Cockburn Cement Ltd v BGC (Australia) Pty Ltd

[2008] ATMO 13

TRADE MARKS ACT 1995

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

Re:Opposition by Cockburn Cement Ltd to registration of trade mark application 954600(19) - ULTRA CREME - filed in the name of BGC (Australia) Pty Ltd.

Delegate:	Terry Williams
Representation:	Opponent: Tim O’Callaghan, solicitor, Piper Alderman Applicant: Chris Sgourakis, trade mark attorney, Griffith Hack
Decision:	2008 ATMO 13 Section 52 opposition: sections 41, 43, 44 and 60 - registration proceeding - costs awarded against opponent.

Background

1.     BGC (Australia) Pty Ltd has applied to register the trade mark ULTRA CREME for “building materials (non-metallic) including pre-packed and bulk sand, cement, blended cement, cementitious materials in this class, mortar”.  The application was filed on 20 May 2003 (“the critical date”) and it has been examined by an examiner of trade marks and advertised as having been accepted for possible registration.

2.     Registration has been opposed by Cockburn Cement Ltd (“the opponent”).  The parties subsequently filed and served evidence to support their respective positions and the matter was set down for me to hear and decide under delegation from the Registrar of Trade Marks.  At the hearing, the applicant was represented by Chris Sgourakis, a trade mark attorney of the patent attorney firm of Griffith Hack.  The opponent was represented by Tim O’Callaghan, solicitor, of the firm of Piper Alderman, solicitors.

Grounds– general remarks

3.     The opponent relied on a number of grounds.  It is said by the opponent that the trade mark ULTRA CREME is variously not capable of distinguishing (s 41 of the Trade Marks Act 1995), possessed of a misleading connotation (s 43) and deceptively similar to various trade marks either used (s 60) or registered (s 44) by the opponent. 

4.     The applicant relies on what it calls a line of authority for the proposition that it is for the opponent to establish that the trade mark should clearly not be registered.  The authorities that Mr O’Callaghan relies on were reviewed in Pfizer Products Inc v Karam 2006 FCA 1663, which Mr O’Callaghan also noted.  The view of the Registrar of Trade Marks is that, as per the analysis of Gyles J in the case in question, the proper course is to require an opponent to establish a ground of opposition on the balance of probabilities. 

5.     At the end, all of the grounds fail.  To provide an efficient explanation of why this is so it will be useful to commence with an explanation of the factual background on which the parties, primarily the opponent, rely, viewed with the assistance of the arguments of the advocates at the hearing.

6.     The opponent argues, as a common facet of all of the grounds of opposition, that CREME is variously either factually distinctive of its goods, not those of the applicant, or that the trade mark CREME is at least familiar to relevant consumers and likely to be associated with the opponent rather than the applicant.  There is also another aspect to this argument that I will deal with separately, in relation to s 43 of the Act.

7.     In 1988 the opponent devised a formula for off-white cement.  David Jones, the opponent’s Manager, Marketing and Technical Services, gives evidence in the matter. Mr Jones attempts to put a gloss on what the opponent has done.  He asserts, with no documents in verification, that the opponent has done various things by reference to “the trade mark CREME”.

8.     Viewed objectively, the evidence supports a different finding, that relevant product was marketed under the trade mark COCKBURN CREME.  A picture of one of the opponent’s bags is at exhibit DJ2.  I have also included the cover page of a technical brochure from DJ1, and together these make up appendix A.  It will be observed that one of the bags contains “high early” cement, which I understand is cement formulated to provide greater strength earlier in the curing process, which might otherwise take a week or more.  The other bag is labeled on the side, “general purpose creme cement” with the opponent’s logo and the words COCKBURN CEMENT.  The front of the same bag, however, is labeled COCKBURN CREME GENERAL PURPOSE CEMENT.

9.     Mr O’Callaghan argued strongly that, while COCKBURN was obvious on the bags in question, the eye was then taken to CREME.  This was, he said, an education of consumers to take CREME simpliciter as an indication of origin.

