Canterella Bros. Pty Ltd v Sunbeam Corporation Ltd

[2007] ATMO 3

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 1013086(7) - GELATERIA - filed in the name of Sunbeam Corporation Limited.

Delegate:	Rachel Dunn
Representation:	Opponent: Carmen Champion of Counsel, instructed by Lisa Lennon of Gilbert and Tobin Lawyers Applicant: Khajaque Kortian of Spruson and Ferguson
Decision:	S52 Opposition – s44 ground not established; s41 ground partially established. Each party to bear its own costs.

Background

1. Sunbeam Corporation Limited (the applicant), applied for registration of the following trade mark:

Application Number:	1013086
Priority Date:	27 July 2004
Goods:	2.     Class: 7  Machines including ice-cream making machines, gelato making machines and machines for making other iced confectionery
Trade Mark:	GELATERIA
Endorsement:	TheThe applicant has advised that the translation of the ITALIAN worword appearing in the trade mark is ICE CREAM PARLOUR.*
Acceptance Advertised:	3.     6 January 2005

1. The time in which to file a notice of opposition was extended on the basis of negotiations between the parties, however these were not successful.  Within the extended time in which to do so Cantarella Bros Pty Ltd (the opponent) filed a notice of opposition based on several grounds including that the trade mark is not capable of distinguishing the applicant’s goods from those of other traders.

2. Evidence in support was served and filed promptly.  The applicant chose not to serve any evidence in answer; it simply relied upon the Trade Marks Office Register of trade marks, and requested a hearing.

3. I heard the matter in Sydney on 20 July, where the applicant was represented by Khajaque Kortian of Spruson and Ferguson and the opponent briefed Carmen Champion of Counsel, who was instructed by Lisa Lennon of Gilbert and Tobin Lawyers.

   Evidence

4. Evidence in support consists of a statutory declaration in the name of Leslie John Schirato with four exhibits.  Mr Schirato attests to his familiarity with the Italian language, the Australian food industry, and the common use of the term “gelato” by Australian cafes.  The exhibits show use of the word GELATERIA in the Yellow and White Pages directories; use of the term in advertising; and dictionary definitions, although I note the applicant has never disputed the meaning of the term and in fact has confirmed a definition in the endorsement of the application.

5. Mr Schirato’s evidence goes towards only one ground of opposition, that of s 41.  There is no evidence provided for any of the other grounds, however in the notice of opposition the registration that is relied upon for the s 44 ground is identified as being for the series of words GELATORIA and GELATTORIA.  Therefore, this decision will involve grounds under ss 44 and 41 only.  I find that in the absence of any evidence the other grounds have not been established.

   Discussion

   Section 44

6. To establish a ground under s 44 the opponent has to satisfy me that priority lies with the opponent’s trade mark; the trade marks themselves are deceptively similar; and that they claim the same or similar goods.

7. Priority clearly lies with the opponent’s trade mark as it was filed in 2003 and this application was not made until 2004.

8. I am satisfied that the trade marks themselves are deceptively similar.  There is minimal difference visually, orally and aurally between GELATERIA and GELATORIA, and little more between GELATERIA and GELATTORIA.  This is enhanced, I believe, by the fact that the term is one in the Italian language.  Whilst Mr Schirato attests to “the majority of gelato consumers having some basic knowledge of Italian terminology as it applies to food products”, it is my opinion that the average consumer will simply see GELATERIA and GELATORIA as interchangeable and would not distinguish trade origin on the slight differences present in the terms.  The impression produced by these words is one of similarity, and I believe a real tangible danger exists of deception and confusion in the marketplace.

9. Therefore, this ground of opposition turns on the question of similarity of goods.  The opponent’s trade mark claims the goods of ice cream and ice confections, including among other goods, ‘gelato and other Italian-style ice confections’.  The subject application covers machines including those for making ice cream, ice confections and gelato.  The applicant submits that it is artificial and unreasonable to believe that consumers would use the same trade channels for both sets of goods.  The opponent submits that as one set of goods is used to manufacture the other, a connection would be perceived by consumers.

