’s submissions with respect to this ground are headed ‘SECTION 42A (sic) – Use of trade mark would be contrary to law’ (‘the SECTION 42A heading’). I note that there is no s 42A in the Act, however it is apparent that the submissions under this heading are an attempt to address the ground of opposition under s 42(b). The Opponent’s submissions under this heading do not specifically refer to any matter within the Applicant’s Trade Mark which it considers to be scandalous or address why the trade mark as a whole might be considered scandalous—nor do any other submissions by the Opponent. Neither is there anything in the evidence which supports this ground. The Opponent has, consequently, failed to establish the ground of opposition under s 42(a). I move now to consider further the Opponent’s submissions which apparently relate to the ground of opposition under s 42(b).

   63. In the case of the ground of opposition under s 42(b), the onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[20]

   [20] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   64. The opening sentence of the Opponent’s submissions under the SECTION 42A heading is ‘It is prohibited by law - “Australian Consumer Laws (sic), Sections 18 and 29” for a person to mislead or deceive in trade or commerce’. I take that sentence to be a reference to the ss 18 and 29 of the Australian Consumer Law (‘the ACL’) which is set out in Schedule 2 of the Competition and Consumer Act 2010 (Cth). There appear to be three main thrusts to the submissions which follow that sentence. The first thrust is that:

   [C]onsumers would likely be mislead or deceived into believing that the goods sold by the Applicant under [the Applicant’s Trade Mark] were sold by the Opponent, or otherwise associated with the Opponent and/or licenced by the Opponent.

   65. The first thrust is similar to the ground of opposition under s 60 in that it relies on a reputation acquired by a trade mark. In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the ACL is a more stringent test than that for deception or confusion under s 60,[21] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL on the basis of the first thrust.

   [21] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

   66. Section 29 of the ACL consists of a large number of provisions. The Opponent has not specified which of those provisions it is relying upon. The first thrust fits most neatly within ss 29(1)(g) and 29(1)(h) which concern matters including false or misleading representations as to sponsorship, approval and affiliation; I will assume those to be the relevant provisions. Where a trade mark has not been caught by s 18 of the ACL neither will it be caught by those provisions of s 29. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[22] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL. For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to the Australian Consumer Law on the basis of the first thrust.

   [22] [2003] FCA 104, [107].

   67. The second thrust under the SECTION 42A heading relates to the origin of the goods and includes the following submissions:

   [T]he graphic component map of Australia in [the Applicant’s Trade Mark] is also believed a conscionable act to deceive or confuse the public into believing that the Applicant’s goods are of Australian origin when it is plainly evident in the evidence that it is an imported water for origin Turkey, the water jug on offer is not branded with [the Applicant’s Trade Mark] and the Juicing Machine and Food Dehydrators are all of foreign brand and origin …

   The second thrust falls neatly under s 29(1)(k) of the ACL which concerns the making of a ‘false or misleading representation concerning the place of origin of goods’.

   68.     In considering the second thrust it is not necessary for me to decide whether the inclusion of a stylised map of Australia within the Applicant’s Trade Mark gives rise to a representation that the place of origin of goods to which that trade mark might be applied is Australia. Even if it were so this does not mean that the use of the Applicant’s Trade Mark would be contrary to law, only that it could be—and, as indicated above it is necessary for the Opponent to establish that use of the Applicant’s Trade Mark would be contrary to law. The Applicant’s Trade Mark could be applied to goods whose origin is Australia or it could be applied to goods whose origin is elsewhere. Consequently, the Opponent has failed to establish this ground of opposition in respect of the second thrust.

   69. The third thrust under the SECTION 42A heading relates to the inclusion in the Applicant’s Trade Mark of the words ‘Alkaline Water Online’ and the potential of goods upon which the trade mark is applied to be water which is not alkaline. This thrust seems to fall under s 29(1)(a) of the ACL which concerns matters which include the making of false or misleading representations that goods are of a particular composition. This thrust fails for similar reasons to the second thrust. That is, use of the Applicant’s Trade Mark could be, but not necessarily would be, contrary to law. The Applicant could apply its trade mark to acid water. Equally, the Applicant could apply its trade mark to alkaline water. The Opponent has failed to establish this ground of opposition in respect of the third thrust.