10.     Mr O’Callaghan is right to say that, once COCKBURN is a given, the tradesmen and others who would buy these goods will have a focus on CREME.  However, this is for one purpose only, to obtain the right colour of cement to make mortar for light-coloured brickwork.  Thus, the relevant part of the Quick Guide to Estimating Mix Ratios and Quantities for Cockburn Cement provides as follows[1]:

[1] A somewhat similar estimator, dated after the critical date, is in evidence.  It is apparently aimed at the handyman and makes no separate use at all of the word CREME.

11.     Within that context, as Mr Sgourakis noted at the hearing, it is not at all surprising that CREME is used by itself.  In its context, it is being used for contrast with GREY.  Moreover, this is done, not to indicate the required amount of COCKBURN CREME cement but to indicate that the finished mixture, either mortar or render, will be “crème”, if made with COCKBURN CREME, sand and lime, or grey, if made with COCKBURN GREY.  I note that, consistently, in a letter to its customers at the time of the introduction of the ULTRA CREME product, the applicant described the new cement as “a new more vibrant creme cement with a new name”.  However, I give this very little weight since it might have been a one-off usage or done for tactical reasons, rather than for ordinary trading ones.

12.     Mr Jones, in the opponent’s evidence, attempts to portray the current generic term for this sort of off-white cement as “cream”.  See, consistently, the following, under the headings “Bricklaying” and “Plastering”:

13.     Mr Sgourakis, at the hearing, seized on these things as evidence that cream and “presumably” creme were both generic terms.  I do not need to go quite so far.  By itself, CREME, for reasons which will emerge, is not particularly well-adapted to distinguish any one trader’s goods from another’s.  It will be sufficient if I say that the opponent’s actions do not, in my view, support its claim to any sort or degree of exclusivity in the term CREME. 

14.     There is evidence as to the supply of the applicant’s cement products under the trade mark BGC CREME.  This started in 1997, and ran until 2002.  Mr Mullins, for the applicant, describes the matter in terms of the product being bagged by the opponent, at the request of the applicant, in bags designed by the applicant.  The bags in question are in evidence, as is correspondence about their design and relevant price lists.  There seems no room to believe that the facts are anything but as he says.  There is nothing in the supply agreement to indicate that the trade mark to be borne on the product was under the control of the opponent.

15.     He goes on to make unsupported assertions that bulk cement made by the opponent was similarly purchased by the applicant and on-sold to the applicant’s customers under the trade mark BGC CREME.  That claim, however, is not at all well-supported although, as things turn out, little turns upon this.

16.     The scene was later set for dispute between the parties.  In 2002, the supply arrangements that had been put in place came to an end.  The agreement stipulated a termination date and the parties decided not to complete any new agreement thereafter.  There is some disagreement about why this occurred but the reason is immaterial in the present matter.  The applicant, from that point on, in mid 2002, sourced its cement from another supplier.  In consequence of the different cement being used, the applicant’s later product, now sold under the trade mark ULTRA CREME, is not quite the same colour as previously, being apparently more white than cream. 

17.     The opponent has been able to register the trade marks BRICKIES GREY, BRICKIES CREME and BRICKIES LITE for goods which include cement and mortar mixes and I note that this was without any objection from the examiner of trade marks in terms of s 41 of the Act.  The opponent’s searches of the database at the Trade Marks Office establish that, as regards to trade marks in the relevant class of goods and including the element CREME, there are only two interested parties, the two presently in dispute.

18.     The opponent contends, in a nutshell, that because of the foregoing events, it and it alone has the right to control use of CREME as a trade mark for cement products. 

19.     Much of the rest of the evidence in this matter is unsatisfactory.  Mr Mullins, who has a position with the applicant as Sales and Marketing Manager, attempts to give evidence about a lack of usage of “the word crème alone as a brand name or to market its cement products” by the opponent.  He casts the Jones declaration as “misleading”.  He proceeds to set down his views of what the usage made by the opponent actually establishes.  His views are, of course, interesting, and his opinions are something that I have considered fully.  However, while he no doubt sets down his views with veracity, it is for the opponent in this matter to establish its grounds, by evidence which is put before me.  It is not for the applicant to negate this by setting out its opinions to the contrary, or trying to prove negatives.  It is therefore hard to see how the opinion of the applicant’s declarant could negate evidence that goes to facts; and the opinion that matters, about what those facts would establish, is mine, not that of Mr Mullins.  Mr Scott, the general manager of the applicant, adds technical detail and establishes various matters that are not particularly compelling in the analysis.

