Cantarella Bros Pty Ltd v Angela Muller Hazel Kennedy

[2007] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by Cantarella Bros Pty Ltd to registration of trade mark application 1014051(35) - HOME CAFE - filed in the name of Angela Muller and Hazel Kennedy.

Delegate:

Terry Williams

Representation:

Opponent: Ron Webb, Senior Counsel, with instructing solicitor from Gilbert + Tobin solicitors

Applicant: no appearance

Decision:

2007 ATMO 62

S 52 opposition: s 60 – HOME CAFE deceptively similar to CAFÉ AT HOME as used by opponent. Insufficient likelihood of deception or confusion. Registration to proceed.

Background

1. Angela Muller and Hazel Kennedy have applied to register the trade mark HOME CAFE.  The application has been examined at the Trade Marks Office and accepted for possible registration in respect of services in class 35 and specified as “wholesale/retail of coffee and chocolate and confectionery products.”

2. Registration of the trade mark is opposed by Cantarella Bros Pty Ltd (“the opponent”). The parties have served and filed evidence to support their respective positions. The opponent then requested a hearing, which the applicants were given the opportunity to attend and which I conducted under delegation from the Registrar of Trade Marks. In terms of sections 52 and 55 of the Trade Marks Act 1995 (“the Act”), I am therefore required to decide if the application should be registered.  What follows is my decision.

Substantive matter: section 60.

1. While the opponent nominated a number of grounds of opposition when it filed its notice of opposition to registration, Mr Webb noted that only one ground, s 60, would be pursued at hearing.  He argued that the opponent was required to do no more than establish a ground on the balance of probabilities.  He relied here on the decision of Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. As I said in McDonald’s Corporation v Future Enterprises Pte Ltd, (2006) 70 IPR 409, this is also the view of delegates of the Registrar, while still being a matter of debate in the lack of resolution in the Full Court of the Federal Court.

2. Section 60 reads:

   60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For priority date see section 12.

Mr Webb addressed these in order.

Deceptive similarity

1. This is a threshold test for s 60.  The issue is defined by s 10

   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.

2. Mr Webb noted that the test for deceptive similarity was well known.  He relied on the position stated by French J, who, in Registrar of Trade Marks v Woolworths[1], recast the older formulations to recognize that the burden of proof does not fall on an applicant to negate the risk.  For the necessary comparison, I would put the matters as follows.  I am not to be overly influenced by the evidence that the disputing parties use their trade marks in ways that, at the moment, are quite different.  I am to consider any of the modes of business that would be within the scope of the registration, should it be granted in the terms presently sought.  In essence, the question comes down to my being satisfied of there being a “finite and non-trivial” – Woolworths, supra - risk of deception or confusion, based on the proper allowance for the possibility of imperfect recollection of one trade mark at a time when only the other and competing trade mark is present. 

   [1] (1999) 45 IPR 411

3. Mr Webb, at the hearing, stated that the opponent would rely on the reputation extant in its trade mark in the form set out in its own trade mark application, which is now registered, including a device.  This is as shown below:

1. This is not precisely the form in which the trade mark is always used.  For instance, in the evidence to which I will come, the disc device often does not appear and the cup appears beside, rather than below, the words CAFÉ AT HOME.  The device of the cup bearing the word VITTORIA, or some other reference to the latter trade mark, is almost invariably present. 

2. This is not a case where the reputation of the VITTORIA trade mark is so extensive that its presence could significantly reduce the risks of imperfect recollection[2].  None the less, the presence of the element VITTORIA sets a context for the opponent’s usage of the somewhat descriptive expression “café at home”.  The latter is a form of words that might appear to be a contradiction in terms, since homes and cafes are not usually the same premises or regarded as being the same thing.  However, I do not think that consumers are quite so literal-minded.  They will appreciate that the contradiction is no more than a slightly fanciful reference to the recreation of café-style coffee at home.  The structure of the words is no more unusual than is “home cinema” in relation to domestic entertainment systems incorporating a television.

   [2] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at paragraph 52:

3. The opponent has not raised any argument under s 41 to impugn the ability of the words HOME CAFE to distinguish the applicants’ services.  Since the examiner of trade marks was satisfied that the applicants’ trade mark is capable of distinguishing and the application has been accepted on that basis, I will proceed on the basis that the expression that makes up the applicants’ trade mark, HOME CAFE, is indeed capable of distinguishing the applicants’ services.  It is not, even so, a particularly striking or unusual trade mark.  It has about it the same quasi-descriptive tinge that I have ascribed to the expression used by the opponent.

4. What, then, of the comparison of the two trade marks as wholes, of the applicants’ word mark with the words and device used by the opponent?  I think that, given the prominence and commonality of the words CAFÉ and HOME, and the common purpose for which those words are used, the only maintainable conclusion is the one argued by Mr Webb, that the two trade marks at issue are deceptively similar.  However, for reasons consistent with my conclusions below, I will say now that the level of deceptive similarity is not particularly high. 

Reputation of opponent’s trade mark

1. Here Mr Webb took me to the evidence.  What emerges about the nature of the opponent’s operations under its own trade mark is part of the character of its reputation.  A proper understanding of this is critical to what follows.  In practice it is commonplace to infer the size and nature of a reputation from the sales and advertising expenditures in question[3].  However, at the detail level, the proper assessment of the reputation comes down to an evaluation of what Hearing Officer Thompson[4] called the recognition and esteem components of the reputation.  In this matter I will set out the details at some length.

   [3] As noted in McCormick & Company Inc v McCormick [2000] FCA 1335, by Kenny J at paras 81-85

   [4] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423, noted in McCormick, supra.