   70.     For the sake of completeness, the Opponent has failed to satisfy me that the Applicant’s Trade Mark is scandalous or that its use would be contrary to law.

   Section 61

   71. In the SGP the ground under s 61 is particularised as follows:

   The opposed mark clearly displays a map of Australia creating an impression its country of origin Australia (sic), yet the key goods of the opposed mark appear to be goods recognised as originated from overseas (for example SAKA from Turkey) and otherwise there is a complete lack of badge of origin for the opposed mark other than the Applicant's business address Western Australia.

   72. The Opponent’s submissions do not contain ‘Section 61’ as a heading and there is no explicit reference to the section in the submissions. However, the second thrust of the Opponent’s s 42 ground, discussed above, has some relevance and those submissions will be considered in respect of this ground.

   73. Section 61 is reproduced below:

   Section 61 – Trade mark containing or consisting of a false geographical indication

   (1)The registration of a trade mark in respect of particular goods (relevant goods) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods (designated goods) originating in:

   (a)a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or

   (b)a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;

   if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.

   (2)An opposition on a ground referred to in subsection (1) fails if the applicant establishes that:

   (a)the relevant goods originated in the country, region or locality identified by the geographical indication; or

   (aa)the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or

   (b)the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or

   (c)the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:

   (i)    1 January 1996; or

   (ii)   the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;

   whichever is the later; or

   (d)if the registration of the trade mark is being sought in respect of wine or spirits (relevant wine or spirits) the sign is identical with the name that, on 1 January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.

   (3)An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

   (a)although the sign is a geographical indication for the designated goods, it is also a geographical indication for the relevant goods; and

   (b)the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

   Note 1: For applicant, predecessor in title and geographical indication see section 6.

   Note 2: For originate (in relation to wine only) see section 15.

   (4)An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

   (a)the sign consists of a word or term that is a geographical indication: and

   (b)the word or term is a common English word or term; and

   (c)the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

   74. Section 6 of the Act defines a ‘geographical indication’ in the following manner:

   geographical indication, in relation to goods, means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their region of origin.

   75.     In its submissions in respect of this ground the Applicant referred to the decision of Bennet J in Bavaria NV v Bayerischer Brauerbund eV (‘Bavaria’).[23] Bavaria, which was decided in 2009, appears to be the only case where s 61 has been considered by the courts in any detail. In that case, Bennet J considered whether a trade mark which contained the word ‘Bavaria’ along with other elements, both word and graphical, contained or consisted of a sign that is a geographical indication for beer originating in Bavaria (a German state). Her Honour stated:

   [23] [2009] FCA 428.

   The answer to this question does not depend on impressions or the likely impressions made on a consumer. It requires the trade mark to be looked at in its totality to decide if it contains or consists of a sign recognised in Germany as indicating that the beer comes from Bavaria and that it has a quality, reputation or other characteristic attributable to its origin.[24]

   [24] Ibid [158].

   76.     The definition of geographical indication which was relevant to Bennet J’s decision in Bavaria differs from the current definition in the Act. The definition at that time included the words ‘a sign recognised in that country as a sign indicating that the goods’ originated in that country, etc. The requirement that a sign be recognised in the country of origin no longer appears in the definition. I note also that s 61 has been amended to add sub-ss (2)(aa) and (4) since Bennet J’s decision. For these reasons and because of the facts in that case, I am of the view that Bennet J’s decision is of limited assistance in the present matter.

   77. Section 61(1) allows an opposition ‘on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods (designated goods)’ and that one of two other factors is satisfied. The first other factor being that the designated goods are similar to the goods the subject of the application (defined in the Act as ‘relevant goods’). The second factor being that ‘the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion’. Sub‑sections (2) to (4) provide various matters which if established by an applicant mean that the ground of opposition fails. For example, pursuant to sub-s (2)(aa), if an applicant establishes that the sign relied upon by an opponent is not a geographical indication for the designated goods, the ground of opposition fails.

   78.     Given that the onus of proof in an opposition rests upon an opponent, it is insufficient for an opponent to merely assert that a sign is a geographical indication for particular designated goods. Before the onus shifts to an applicant to rebut the allegation—by possible recourse to the provisions under subs-ss (2) to (4)—it is necessary that an opponent establishes a prima facie case that: firstly, the sign it relies upon is a geographical indication for the designated goods; and, secondly, that the designated goods are similar to the relevant goods or that use of the trade mark in relation to the relevant goods would be likely to deceive or cause confusion.