10. The applicant’s goods are used to produce the goods of the opponent, however this does not automatically imply the kind of relationship between goods that is necessary to have them be seen by consumers as having the same trade origin, despite the similarity of the trade marks involved.  Both parties referred me to Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227, wherein it was decided that towels are goods of the same description as sheets, and the principle of the phrase ‘goods of the same description’ not being construed restrictively, was enunciated. The applicant also relied upon the standard test cases of Jellineks Application ([1946] 63 RPC 59) and Reckitt and Coleman (Australia) Limited v Bolden (1945) 70 CLR 94.

11. From Jellineks Application come three principle factors in determining if goods are of the same description or similar:

    o   The nature of the goods, including origin

    o   The purpose and use of the goods

    o   The trade channels through which the goods are bought and sold.

12. The nature of the goods, including their origin, is quite different.  The opponent’s goods are foodstuffs originating in its ice cream parlour, whilst the applicant’s goods are machines originating presumably in a factory.  The purposes have a slight similarity in that the purpose of one is to make the other, however the trade channels are quite disparate.  I can not expect the average consumer to go shopping for an ice cream but return home with an ice cream maker instead – and even if they did, I am not satisfied that they would make any connection between the trade origin of the two.  The goods are not similar or of the same description and the ground under s 44 is not established.

    Section 41

13. The basis of section 41 is an assessment of the inherent capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another.  If the trade mark lacks inherent capacity, an assessment of the extent to which the trade mark does in fact distinguish the goods or services, becomes necessary.

14. In the case of GELATERIA there is no evidence of use, or of any other circumstances, so I need to consider the prima facie inherent capacity of the trade mark to distinguish the claimed goods.

15. In considering this question, the test in Clarke Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 is applicable. In that case Kitto J quoted Parker LJ who states the test of distinctiveness as:

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

16. The opponent submitted that GELATERIA is heavily used in the Australian café and ice cream parlour industry to describe shops selling gelato and/or Italian ice cream, and is really the only readily available term for such an establishment.  From this basis the opponent believes that use of GELATERIA on machines to produce ice cream or gelato is a description of the quality, characteristics or purpose of the goods, and as such the term should be available to other traders.  It is submitted that this is particularly the case when the trade mark is applied to commercial or industrial machinery that would be used in ice cream parlours.

17. The applicant submitted that GELATERIA does not contain any reference to the kind, quality or character of the claimed goods, and is at most indirectly suggestive in that it is a clever and emotive term that would have a favourable suggestion to the attitude of mind of potential users.  Registration of GELATERIA, the applicant contends, will not realistically inhibit or prevent the use of ordinary and bona fide descriptions of the machines claimed.

18. When dealing with words in a foreign language the following questions need to be answered:[1]

    o   Is the foreign language/script well known in Australia?

    o   Is the translation provided the most common meaning attributed to the word?

    o   Does that common meaning have an inherent capacity to distinguish using the normal tests?

    [1] See the combined effect of "Burgoyne's" Trade Mark (1889) 6 RPC 227 and "Kiku" Trade Mark, [1978] F.S.R. 246 (S.C. of Ireland)

19. I am satisfied that at least parts of the Italian language are understood by a significant number of the Australian population.  Whether that understanding ranges from simply “latte” and “bambino” or to “governo” and “costruzione”, is not vital for the purposes of this decision.  I am also satisfied that the translation provided is the most common meaning of the term, and additionally the parties agree on the translation provided.  Therefore, the only issue is whether traders other than the applicant need to use the Italian word for ‘ice cream parlour’ to describe their ice cream making machines.

20. I think that they do.  GELATERIA describes the purpose of commercial or industrial ice cream making machines as those that make ice cream or gelato for ice cream parlours; gelaterias.  Such machines labeled with GELATERIA would indicate a machine capable of producing the type and quantity of product necessary for an establishment offering gelato and similar goods.

