Chubpak Australia Pty Ltd v Aristopet Pty Ltd

[1999] ATMO 71

TRADE MARKS ACT 1995

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

Re:Opposition by CHUBPAK AUSTRALIA PTY LTD to registration of trade mark application number 676438 in the name of ARISTOPET PTY LTD.

Background

Application number 676438 was filed on 30 October 1995, in the name of Aristopet Pty Ltd (the applicant). The applicant sought to register the word aristopet and device, as shown in the following representation:

The trade mark was accepted for registration in respect of Pet care and veterinary products in class 5. The acceptance of the application was advertised in the Australian Official Journal of Trade Marks of 5 February 1998.

Chubpak Australia Pty Ltd (the opponent) filed opposition to the registration of the trade mark on 30 April 1998. The opponent served and filed evidence in support of the opposition, however the applicant did not rely on evidence in answer. The opponent's attorney then sought a hearing in the matter, which was held before me in Canberra on 27 April 1999. Ms Siobhan Ryan of Davies Collison Cave, Melbourne, represented the opponent. The applicant did not appear at the hearing, but chose to make written submissions.

At the hearing, the opponent proceeded with three main grounds of opposition. Ms Ryan's submissions expressly related to: (a) the onus borne by the applicant for registration; (b) subsection 44(1) and; (c) section 60.

Evidence

The opponent's evidence in support was served on the applicant on 28 September 1998. The opponent's evidence consists of a statutory declaration by Kenneth William Evans, with exhibits KE-1 to KE-6 inclusive.

Mr. Evans is the National Sales Manager of the opponent and he provides a history of the opponent's use of its trade marks, with specific reference to its Australian trade mark registrations 236873 and 592972. Both registrations are in respect of the trade mark aristocat and, in short, cover pet foods and foodstuffs for animals in class 31. Mr. Evans attests to the commencement of the use of the trade mark aristocat, by the opponent, in 1992-1993. The mark is used throughout Australia and the opponent has, since 1994, achieved sales of cat food under the aristocat trade mark of over five million dollars per annum. The opponent's current sales of cat food in this regard account for approximately 3.9% of the wet cat food market. The opponent's promotion and advertisement of the trade mark has, since 1994, exceeded one million dollars per annum.

The applicant did not rely on evidence in answer. I note, however, that the applicant's submissions contain evidentiary material and, although there may be an arguable case for prior or honest concurrent use, this material was not tendered as evidence. I cannot, therefore, afford it any weight in these proceedings.

Submissions

Following is an overview of the applicant's submissions. However, I intend to address the opponent's submissions under each of the grounds of opposition as they arise.

Mr. Cameron McTavish, managing director of Aristopet Pty Ltd, made written submissions on behalf of the applicant. Mr. McTavish argued that there were substantial differences between the competing trade marks, as well as differences between the respective products to which the marks are applied. He made the point that the opponent's goods, sold under the aristocat trade mark, did not extend beyond cat food. He also noted that retail supermarkets were the primary outlet for the opponent's goods. In comparison, he said the applicant did not apply its aristopet trade mark to products for cats, nor was the trade mark applied to goods related to cat food. In addition, Mr. McTavish stated that the applicant's range of specialist pet products was only available through pet shops, veterinarians and specialist retailers.

Mr. McTavish further submitted that the word 'aristo' was a commonly used prefix in the trade and, as such, it was a word that could not be monopolised by one trader. Here, Mr. McTavish pointed to a number of existing registered trade marks which incorporate the prefix 'aristo'. In particular he referred to aristocort, aristocomb, aristospan (280382, 343476, 352396, respectively - all of which exist in class 5, in the name of the same proprietor, for goods which encompass veterinary preparations) and aristocrat diploid ryegrass (646530 - registered in class 31 for agricultural grass seed). Under the circumstances, he said, it was difficult to imagine that any confusion could possibly take place between the two trade marks in question.