2. The opponent’s trade mark, CAFE AT HOME, is used to designate a marketing concept applied to a proportion of the shelves from which coffee products and accessories such as percolators and travel mugs are sold in Woolworths supermarkets.  Starting from a roll-out and installation of the necessary fittings in June 2003, 698 Woolworths stores[5] adopted a display system aimed at those who are, in the opponent’s view, not knowledgeable about coffee.  The concept features lift-tags on shelf facings and brochures on rotating ‘out-riggers’, which are simply carousel stands hanging at the edges of the area in question.  This strategy is aimed at supporting and encouraging the experimentation of consumers with non-instant coffees, including varietal-style coffees, and in the purchase of coffee-making paraphernalia.  This is supported by the opponent’s production of variants of its well-known Vittoria brand of coffee, the packaging of which bears a CAFE AT HOME logo.  As I have already noted, the prominent shelf display also shows the VITTORIA trade mark, albeit in a minor way.  However, the opponent’s evidence shows that some 60% of the relevant shelving is given over to products bearing other trade marks - including, for instance, HARRIS, ILLY, LAVAZZA and MELITTA – that are both well known and not owned by the opponent.  The impact, visually, is that the opponent’s trade mark is being used for a range of various coffees etc, to be drawn together and sold as a subset of coffees within the many Woolworths supermarkets.

   [5] This figure includes also the relevant SAFEWAY and other stores that are part of the Woolworths group.  From the evidence, at least WOOLWORTHS and SAFEWAY stores, by far the majority of the total, apply the concept in their coffee sections.

3. Mr Webb stressed the significant “look” and impact this shelf display would create. However, having carefully viewed the DVD that is exhibited to the opponent’s evidence in support, and the remaining exhibits to the Roberts and Robinson declarations and the two by Mr Schirato, the evidence does not convince me that, among the items typically hanging on and around the shelves of a busy supermarket, any particularly significant effect would be created.  None the less, the strategy appears to have worked very well.  The opponent has increased its sales through Woolworths by 33% in the twelve months from March 2003 to March 2004.  Overall, it is very likely that by the priority date of the opposed application (3 August 2004, just over 12 months after Woolworths actually implemented the opponent’s strategy) a significant proportion of the coffee buyers in Australia would have been aware of this particular mode of conducting business in their local Woolworths supermarkets[6].

   [6] Mr Schirato declares that the business has “now” expanded to include consumables such as milk modifiers, sugar, biscuits and chocolates.  However, that does not appear to have been the situation at the priority date of the attacked application and thus cannot affect my decision.

Applicants’ mark - likelihood of deception or confusion

1. In assessing this, I am required to look at all of the manners in which the applicants could fairly use the trade mark in relation to the range of wholesale and retail services that they have specified.  The evidence shows that the applicants presently adopt a party-plan way of doing business, but they have operated as a more mainstream retailer at, in particular, the Sydney Royal Easter Show in 2002 and subsequent years.  The applicants have, so far as I can tell, operated a relatively simple stall at these venues.  The stall shown in annexures O and R of Ms Muller’s declaration is clearly identified as HOME CAFE and the packaged food products sold bear the ANGELA’S COFFEE and ANGELA’S TREATS trade marks.  There have been other promotions at trade and business fairs and to firms offering novelty gift hampers.  However, I am required to consider the broad range of retailing and wholesale services that might fairly be offered by the applicants.  This would include the full spectrum of retailing, and of door-to-door canvassing of restaurants and cafes for wholesale sales.  Indeed, the fair notional use that would fall within the scope of their application would extend, at the extreme, to the sale and display of coffee products in supermarkets, in ways not unlike what the opponent now does.

2. I have already said that the two trade marks are deceptively similar, albeit not strongly so.  The present case is analogous to that in Conde Nast Publications Pty Ltd v Virginia Taylor[7] where, of VOGUE and EUROVOGUE, Burchett J commented:

   At the same time, it should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question.  A trader is not entitled to monopolize such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the Court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.

   [7] [1998] 864 FCA

3. It is of course possible to see that, in the broad spectrum of potential operations that are within the scope of the opposed application, there may therefore be some degree of confusion between the opponent’s activities under the trade mark CAFE AT HOME and the HOME CAFE services of the applicants.  However, there is one factor that would tend to mitigate this quite significantly, and that is the essential nature of the trade built up by Woolworths, on behalf of the opponent. 

4. At the date of the opposed application, the opponent’s trade mark was known to be used in relation to what is basically a sales system, based on shelf signage and used only within Woolworths supermarkets.  The extent to which there would be confusion reduces sharply the further one moves from that narrow confine of business. 

5. As to the real risk of confusion, there is absolutely no reason to expect that Woolworths would conclude with the applicants an arrangement similar to that which it has now with the opponent.  Conversely, I do not expect a similar shelving strategy, were one to be adopted by any other chain of supermarkets and featuring the applicants’ trade mark, would be seen as anything other than a system of shelf display, a means of denoting “café-grade” coffees within the supermarket.  Beyond that mode of commerce, as I have said, the risk of confusion would fall further.  Accordingly, I am not satisfied that there is a significant risk of deception or confusion. 

Conclusion

1. The opponent has not established its ground of opposition.  The trade mark application may therefore proceed to registration 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 discontinued or registration is ordered by the Court.

2. I direct that the opponent pay the applicants their costs for legal expenses to the extent set out in the scale.  However, I exclude from this award the applicants’ costs where they were self-represented, from February 2007 onwards.

Terry Williams

Hearing Officer

Trade Marks Hearings

02 October 2007