20.     I will say nothing of the internet searches introduced by the opponent and dated in December 2004, itself a year and a half after the critical date.  If the results show anything, it may only be that the opponent is more skilled in designing websites to achieve prominent listings on a Google search engine than is the applicant. 

Section 41 – Not capable of distinguishing?

21.     The opponent has argued that the trade mark ULTRA CREME is not capable of distinguishing the applicant’s goods.  This is said to be partly because of the proprietorial overtones that it alleges are attributable to its own usage of CREME.  I will leave aside the proprietorial thread of this argument.  It is dealt with under other provisions.  Suffice to say by analogy, that the trade mark ULTRA COCA COLA is quite capable of distinguishing.  The only question is, whose goods would it rightfully distinguish?  It would be to take the words in question completely out of context, but is probably appropriate to suggest that, in a dispute of this sort, s 41 could also be described as “effecting a prophylactic support for commercial distinctiveness”[2].

[2] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at paragraph 47, French and Tamberlin JJ,

22.     However, if the aberrant proprietorial thread is set aside, Mr O’Callaghan may well have the beginnings of a valid argument, although ultimately it does not succeed.  As he argued it, “ultra creme is just like ultra-white”, not adapted, in short, to distinguish the goods of any one trader from others wanting to use the expression in question and acting only honestly and fairly.

23.     At the hearing, both representatives made reference to two published decisions of this office, Application by Springs Industries Inc, (ULTRA SUEDE) and a later decision, Application by Courtaulds Textiles (Holdings) Ltd[3] (ULTRA BRA).  In the latter decision, the delegate, Ms Hardie, conveniently notes the relevant dictionary definitions of the word element “ultra”.  She noted:

[3] (1991) 23 IPR 188 and (1994) 30 IPR 624 respectively.

The Macquarie Dictionary entry for “ultra” reads, inter alia:

ultra: adjective

1. going beyond what is usual or ordinary; excessive; extreme.

2. a prefix meaning:

a) beyond (in space or time) as in ultraplanetary.

b) excessive; excessively, as in ultraconventional.

These meanings for the most part are the meanings that are paralleled or expanded on in other references. The Oxford English Dictionary has a substantial entry[4]. It lists “ultra” first as an independent word, and then as a prefix. As an independent word it is listed, inter alia, with the following meanings:

[4] At the hearing before me, Mr O’Callaghan relied on the Shorter Oxford.  The difference is irrelevant.

ultra: adjective

1. ultra-royalist

2. of persons or parties: holding extreme views in politics or other matters of opinion

3. going beyond the usual or ordinary; excessive, extreme, immoderate

4. expressive of extreme views

Oxford then lists a set of meanings for “ultra” when it is employed as a prefix. This listing is headed up with the following comments:

On these models [viz ultramarine and ultramontanus] are formed the types illustrated in senses 1 and 2 [see below]. The further development represented by sense 3 [again below] apparently originated in French with the terms ultra-révolutionnaire and ultra-royalist, and has become very prolific in English use, as well as in the Romanic languages and in German, Swedish and Danish.

ultra: as a prefix — adjective

1. with nouns and with adjectives — signifying lying spatially beyond or on the other side of, as ultra-equinoctials (those who live beyond the equinox).

2. with adjectives — signifying going beyond, surpassing, or transcending the limits of, as ultra-human, ultra-natural, ultra-pecuniary.

3. signifying an excessive or extreme degree of the quality or condition expressed by the adjective forming the second element of the compound as ultra-affected, ultra-Anglican, ultra-Arctic, ultra-beloved, ultra-bourgeois …

4. with nouns — in the same sense denoting persons, as ultra-Catholic, ultra-feminist, ultra-leftist, ultra-modernist, ultra-royalist …

24.     Ms Hardie went on to distinguish the ULTRA SUEDE decision.  She approached the matter on the basis of what she described as significant new material, the dictionary definitions above, which had not been considered in the earlier case, and which tended to negate the case that ULTRA BRA was descriptive.