21. As GELATERIA is descriptive for the goods of commercial or industrial machines for making ice cream, gelato and other iced confections, the application is caught by the provisions of s41(5).  The applicant chose not to file any evidence in answer or provide any evidence of use of the trade mark or any other circumstances that would allow this trade mark to proceed to registration.

22. However, the application did not only cover such commercial or industrial machines, but all machines – including those apt for home use.  Small machines adapted for home use are several steps removed from the commercial and industrial machines involved in commercial ice cream parlours, and it is partly these steps that offer the trade mark a capacity to distinguish for some goods.  This capacity is enhanced by the fact that the trade mark is presented in the Italian language.  Whilst I am mindful of the case law already mentioned, and the principle that if a word falls foul of s41 when it is presented in English it will most likely also be caught by the same provisions if rendered in a foreign language, in this case I believe GELATERIA offers extra adaptation that may not exist for ICE CREAM PARLOUR.

23. GELATERIA is not directly descriptive of the purpose of ice-cream making machines for home or domestic use, nor does it indicate any kind, quality, quantity or value of the goods.  The term GELATERIA applied to machines for making ice cream and similar confections in the home is alluding perhaps to the purpose of the goods – the “your own ice cream parlour at home” idea.  However this is done in a fanciful way, and I am satisfied that for machines for domestic use only, the trade mark just falls into the category of those inherently adapted to distinguish.

24. I note the applicant has registrations that I would classify as the same ‘type’ as GELATERIA – fanciful trade marks for food and beverage machines.  These include MILK BAR for milk shake makers, BAR ESPRESSO for coffee making machines, and CAFÉ SERIES for many goods including milk shake makers and coffee making machines.  The opponent noted that the registration for CAFÉ SERIES is limited by the addition of the words “all foregoing goods being for domestic use” in each class, and suggested that at the very least the same limitation should be applied to GELATERIA.  I agree.  If the applicant is prepared to limit its specification to certain machines for domestic use, I believe GELATERIA can continue to registration as it would no longer be caught by the provisions of s41(5), but fall under the provisions of s41(3).

    Other matters

25. There was some agitation on the part of the applicant regarding the opponent’s attitude to provision of written submissions prior to the hearing.  Whilst I have some sympathy with the applicant on the matter of service or swapping of submissions prior to the hearing, there is no legislative basis for requesting such action.  It is, of course, considered good manners to provide the other party with a copy of your submissions before the hearing, but even the opponent’s actions in this case – the applicant claims that despite repeated requests the written submissions were deliberately withheld – do not constitute any offence that can be penalized.

26. Additionally, the opponent’s inaction regarding clarification of exactly what grounds of opposition were being pressed was also a concern to the applicant.  I have less sympathy with the applicant in these circumstances.  Whilst the applicant felt it needed to prepare written submissions for all the grounds of opposition, it was quite clear that the evidence in support went toward only the ground pursuant to s 41, and the notice of opposition only substantiated s 44.  No evidence was submitted toward any of the other grounds, and as these clearly could not be established I would have expected that no work would have been put into the applicant’s written submissions on the grounds other than those under ss 41 and 44.

    Decision

27. If the applicant is prepared to limit its specification of goods to read:

    “machines including ice cream making machines, gelato making machines and machines for making other iced confectionary; all foregoing goods being for domestic use”

    the trade mark application may proceed to registration one month from the date of this decision.  Therefore, if the applicant wishes to make this limitation, it should inform the Trade Marks Office of such intention without delay.  If the applicant chooses not to limit its specification in this manner, then I refuse the application in its entirety.

28. If the Registrar has been served with a notice of appeal before one month from the date of this decision, I direct that the limitation and/or registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to that order.

29. As both parties have been somewhat successful in this matter they should bear their own costs.

    Rachel Dunn
    Hearing Officer,
    Trade Marks Hearings
    24 January 2007