Grounds of opposition

(a) Onus

In support of this ground of opposition, Ms Ryan relied on the principles set out in the Southern Cross[1] and Hermes[2] cases. Ms Ryan began by making reference to the presumption of registrability provided for by section 33 of the Act. She submitted that this provision did not entirely release the applicant of its responsibility to satisfy the Registrar that the use of its mark was not likely to deceive or cause confusion (Southern Cross case, supra). Ms Ryan said (relying on the Hermes case, supra) that the onus borne by the applicant, in this regard, was greater when the trade mark had been opposed.

[1] Southern Cross Refrigerating Co v Toowoomba Foundry Limited (1954) 91 CLR 592 at 594;

[2] Hermes SA v ET Swift & Co Pty Ltd (1984) 2 IPR 432 at 435-436;

In considering Ms Ryan's submissions in support of this ground of opposition, I turn first to section 33 of the Act. This section of the Act provides for a presumption of registrability, in so far as it relates to the examination and acceptance of an application. The subject application was duly examined and accepted and, to this effect, the applicant was released of its initial responsibility, if any, to satisfy the Registrar of the 'registrability' of the trade mark. The question of whether or not the applicant bore such responsibility would depend on the circumstances of the case and indeed if any grounds for rejection were raised against the application.

The burden of proof, however, in opposition proceedings is quite distinct from the terms of section 33. In opposition proceedings there is, in the first instance, an evidentiary onus on the opponent to make a prima facie case for the applicant to answer. The burden of proof only shifts to the applicant once the opponent has convinced the Registrar of the validity of at least one of its grounds. The applicant is then required to show that no reasonable probability of confusion exists. Nevertheless, it is not necessarily fatal to an application if the applicant does not respond to the opposition brought against it.

Having said this, a final determination of the applicant's responsibilities, with regards to the burden of proof in these proceedings, can only be made upon consideration of the remaining grounds of opposition.

(b) Section 44(1)

This ground of opposition is based on the opponent's two existing trade mark registrations for the trade mark aristocat in class 31. These registrations cover the following goods: 236873 - Pet foods; 592972 - Foodstuffs for animals including foodstuffs specifically formulated for cats.

Section 44(1) reads as follows:

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

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

With priority dates of 3 March 1970 (236873) and 21 December 1992 (592972), the opponent's existing registrations have an earlier priority date than that of the subject application. Further, the opponent has stated that it does not consider the competing trade marks to be substantially identical. There are, therefore, two remaining issues to be decided. These are: (i) whether the applicant's trade mark is deceptively similar to the opponent's aristocat trade mark; and  (ii) whether the goods for which the applicant seeks registration are similar to those goods covered by the opponent's above-mentioned registrations.

On outlining the legal principles relevant to section 44(1), Ms Ryan referred first to the test set out by Evershed J. in Smith Hayden & Co Ltd's application[3]. Here, Ms Ryan paraphrased the words of Justice Evershed, as follows:

[3] Smith Hayden & Coy. Ltd. Application (1946) 63 RPC 97;

Assuming user by the Opponent of its trade mark aristocat in a normal and fair manner for any of the goods covered by the registrations of its mark, is the Court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the trade mark applicant also uses its mark, normally and fairly, in respect of the goods covered by its proposed registration?

I acknowledge that the question of whether deception or confusion is likely to ensue is to be answered with regard to the test set out by Evershed J., accurately paraphrased by Ms Ryan. A mere possibility of confusion is not enough. There must be a real, tangible danger of it occurring. The effect of the use of the applicant's mark must be that a substantial number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. In addition, under the terms of section 44, the comparison must be between the marks as registered or proposed to be registered, supposing normal and fair use. The context of the comparison involves 'notional use'. Here, the Registrar cannot consider the actual manner of use of the marks. He or she must assume a normal and fair use on all of the goods covered by the registration or application in question.