25.     Ultimately, Ms Hardie was dealing with a matter under the older 1955 legislation.  She came to the conclusion that the application before her could, on evidence of use, be accepted in Part B of the old register.  She stated, as a general proposition:

Where “ultra” alone is attached to the name of the goods, then I think the terminology is not altogether a natural use of English, and I consider a degree of inherent distinctiveness is introduced.  This degree is not great, and, applying the directives specified by Gibbs J (as he then was) in Burger King Corp v Registrar of Trade Marks (the Whopper case) [1972-73] ALR 1361, I consider that marks of this kind can only proceed on the basis of evidence.

26.     However, Ms Hardie also noted that there had been a revision of official practice.  She spoke of a changing usage of the English language over time, and of a “tightening up” of official practice.  There has clearly been some ebb and flow of practice over time, and I am required to approach the matter on its own merits, without being overly restricted by Ms Hardie’s general remarks about what classes of “ultra” trade mark might, or might not, have required evidence of use to satisfy administrative standards at that time.  

27.     Nor am I particularly swayed by the state of the register.  Mr Sgourakis attempted to draw support from various acceptances of “ultra” trade marks.  The examples that he principally relied on are but four, of which at least one, ULTRA BRITE in relation to metal tubing, would simply suggest that the examination of these matters is sometimes found difficult.  Part 22, para 13.4 of the current version of the Trade Marks Office Manual of Practice and Procedure relevantly advises:

"Ultra" is an ordinary term currently used as a superlative, denoting anything which is claimed to be ultimate in its field.  The word "ultra" on its own or in combination with an adjective or common suffix which describes a character or quality of the goods or services has limited inherent adaptation to distinguish and will generally only be acceptable on the basis of evidence.  Examples where objections are warranted include "ultra creamy" for milk and "ultra fast" for delivery services.

The word "ultra" followed by the name of the goods is considered to have a small amount of inherent adaptation to distinguish and therefore would require evidence that the trade mark does or will distinguish under subsection 41(5), or of any other circumstances, in order to be accepted.

28.     Mr O’Callaghan presented the matter in simple terms.  ULTRA CREME, he argued, was no better than CREME for present purposes.  The element “ultra”, he said, added nothing.  Now, if the present matter were a simple case like “ultra fast curing”, analogous to those to which the Manual refers, it would be beyond question that he is correct.  However in the present case the trade mark contains, arguably, French word “creme”. 

29.     Strictly speaking, the French word is crème, and it can be used either as an adjective or as a noun, just as the English word cream.  However, I think it is probably fair to say that tradesmen or others involved in home maintenance would typically be either unaware of the fine points of the distinction between crème and creme, or regard the issue as immaterial in terms of modern English usage.  A fête, to most people, is a fete, and a café is a cafe.  But, even so, if I say no more than that the word is an obvious miss-spelling of the English word “cream”, that fact is still of some relevance to the analysis.  The word CREME is either as a miss-spelling or a French word, but it presents itself, on bags of cement, as being slightly out of the ordinary, its presence tending to lift the composite ULTRA CREME out of what might otherwise be seen as a descriptive role. 

30.     Mr Jones suggested that the word derives from the French term crème de la crème, and was meant to indicate a superior product.  I am not at all sure this would be a derivation obvious to the relevant public, but nor do I think that the difference between the word CREME and the ordinary adjective “cream” would be overlooked.  It might perhaps be that, in the minds of many customers, the word in question was seen as an obvious miss-spelling of “cream”, with a soupcon of French flavour about it.

31.     Beyond this, the words “ultra crème” (and here I deliberately use the French word) lack the clarity of expressions like either “ultra-white” or “ultra-creamy”.  Cream, as a colour, is a yellowish shade of white and it is hard to see how words to the effect of “ultra yellowish-white” could have any meaning other than an imprecise one.  However, language is not an exact science and I think it would be fraught with difficulty to attempt to place “ultra cream” on a matrix in relation to “ultra white” or “ultra blue” and to then attempt to draw lines separating the sheep from goats, as it were.  I will approach this matter on its merits, and leave it to others to adopt general formulations for examination practice.

32.     The structure of s 41 will be familiar to practitioners but is not necessarily helpful at first sight to those who have not studied it.  Conveniently, the Manual assists, and notes, with relevant case law:

All trade marks examined will fall into one of three categories:-

·trade marks that are sufficiently inherently adapted to distinguish that they are prima facie capable of distinguishing (subsection 41(2) applies);

·trade marks that have some limited inherent adaptation to distinguish but are not prima facie capable of distinguishing (subsection 41(5) applies);

·trade marks that have no inherent adaptation to distinguish (subsection 41(6) applies).

…

In the matter of deciding whether a trade mark is inherently adapted to distinguish, the words of Kitto J in the MICHIGAN case[5] are worth quoting at length as they set out the criteria upon which such a judgement should be made:

That ultimate question must not be misunderstood [that is, "whether the mark is registrable as being 'adapted to distinguish' the applicant's goods"].  It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it.  The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.  In Registrar of Trade Marks v W. and G. Du Cros Ltd. (1913) AC 624 at 634, 635) Lord Parker of Waddington having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "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 upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods” ….

Kitto J in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[6] has summarised the appropriate inquiry as follows:

The question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

[5] Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 at 513

[6] (1965) 112 CLR 537,

33.     It would be possible to adopt Mr Sgourakis’s fall-back argument.  This is that, if the trade mark is not, of itself, inherently capable of distinguishing, the evidence of use provided by the applicant has rendered it so.  That would be a finding open to a court on appeal, but I am prepared to decide that the trade mark presently at issue is more akin to “ultra pastel” than “ultra white”, and that the adoption of the word “creme”, be it French or a miss-spelling, fully resolves the matter.  The opponent has failed to convince me that the trade mark is not capable of distinguishing the goods in question.[7].

[7] In the event that this decision is appealed, I state that, if I am wrong in this, the evidence of use would still justify registration in relation to “cement, mortar, and similar products in this class”.

Section 43 - Likely to deceive or cause confusion?

34.     Section 43 of the Act provides:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

35.     In Big Country Developments Pty Ltd v TGI Friday's Inc, [2000] FCA 720, 48 IPR 513, the Full Court of the Federal Court observed at page at 521:

The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43].  It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others.  So the alleged deception or confusion is not for a reason covered by s 43.

36.     The present matter could, superficially, be dismissed as such a case, but that would be an incorrect view of the matter.  Here, the opponent relies on what Mr OCallaghan argued was a known and familiar pattern of usage within the building trade, whereby trade marks containing the word CREME, whatever those trade marks might be, meant that the resultant mortar would cure in a particular colour, that colour being attributable (whether the consumer knew it or not) to the use of opponent’s cement. 

37.     As I said in Wiley Publishing IncvMoondance Pictures Pty Ltd[8]: 

Words have meanings, implications and suggestions only because these arise through use and familiarity.  Sometimes these result in dictionary entries, in other instances they are not so easily documented and must be got at from opposition evidence.  Hence in Amalgamated TV v Clissold 52 IPR 207 at page 218, the hearing officer noted:

The word “connotation”, in this context, refers to that which is implied within a trade mark itself, in addition to its essential or primary meaning.  It is possible that evidence can reveal such a connotation.  This can occur when it is convincingly shown that there is a perception, among people in an intended market, that a mark is so related to one party that use of the same mark by another would be deceptive and confusing because purchasers might incorrectly infer some sort of endorsement or relationship.

It seems to me, therefore, that it is impossible to decide if a sign has a connotation without looking at it in its place in our society and our culture. 

[8] [2004] ATMO 70.

38.     As to the facts of the present matter, the relevant cement had previously been used by the applicant as well as by the opponent, and sold under the trade marks of COCKBURN CREME and BGC CREME.  Mr O’Callaghan argued that it did not matter whether I was of the view that the element ULTRA CREME was descriptive.  He argued strongly that, within the building trade, at least in Western Australia, trade marks that involved the element CREME had, by the critical date, evolved a connotation of producing a particular colour of off-white.  This was, he said, a colour attributable to the cement material sourced from the opponent, and variously sold both by them and by the applicant.  What mattered, he argued, was the common ground that exists between the parties, that the cement products made by the applicant now, under its trade mark ULTRA CREME, will unquestionably dry a slightly different pale colour to that which would have been produced by the applicant’s goods under its earlier BGC CREME trade mark or by the opponent’s COCKBURN CREME products.

39.     In truth, the evidence that, within the building industry, the word “creme” has established a connotation is very slim.  However, purely for the purposes of argument, I am prepared to accept that this matter is, just barely, within the scope of s 43.  By saying this, I accept that the matter is just barely outside the scope of matters referred to in Big Country, supra.

40.     I am mindful that a trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.  See, variously, decisions over time, notably Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd.  Thus, in McCorquodale v Masterson Kenny J noted the decision of the Full Court of the Federal Court in reference to the meaning of "likely to deceive or cause confusion", see Registrar of Trade Marks v Woolworths[9], whereat French J said:

The use of the word "likely" in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial.  There must be a "real tangible danger of its occurring".

[9] (1954) 91 CLR 592 or 1A IPR 465; (2004) 63 IPR 582 and [1999] FCA 1020 at 380 respectively

41.     Where this aspect of the opponent’s case fails, however, is in the assumption that any such connotation of the word CREME can survive, intact, the melding of that word into trade marks such as the one used by the applicant.  This is not a case where the applicant has taken up the word CREME, solus, and used it to designate its goods.  Nor is this a case where the totality of the trade mark ULTRA CREME has any precise meaning.  Finally, these are goods where, as with paint, users are aware of the potential for colours to vary from brand to brand. 

42.     As Mr Sgourakis argued, there is only one instance of any confusion, in 2006.  This was evidenced in a call to the opponent about a product clearly bagged as BUILDERS CHOICE ULTRA CREME.  BUILDERS CHOICE, I will note, is the current embodiment of the applicant’s product and had by then been on the market for four years.  There is no record of why the caller was “sure the product (was) Cockburn Cement”.  Perhaps the caller believed that the “new” player on the field was part of the opponent’s organization, or that the opponent had changed its brand.  As a blind guess, the caller had a 50% chance of being right but, as matters turned out, the new trade mark was attributable to the applicant, not the opponent. 

43.     There is nothing like enough evidence to convince me that there is any significant risk of confusion arising simply because the word CREME exists in the applicant’s present trade mark, its previous trade mark, and the opponent’s.  Nor is there any evidence at all that consumers were aware that, up to 2002, the then-competing CREME trade marks had both designated a common cement ingredient.

Section 60 – deceptively similar to another trade mark?

44.     This provision is as follows:

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.

45.     Even if, as a threshold question, I accept that the trade marks CREME and ULTRA CREME are deceptively similar, this provision requires, as a minimum, that the opponent establish a reputation in the trade mark CREME. 

46.     I have already set out the facts that support my rejection of the contention that the opponent has demonstrated any reputation in that trade mark.  The opponent’s trade marks are COCKBURN CREME and BRICKIES CREME.  In the evidence that is before me, there is not a single clear-cut instance of usage of CREME as a trade mark.  The opponent therefore cannot even begin to address the onus of establishing that such usage, at the critical date, had accrued a reputation in terms that would establish s 60 as a ground of opposition.

Section 44 – prior application or registration for deceptively similar mark?

47.     For present purposes the key element of s 44, which I will not set out in full, is the reference to “deceptively similar” in terms of 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.

48.     I reject the opponent’s contention that the trade mark ULTRA CREME is deceptively similar to either BRICKIE’S CREME or COCKBURN CREME.  Mr O’Callaghan’s tenet is that in both cases the critical element is the word CREME.  This is simply not one that the evidence would support.  Once that is clear, the level of similarity is so slight that it cannot be supported in terms of s 10, and the opponent’s ground simply cannot succeed.  Mr Sgourakis submitted a very thorough written analysis, including that which is set out in Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd [2004] FCAFC 201. However, without some credible basis to support the monopoly it asserts in the element CREME, the opponent’s claim under this heading is simply not credible.

Conclusion

49.     The opponent has failed to establish any 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 either the appeal has been discontinued or, otherwise, the court orders that registration proceed.

50.     I direct that the opponent pay the costs of the applicant in terms of the official scale in the regulations.

Terry Williams
Hearing Officer
Trade Marks Hearings
04 February 2008

Appendix A