   79.     In the present matter, there are little more than bald assertions in the SGP and the Opponent’s submissions that the map of Australia contained within the Applicant’s Trade Mark is a geographical indication in respect of vaguely defined goods. The Opponent’s evidence contains nothing which supports a view that the stylised map of Australia device contained in the Applicant’s Trade Mark is a geographical indication for any goods. The Opponent has fallen well short of establishing a prima facie case which requires a rebuttal by the Applicant. The Opponent has failed to establish this ground of opposition.

   Section 43

2. Section 43 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.

   81.     This ground of opposition was particularised in the SGP as follows:

   [The Applicant’s Trade Mark] is seen advertised online in majority cases merely as a descriptor ALKALINE WATER ONLINE used as keywords to confuse, deceive and draw internet visitors and prospective buyers looking for the Opponent and their goods and services branded WATER ONLINE.

   [The Applicant’s Trade Mark] consists of three English words, namely, ‘ALKALINE WATER ONLINE’, and a dominant device depicting the outline of the country of Australia. [The Applicant’s Trade Mark] as a whole is not capable of distinguishing, and for an average intelligence consuming public, the opposed mark has the connotation of goods and/or services relating to water originated in Australia and/or supplied in Australia. Because of this connotation, the opposed mark is likely to deceive or cause confusion when used on the proposed goods/services that those goods/services are related to or emanated from the same source of other identical or substantially similar marks, such as [the Opponent’s Trade Mark] used for the same types of goods/services in Australia from as early as 2012 to present. And pursuant to the Act, registration of [the Applicant’s Trade Mark] must be rejected.

   82. The particulars for this ground are somewhat convoluted but appear to include a number of thrusts. The first thrust (contained in the first paragraph of the particulars above) relies upon use of the Applicant’s Trade Mark which is asserted to be ‘merely as a descriptor ALKALINE WATER ONLINE’. It is unclear whether this is a reference to the plain words ‘alkaline water online’ or to the Applicant’s Trade Mark. Either way, this does not support this ground of opposition. If it is the plain words that are referred to the use of those words alone does not concern us here. It is only use of the Applicant’s Trade Mark (as a whole) which needs to be considered. If this thrust is a reference to use of the Applicant’s Trade Mark, any such use would not be ‘merely as a descriptor’ as indicated by my finding in respect of the s 41 ground, above. I will add as an aside, that the use of words which are merely descriptive of the goods on offer to attract potential customers would not give rise to confusion or deception. Also, traders dealing in what are similar goods are likely to wish to use similar terms to describe their goods. The first thrust does not support this ground of opposition.

   83. The second thrust relies upon the map of Australia device within the Applicant’s Trade Mark giving rise to a connotation of the country of origin of the goods or services sold in connection with the trade mark. As indicated in my discussion of the s 61 ground of opposition, I am not satisfied that the device has that effect when used in connection with goods. For similar reasons I am not satisfied that it has that effect when used in connection with services. The second thrust is not established.

   84.     The third thrust appears to rely on confusion as to trade source arising from the similarity of the Applicant’s Trade Mark to other ‘identical or substantially similar marks’. Spender J in Winton Shire Council v Lomas stated that:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [25]

   [25] (2002) 56 IPR 72, [19].

   Similarly in Pfizer Products Inc v Karam Gyles J said:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks … Section 43 might well prevent the registration of HERBAGRA for classes of goods with no connection with herbal ingredients. [26]

   [26] (2006) 70 IPR 599, [53] (emphasis added).

   As indicated by the case law cited above, the third thrust concerns matters which are not appropriately considered under this ground of opposition. Those matters have been dealt with under the ss 44 and 60 grounds.

   85.     None of the Opponent’s three thrusts have been established. Consequently, the Opponent has failed to establish this ground of opposition.

   Decision

   86.     The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, application 1758589 may proceed to registration after 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 either the appeal is withdrawn or a court so orders.

   Costs

   87. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

   Robert Wilson
   Hearing Officer
   Trade Mark Oppositions and Hearings
   23 October 2018