(i) Deceptive similarity

In confirming the rules of comparison relevant to deceptive similarity, Ms Ryan referred to a number of cases[4]. The marks in question, she said, were to be judged by the combined effect of the visual and aural impression on potential consumers, the idea or concept conveyed by the marks, the impact of the circumstances surrounding normal use, and the effect of 'imperfect recollection' (of one mark when faced with the other).

[4] Pianotist Company Ltd's Application (1906) 23 RPC 774, at 777,

Ms Ryan compared the two trade marks, noting that the two marks share the same prefix. She submitted that the prefix 'aristo' was not common to the trade and, although it carried some laudatory connotations, the word was a distinctive element of the opponent's trade mark. On this point, Ms Ryan referred to London Lubricants application[5] and in particular to the principle that, when comparing two words, the first syllable of a word is, as a rule, the most important for the purpose of distinction. Another point to note, Ms Ryan said, was that the prefix 'aristo' was emphasised in the applicant's mark, because of the manner in which the heart device encompassed the word 'pet'.

[5] London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 at 279;

Ms Ryan further submitted that the suffixes 'cat' and 'pet' shared the same idea or concept and that, when combined with the prefix 'aristo', the use of the marks would suggest to the consumer that the opponent had adopted the now well used and recognised practice of 'brand extension'. That is, the practice of traders in adopting a word as a base trade mark (eg. 'aristo') and using it to construct other trade marks by adding prefixes or suffixes of a qualifying nature (eg. 'cat', 'pet'). On the matter of confusion or deception as to trade provenance, Ms Ryan relied on the Easyjest and Hyperpan cases[6].

[6] John Fitton & Co Ltd's Application (1949) 66 RPC 110,

With regards to the heart device included in the applicant's mark, Ms Ryan submitted that a 'heart' was not a particularly distinctive image, when considering the 'feel good market of pet care products'. Such a device, she said, would not have a significant bearing on how the mark was perceived by consumers, as it would be the word to which consumers would naturally refer and relate[7].

[7] Application by Hardings Manufacturers Pty Ltd (1987) 8 IPR 147 at pp 153-154;

The accepted test for determining deceptive similarity was set out by Windeyer J. in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited[8]. In brief, the comparison is one of impression and general recollection. That is, the impression based on the recollection of the opponent's mark that persons of ordinary intelligence and memory would have, vis a vis, the impression conveyed by the applicant's mark.

[8] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407;

When the subject trade marks are compared, the prefix 'aristo' presents itself as an essential feature of both marks. The fact that the word 'aristo' may have some laudatory connotations does not detract from its function as a distinguishing of each mark. To further the comparison, each mark comprises the prefix 'aristo' combined with a word which refers directly to the character of the goods (the suffixes 'cat' and 'pet'), both of which, I agree, share a conceptual similarity with one another.

With regards to the heart device, in light of the accepted rules of comparison I believe the device has little effect on the overall impression conveyed by the applicant's mark (so as to minimise the impact of the like features of the trade marks). Where one trade mark contains a device and another to be compared does not, it is difficult to attribute a great deal of dissimilarity between the marks to the device element. For instance, the applicant's trade mark will ultimately be referred to by the word element within the mark, despite the presence of the heart device. In addition, the heart device in the applicant's trade mark is rendered in quite an ordinary fashion and such devices, in my opinion, are commonly used in the marketplace. Therefore, the significance of the heart device, in relation to a customer's recollection of the mark, must be questionable.

I note Mr. McTavish's submissions regarding the existence of other marks that incorporate 'aristo' as a prefix. However, the state of the Register does not assist the factual inquiry being made under section 44, except perhaps to confirm that 'aristo' is the sort of word in which traders would like a monopoly[9]. Further, although the other marks mentioned by Mr. McTavish contain the prefix 'aristo', no two of them display the same conceptual similarity that exists between the two competing trade marks in question at present.

[9] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281;

In light of the foregoing and having considered the standard tests for deceptive similarity, I find the applicant's trade mark to be deceptively similar to the opponent's trade mark, the subject of registrations 236873 and 592972.

(ii) Similar goods

The question remains as to whether the application goods are 'similar' to those goods covered by the opponent's above-mentioned registrations.

Ms Ryan made submissions as to the similar nature, uses and trade channels of the opponent's goods in class 31 and the applicant's goods in class 5. Ms Ryan submitted that it was common for traders in the pet care industry to produce veterinary preparations in the form of foodstuffs (for example, medications and vitamins in the form of food). She also said that there was a current trend for pet food manufacturers to produce food products that targeted health conditions in pets (eg. puppy or senior formulas, diet mixes for obese animals, and dry food formulas to prevent urinary tract infections in cats). Further, she submitted that pet care products in both class 31 and class 5 were available via the same outlets, in the same areas, to purchasers wanting to buy the products for the same reason - to care for their pets.

The expression 'similar goods' is defined in note 2 of section 44(1) of the Act (by reference to subsection 14(1)). Here, the Act confirms that goods are similar to other goods if they are the same as the other goods, or if they are of the same description as that of the other goods.

Thus, the standard tests first established by Romer J. in Jellinek's Application[10] remain as relevant tests, viz. the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is convincing in itself and it is also important to note that the classifications contained in the schedules to the Trade Marks Regulations are not a definitive criterion as to whether or not two sets of goods are 'of the same description'.

[10] Jellinek's Application (1946) 63 RPC 59;

To compare the goods in question, the opponent's goods can be basically described as foodstuffs for animals. In comparison, the applicant's goods are described in very general terms as Pet care and veterinary products in class 5.

Foodstuffs are eaten for the purpose of nourishment and some food can be tailored to meet specific dietary needs. For example, some basic animal foodstuffs in class 31 may provide added vitamins or fibre, or be fat reduced. Indeed, the opponent points out that its aristocat product is marketed, in part, on the basis of its health benefits. In comparison, pet care products in class 5 are essentially goods used in the medical and surgical treatment of animals. These goods, however, also include foodstuffs for animals adapted for veterinary purposes, such as dietetic foods, feed supplements (eg. suckling formulas) and some nutritional additives. Goods of a comparative nature in class 31 include foods for animals, milk-based foodstuffs for animals and non-nutritional additives for animal feed. Due to the nature of the pet care industry, both sets of goods can, to some extent, share the same trade provenance and are often sold in close proximity to one another, via the same retail supply outlets, to the same customers. In light of current manufacturing and marketing trends, it is the case that a single manufacturer will produce a wide range of products. Furthermore, as Ms Ryan has pointed out, both sets of goods (in classes 5 and 31), to some extent, are sold side by side via veterinary surgeries, pet shops and supermarkets, in a manner that allows for self-selection.

When the standard tests for determining goods of the same description are applied, it is clear that some of the application goods are of the same description as goods encompassed by the opponent's above-mentioned registrations. However, for the present comparison, I do not consider that the association between the goods in class 31 and the application goods in class 5 extends beyond the range of class 5 goods of 'dietetic foods and dietetic additives adapted for veterinary purposes'. The accepted rules of comparison (as established in Jellinek's Application, supra, and the Plio case[11]), simply cannot be met by a comparison of the opponent's class 31 goods to, for example, veterinary goods (in class 5) such as cattle drench, animal washes and antiparasitic preparations for animals, even in light of today's marketplace.

On this basis, I find that the applicant's goods in class 5, with regards to 'dietetic foods and dietetic additives adapted for veterinary purposes', are goods of the same description as the goods covered by the opponent's registrations for the trade mark aristocat in class 31. Thus, I find that the opposition based on section 44 of the Act succeeds in part, in so far as it relates to goods in class 5 described as dietetic foods and dietetic food additives adapted for veterinary purposes.

(c) Section 60

In support of the grounds relevant to section 60, Ms Ryan submitted it was clear from the opponent's use and promotion of its trade mark aristocat, that it enjoyed a significant reputation for the trade mark in Australia in relation to pet food. Ms Ryan also discussed the particular conditions of the pet food/pet care market, as well as the type of purchasers involved. Owning a pet, she said, is a family affair and as such anyone within that family is likely to purchase pet food and pet care products, particularly the less specialised products found on the supermarket shelf. Here, Ms Ryan gave two examples of possible confusion. The first was a frazzled and distracted mother choosing an aristopet flea collar or worming jube, with her only point of reference to that brand being her satisfaction with the opponent's aristocat cat food. The second example involved a family member purchasing by reference to a shopping list that simply instructs 'Aristocat'. Here she said the hapless shopper may arrive home with an aristopet dietary supplement instead of "moggies chicken dinner".

Having discussed the nature of the goods, the relative market and inherent similarities between the marks themselves, Ms Ryan submitted that the opponent's reputation in the aristocat trade mark was sufficient to conclude that there was a reasonable likelihood of deception or confusion.

Section 60 of the Act reads as follows:

[11] Beck, Koller & Company's Application 64 RPC 76 at p.78;

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

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.

With reference to paragraph (a) of section 60, I have already found the applicant's mark to be deceptively similar to the opponent's registered trade mark in my commentary under section 44. I believe those comments to be applicable under section 60 in the present circumstances. The remaining consideration is the repute of the opponent's mark at the priority date for registration of the applicant's mark and whether, because of any existing reputation, the use of the applicant's mark would be likely to deceive or cause confusion.

The deception or confusion envisaged here is produced as a direct result of the reputation of the opponent. An investigation in terms of s.60 is only triggered if the opponent can provide sufficient evidence of its reputation in the mark in Australia. This reputation must be enough to produce a reasonable doubt in the minds of a substantial number of purchasers, Southern Cross case, supra.

The relevant date for determining the reputation of the opponent's trade mark is the 30 October 1995 (the filing date of the subject application). The opponent's evidence details use of the trade mark aristocat in Australia since approximately 1992/3. The sales and advertising figures in respect of the trade mark aristocat, between the period 1993/4 to 1997, are quite impressive. Goods bearing the trade mark are available in supermarkets Australia wide and the opponent claims 3.9% of the current wet cat food market in Australia.

Reputation does, however, extend beyond recognition and it can only be partially determined by reference to sales and advertising figures. Regard must also be had to the consumer's perception of how a trade mark is being used, developed and promoted by its owner. The total circumstances surrounding the reputation of a trade mark must be considered, as is addressed by the delegate in the BOSS case[12] referred to by Ms Ryan on this point. Indeed, in the present case, regarding the possibility of deception or confusion, the opponent has placed great emphasis on the concept of 'brand extension' and the contextual confusion likely to ensue.

[12] Jackson International Trading Company Kurt D.Bruhl Gesellschaft m.b.H & Co. KG v Hugo Boss AG [1999] ATMO 23 (25 March 1999), unreported;

While the reputation of a trade mark goes beyond an assessment of sales and advertising figures and albeit the opponent has provided some facts concerning pet ownership, there is little else before me to help me gauge the opponent's reputation as at the relevant date. For example, there is no evidence as to the use of brand extension by the opponent or other traders in the pet care industry, nor is there evidence of consumer perception of trade marks within the industry. I am, therefore, relying on my own understanding of pet care products and the industry concerned.

In my view, the pet care industry comprises specific products that are tailored to specific needs and, in my experience, consumers of these products tend to be reasonably 'brand conscious' and 'brand loyal'. I also believe that, in today's society, there is a general public awareness and knowledge of the concept of brand extension.

When considering deception and confusion in terms of section 60, the goods of the trade marks need not be the same, nor of the same description. Nevertheless, there should be a natural association between the goods, as a result of a close trade connection and/or a justifiable consumer expectation of brand extension by the trader. Under these conditions, it would then be reasonable to expect consumers to infer a relationship between trade marks, as being part of an extended product range. For example in Prestige Ltd v Potter and Moore Ltd[13] the Registrar considered the goods 'cosmetics' and 'lingerie and hosiery' to be closely associated due to the circumstances of the trade. With regards to consumer expectation of a trader's use of his or her mark, the extent to which an opponent's reputation lies in intensive brand extension is a determining factor to whether there is sufficient likelihood of deception or confusion[14].

[13] Prestige Ltd v Potter and Moore Ltd (1939) 9 AOJP 3311(Reg);

[14] Southern Cross case, supra, at p. 608.

In the present case, the opponent's use of its mark has been on a very narrow range of goods (wet cat food), for a limited period of time (three to four years) and, as I have previously mentioned, there is no history of brand extension by the opponent. I therefore consider the opponent's reputation in its trade mark to be limited by these facts. In addition, although there are certain trade connections between pet food and veterinary products, I am not convinced the opponent's limited reputation in pet food is enough to bridge the obvious trade differences that exist between the goods of each proprietor, save perhaps goods which fall within the description dietetic foods and dietetic food additives adapted for veterinary purposes.

Thus, in the absence of any evidence to the contrary and when considering all of the surrounding circumstances, it is difficult to see why consumers, on seeing the applicant's trade mark applied to products such as veterinary medicines or treatments, would be deceived or confused as to the trade provenance of the goods.

However, as I have already discussed, I consider there to be a nexus between foodstuffs for animals in class 31 and dietetic foods and dietetic food additives adapted for veterinary purposes in class 5. I believe, therefore, that it is reasonably likely that members of the public will be deceived or confused in relation to these goods. Thus, I am persuaded that the opponent's reputation in its trade mark would inevitably be associated with goods of this nature in class 5. I therefore consider that the opposition succeeds under section 60, to the extent of goods covered by the applicant's class 5 specification, being dietetic foods and dietetic food additives adapted for veterinary purposes.

Decision

I have found that the opposition succeeds under both sections 44 and 60 in relation to the applicant's claim for goods being dietetic foods and dietetic food additives adapted for veterinary purposes. I therefore direct that, subject to any appeal from my decision, the application may proceed to acceptance if the applicant amends its Class 5 specification to read:

Pet care and veterinary products; excluding dietetic foods and dietetic food additives adapted for veterinary purposes.

I will allow the applicant 28 days from the date of this decision to so amend its goods or I will issue my final decision refusing registration of the application.

Ms Ryan, in her submissions, raised some concerns regarding the Registrar's acceptance of the applicant's specification of goods pet care and veterinary products in class 5. She submitted that the description was vague and that the classification made it difficult to determine exactly what goods would be encompassed by the applicant's specification. I take Ms Ryan's point on this matter, however I do not consider it necessary for me to insist the applicant further specify the nature of its goods under this description.

A specification of goods or services is limited by the scope of the class to which it pertains. Further, due to the nature of the statutory rights afforded by registration, the majority of specifications include general descriptions of goods (ie. categories of goods), rather than specific items. I do not consider that the specification lacks clarity, nor that the goods are incorrectly classified. In this regard, the specification is no more general than the description foodstuffs for animals in class 31, for example. Thus, I do not believe the applicant's specification, in this case, falls outside the Registrar's accepted practice.

Costs

If the applicant agrees to amend its specification of goods as I have indicated, it will mean that both parties have been successful to some extent and it is appropriate that each party bear its own costs. If the applicant does not agree to the amendment, then the opponent will have been successful and would be entitled to its costs.

Michelle Edlington

A/Senior Examiner

8 July 1999

  Southern Cross (supra) at 594-5,
  Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658,
  Rysta Ltd's Application (1943) 60 RPC 87 at 108;

  Kodak (A/asia) Pty Ltd's Application (1936) 6 AOJP 1724;