Compagnie Gervais Danone v Namice Pty Ltd

[2003] ATMO 49

TRADE MARKS ACT 1995

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

Re:Opposition by Compagnie Gervais Danone to registration of trade mark application 824874(30) - DANES GOURMET COFFEE - filed in the name of Namice Pty Ltd.

Date of Decision:

22 August 2003

Delegate:

Decision:

Mary Skivington

Section 52 opposition - grounds of opposition under sections 41 and 44

unsuccessful  - registration allowed. Costs awarded against the opponent.

Background

1. Namice Pty Ltd, ('the applicant'), filed trade mark application number 824874 to register the trade mark, Danes Gourmet Coffee, shown below, on 24 February 2000, for goods in class 30.

1. The application was examined and, on 10 January 2002, acceptance for registration of the application was advertised in the Official Journal of Trade Marks, for the following goods:

Coffee and coffee products, including roasted and ground coffee beans.

1. Compagnie Gervais Danone, (the opponent'), filed notice of opposition on 10 April 2002 citing nine grounds of opposition, under the provisions of the Trade Marks Act 1995, ('the Act').

2. In due course the evidentiary stages were completed. Neither party requested a hearing so, as a delegate of the Registrar of Trade Marks, I am to decide the matter, on the basis of the written record.  Gail Hill, a legal practitioner with the attorney firm of F B Rice & