Clearlight Investments Pty Ltd v Barilla G.e R. Fratelli Societa per Azioni

[2017] ATMO 38

TRADE MARKS ACT 1995

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

Re:Opposition by Clearlight Investments Pty Ltd to extension of protection of International Registration Designating Australia 1227675 (29, 30) (Australian trade mark application 1665181) - BARILLA PASTA PRONTO - held in the name of Barilla G.e R. Fratelli - Societa per Azioni.

Delegate:

Jock McDonagh

Representation:

Opponent: Adrian Ryan SC instructed by Piper Alderman Lawyers

Applicant: Frances St John of Counsel instructed by Gilbert + Tobin Lawyers

Decision:

2017 ATMO 38

Reg. 17A.29 opposition – Grounds pursued under sections 42, 44/Reg 4.15A, 59, 60 and 62A not established – IRDA to be granted protection.

Background

1. On 19 March 2014, Barilla G.e R. Fratelli - Societa per Azioni (‘the Holder’) applied for extension of protection to Australia of International Registration no. 1227675. The current details of the resulting International Registration Designating Australia (‘the IRDA’) are:

Trade mark:       

BARILLA PASTA PRONTO

Trade mark application:

International Registration:

1665181

1227675

Filing Date:

19 March 2014

Specification:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; anchovy; broth; soups; caviar; fruits, tinned [canned (Am.)]; vegetables, tinned [canned (Am.)]; cheese; milk shakes; fruit chips; frozen fruits; fruit, preserved; fruit preserved in alcohol; fruit, stewed; frosted fruits; mushrooms, preserved; gelatine; jellies for food; fruit jellies; vegetable soup preparations; vegetables,

preserved; vegetables, cooked; vegetables, dried; lentils, preserved; fruit salads; vegetable salads; margarine; whipped cream; cream [dairy products];

potato chips; low-fat potato chips; fish, preserved; poultry, not live; preparations for making soup; fruit-based snack food; vegetable juices for cooking; tomato juice for cooking; yogurt.

Class 30: Coffee, tea, cocoa, artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pasta, biscuits, pastry and confectionery, ices; sugar, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice, salad dressings, seasonings for food; mixes for sauces; condiments; packaged meals consisting

primarily of rice or noodles; packaged dishes consisting primarily of rice or noodles; pasta sauces; snack foods made from cereals, cookies, crackers,

rusks; ready-to-eat rice dishes; ready-to-eat meals containing pasta; ready to-eat pasta dishes; ready-to-eat meals containing primarily of pasta;

ready-to-eat dried meals consisting primarily of rice; bread sticks, stale bread, pizza; calzone, sandwiches, stromboli [savory stuffed rolls]; ravioli, tortellini, cannelloni, pasta shells, lasagna; dry or liquid ready

meals mainly consisting of rice, dry or liquid ready meals consisting primarily of pasta.

1. The IRDA was examined as required by Regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’). IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 22 January 2015. 

2. Clearlight Investments Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection to Australia of the IRDA on 18 March 2015. Thereafter the parties filed, respectively, a Statement of Grounds and Particulars (‘the Statement’) a Notice of Intention to Defend and filed evidence as provided by the Regulations.

3. I heard the matter in Canberra on 1 December 2016 as a delegate of the Registrar of Trade Marks. Adrian Ryan SC, instructed by Piper Alderman Lawyers, appeared for the Opponent. Frances St John of Counsel instructed by Gilbert + Tobin Lawyers appeared for the Holder.

   Evidence

4. The following evidence was filed in the opposition:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Maurice Aldo Crotti	Managing Director of San Remo group of companies, which includes Opponent	18.08.15 ‘Crotti 1’	MAC 1 to MAC 15
Evidence in Answer
Terry Ryan	Managing Director Barilla Australia Pty Ltd, a subsidiary of the Opponent	2.12.15 ‘Ryan’	Confidential Exhibit A and TR-1 to TR-5
Anna Smyth	Lawyer, Gilbert+Tobin	4.12.15 ‘Smyth’	AS-1 to AS- 14
Evidence in Reply
Maurice Aldo Crotti	Managing Director of San Remo group of companies, which includes Opponent	27.03.14 ‘Crotti 2’	MAC 1 and MAC 2

Discussion

1. The Opponent relied on sections 42, 44/Reg 4.15A, 59, 60 and 62A of the Act as the grounds of opposition. Regulations 17A.28 and 17A.34 extend grounds for rejection of, and opposition under the Act to IRDAs.

   Section 44 – Identical etc. trade marks

2. Section 44 of the Act relevantly states:

(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 similarsee section 10.

Note 2:       For similar goodssee subsection 14(1).

Note 3:       For priority datesee 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)  …

             (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 limitationssee 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 titlesee section 6.

Note 3:       For priority datesee section 12.

1. Thus to found its ground of opposition under subsection 44(1) the Opponent has to establish to my satisfaction the existence of at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Holder and which:

   ·        has a priority date earlier than that of the opposed trade mark; and

   ·is registered or made in respect of the same or similar goods or closely related services; and

   ·has a trade mark substantially identical or deceptively similar to the opposed trade mark.

2. The registrations (‘San Remo Marks’) relied upon by the Opponent are as follows:

Trade Mark No.	Trade mark	Goods
1213765 Priority date 5.12.2007	SAN REMO PASTA PRONTO	Class 30: Pasta, dry pasta, fresh pasta, noodles, rice, snack foods and prepared meals predominantly of pasta, noodles or rice, sauces (condiments) for pasta, noodle or rice meals, spices
1213767 Priority date 5.12.2007	SAN REMO THE PASTA PEOPLE SINCE 1936 PASTA PRONTO	Class 29: Soups, preparations for making soups, packet soups Class 30: Pasta, dry pasta, fresh pasta, noodles, rice, snack foods and prepared meals predominantly of pasta, noodles or rice, sauces (condiments) for pasta, noodle or rice meals

1. There are earlier priority dates for the San Remo Marks and there is certainly some overlap between the goods in respect of which the San Remo Marks are registered and the goods in respect of which protection of the IRDA is sought. However, I do not consider that the IRDA is substantially identical with or deceptively similar to either of the San Remo Marks.

2. The Opponent did not press substantial identity, only deceptive similarity. The IRDA is clearly not substantially identical to the San Remo Marks. I shall only address the deceptive similarity issue.

3. Deceptive similarity is defined in section 10 of the Trade Marks Act as follows:

   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.

4. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited[1]:

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]

   [1] (1961) 109 CLR 407 at 415

5. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

6. The decisive question is whether the use of the IRDA for the goods in Classes 29 and 30 given the prior registrations for the San Remo Marks in those classes would result in a real tangible danger of confusion or deception. I do not consider it would. In coming to this decision it is important that trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[2]

   [2] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

7. Upon consideration of the trade marks it is clear to me that there are sufficient visual and aural differences to prevent a person of imperfect recollection considering the marks to be similar.

8. Contrary to Mr Ryan’s submissions that the phrase ‘PASTA PRONTO’ in the San Remo Marks is the distinctive element of both, I consider that the phrase is descriptive of the goods of both parties and the parties’ name is the distinctive element of their respective marks.

9. In this case, the word “PASTA” is entirely descriptive.[3] The word “PRONTO” is also descriptive: it is defined in the Macquarie English Dictionary as a “colloquialism” for “promptly; quickly”.[4] Its colloquial meaning is essentially the same as its Italian meaning.

   [3] A dictionary definition is set out in Ryan at [19]; Exhibit TR-4

   [4] Ryan at [19]; Exhibit TR-4. For further definitions, see Ryan, Exhibit TR-5 (Merriam-Webster: “without delay: right away”). For translations from Italian, see Ryan at [20]; Exhibit TR-5

10. Indeed, the Opponent’s witness Mr Crotti gives evidence that this descriptive connection between “PASTA PRONTO” and “a pasta meal that is quick and easy to prepare” is emphasized by the Opponent in its marketing.[5] Likewise, Ryan explained that the Holder chose the IRDA as a way of indicating to consumers, in an Italian-styled and easily communicated way, that the Holder’s new range of goods would be quick to prepare and cook.[6]

    [5] Crotti 1at [42], [44].

    [6] Ryan at [27]

11. In this case, the ordinary signification of the words “PASTA PRONTO” is directly descriptive of pasta or pasta meals (incorporating other ingredients) which may be prepared quickly; the ordinary signification of these words is likely to be recognised as such by consumers of pasta and related goods (whether they are Italian speakers or not); and those words are likely to be required by other traders to describe their similar goods and are not themselves inherently adapted to distinguish San Remo’s goods. They lack the requisite trade mark character.

12. Because of the descriptiveness and commonness in the trade of the words “PASTA” and “PRONTO”, those parts of the marks should be given less weight in the comparison exercise. The distinctive features of the marks are, for the San Remo Marks, the words “SAN REMO”; and, for the IRDA, the word “BARILLA”.

13. While previous decisions of the Registrar during the examination process are not generally given weight in opposition matters, I do note that, both the Opponent and the Holder have previously applied to register marks for “PASTA PRONTO”.[7] The Opponent’s application, in 1993, received an adverse report and was allowed to lapse. The Holder’s application, in 2014, was provisionally refused on the basis of s 41(4) and then withdrawn. The Opponent’s registration 1213765 (see above) is endorsed as having been registered under the provisions of section 41(5) of the Trade Marks Act, being on the basis the subject trade mark was insufficiently distinctive to be registrable without evidence of use.

    [7] Smyth at [7]-[9]; Exhibits AS-1, AS-2, AS-3

14. Given the differences in the competing marks I do not consider extending protection to the IRDA would result in a real tangible danger of confusion or deception. This ground of opposition has not been established.

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

15. Section 60 of the Act provides:

    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.

    Note:For priority date see section 12.

16. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

17. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (“McCormick”)[8] by Kenny J at [81] – [82]:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [8] (2000) 51 IPR 102

18. Further, at [86], Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

19. In Crotti 1, at [36] there is evidence that sales of products under the San Remo Marks are substantial, and have been since their re-launch in 2000. Mr Crotti gives examples in exhibits MAC 6 to MAC 15 of the way in which the marks have been employed in respect of San Remo products.

20. Mr Ryan submitted that  although the words “San Remo” usually appear in reasonable proximity with the words “Pasta Pronto”, the words “Pasta Pronto” take on more prominence (especially in registration 1213767). He respectfully submitted that this gave rise to two important consequences. First, it provided the basis for the submission that the Opponent has a reputation in the common law mark “Pasta Pronto”. Secondly, it served as a reminder that when comparing the opponent’s registered marks with the applicant’s mark one gives due weight to the importance of the expression “Pasta Pronto” and it was submitted that the degree of similarity arising from the presence of those exact words was not significantly diminished by the presence in each case of additional words, namely “San Remo” and “Barilla”.

21. Having examined the Opponent’s evidence, I am unable to conclude that the Opponent has established a relevant reputation in the term PASTA PRONTO such as it has become a common law trade mark. While the evidence does show that the Opponent has a significant reputation in its San Remo name, the use of the words PASTA PRONTO seems to me to be purely descriptive of the nature of the goods with the badge of origin being SAN REMO.

22. I refer to, and concur with, Hearing Officer Thompson’s remarks in Bendigo Cemeteries Trust[9] regarding the use of descriptive material in the presence of more distinctive elements:

    Further, where the business name has very low inherent adaptation to distinguish, and it is being used close to a distinctive trade mark such as that shown at paragraph 18, above, that name may be doomed to shuffle forever in the shadow of that distinctive trade mark as a kind of limping trade mark of the ilk referred to by Jacob J in Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279.

    [9] [2014] ATMO 82 at [20]

23. Therefore, the Opponent has not established the ground of opposition pursuant to section 60 of the Act.

    Section 42(b): Trade mark’s use contrary to law

24. Section 42 of the Act relevantly provides:

    42 Trade mark scandalous or its use contrary to law

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

    […]

    (b)         its use would be contrary to law.

25. The Opponent nominated section 18 of the Australian Consumer Law (‘ACL’), which is contravened when a party engages in conduct in trade or commerce that is misleading or deceptive, or is likely to mislead or deceive customers. There must be a ‘real but not remote chance or possibility’ of misleading or deceiving regardless of whether it is less or more than 50 percent.[10]

    [10] Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 55 ALR 25 at 34, per Bowen CJ, Lockhart and Fitzgerald JJ.

26. However, in the circumstances of this matter, where the Opponent has not established that the use of the IRDA would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the IRDA would ‘mislead or deceive’ under the ACL (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited[11], Gibbs C.J. said at [8]:

    The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks  Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.

    [11] [1982] HCA 44; (1982) 149 CLR 191.

1. In the same case Mason J. said at [30]:

   “. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

2. I am not satisfied that this ground of opposition, under section 42(b) of the Act, has been established.

   Section 62A: Trade mark application made in bad faith

3. Section 62A provides:

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

4. In DC Comics v Cheqout Pty Ltd[12] (DC Comics) at [62], Bennett J summarised relevant principles established in UK authorities and set out in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[13] (Fry (No 2)), that would be relevant in considering whether an application has been made in breach of s 62A, including:

   Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant time of making the application. The objective element requires the decision-maker to decide whether, the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

   The question is whether conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

   [12] (2013) 101 IPR 334

   [13] (2012) 94 IPR 551.

5. Mr Ryan submitted that it is beyond comprehension that the Holder did not know of the reputation and registration of the “San Remo Pasta Pronto” trade marks at the date of the application. The Registrar is asked to draw this inference from Mr Crotti’s evidence that it is “highly likely” that Barilla “was well aware” of the SR PP Range and the San Remo Marks.

6. Even if that were so, it is settled law that knowledge of a competitor’s mark is not sufficient to make out bad faith. The consensus of a number of decisions of the Registrar or the court is that bad faith requires an element of intentional dishonesty or a deliberate attempt to mislead the Registrar[14] or conduct of an unscrupulous, underhand or unconscientious character[15]. There is no allegation that that is the case here.

   [14] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26 at [11].

   [15] Fry No 2

7. There can be no bad faith in selecting descriptive words for the sake of their ordinary meanings and even if the Holder has knowledge of the Opponent, the use of the same descriptive words does not necessarily indicate bad faith.[16]

   [16] Barossa Valley Estate Pty Ltd v Australian Vintage Limited [2015] ATMO 70 at [67]

8. In Crotti 2 at [37] – [40], Mr Crotti says Barilla has used a slightly different mark overseas, and gives his opinion that Barilla “is likely to” market and sell similar products in Australia. It appears that the Registrar is asked to infer that the Holder has deviated from its overseas trade mark in order to trade off the reputation of the Opponent.

9. In Ryan, the Holder’s Managing Director responsible for growing Barilla’s business in Australia expressly denied the allegation of bad faith. He explained that Barilla chose the IRDA as a way of indicating to consumers, in an Italian-styled and easily communicated way, that Barilla’s new range of goods would be quick to prepare and cook.[17] Additionally, the IRDA also contains the distinctive “Barilla” element, which Barillla uses for a variety of products, making it unlikely that the Holder was seeking to create customer confusion. Mr Ryan stated that Barilla has not sought to take advantage of any reputation of San Remo in the San Remo Marks or used any indicia associated with those marks.

   [17] Ryan at [27]

10. Bad faith will not be found easily given the serious nature of the allegation. I do not consider that is the case here, particularly given that “PASTA PRONTO” does not amount to the Opponent’s common law trade mark and is not particularly distinctive.

11. I am not satisfied that this ground of opposition, under section 62A of the Act, has been established.

    Section 59: No intention to use trade mark

12. Section 59 of the Act provides:

    59Applicant not intending to use trade mark

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)         to use, or authorise the use of, the trade mark in Australia; or     

    (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

13. The Opponent must establish that, as at the priority date of the IRDA (14 March 2014), the Holder did not intend to use or authorize the use of that IRDA in Australia. That intention need not be an intention to use the mark ‘immediately or within any limited time’.[18] The act of filing an application is prima facie evidence of an intention to use a mark.[19] In Intel Corporation v Magnatex International Pty Ltd[20], Hearing Officer Homann said:

    It is not appropriate in opposition proceedings for the Registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant's specification and the lodgement of the application and the applicant's statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use. The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods.

    [18] Ritz Hotel Ltd v Charles of Ritz Ltd (1988) 15 NSWLR 158 at 203.

    [19] Kimberly-Clark Worldwide Inc v Goulimis (2008) 78 IPR 612 at [10].

    [20] (1998) 41 IPR 406, at 412.

14. Mr Ryan submitted that this ground arises by reason of the broad statement of goods in the Holder’s IRDA. He submitted that it can readily be inferred that a trade mark proposed for use by a company involved in the business of selling pasta and including the word “pasta” is intended to be used on pasta and pasta-related products, and not on such things as milkshakes, fruit chips, frozen fruits, gelatine, jellies for food, fruit jellies, margarine, whipped cream, cream [dairy products], potato chips, low fat potato chips, fish, preserved, yoghurt, coffee, tea, cocoa, artificial coffee and so on.

15. Ryan at [26] provides evidence that the Holder’s “Barilla Pasta Pronto” range has not yet been launched in Australia, and so the Holder has yet to confirm which specific goods will be launched under the Mark. Immediate use is not required to defeat an opposition under s 59.

16. Ms St John submitted that is open to the Holder to use the IRDA on the full range of the applied-for goods as merely demonstrating they are quickly prepared. Citing Lockheed Martin Corporation v Raytheon Company, she noted that Ryan demonstrates that the Holder is a large company and it is within its capacity to offer the full range of goods specified in the application under the IRDA[21].

    [21] [2012] ATMO 103.

17. I have considered the evidence in these proceedings and accept that of the Holder. I give that of the Opponent less weight due to its speculative nature. I am satisfied that the Holder has demonstrated the requisite intetion as the priority date of the applied for trade mark. This ground of opposition has not been established.

    Decision

18. Regulation 17A.34N provides:

    17A.34N  Decision on opposition

    (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

    having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

    (2)The Registrar must notify the International Bureau of the Registrar’s decision.

19. The Opponent has not established the grounds on which the IRDA was opposed and it is appropriate that the Registrar decides to extend protection to the Trade Mark.

20. The IRDA may then proceed to protection 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 protection shall not occur until the appeal has been decided or discontinued and the disposition of the IRDA be in accordance with the Court’s order or direction.

    Costs

21. As the Holder has been the successful party, it is appropriate that the Registrar award costs against the Opponent at the scale set out in Schedule 8 to the Regulations.

    Jock McDonagh

    Hearings Officer

    Trade Marks Hearings

    28 April 2017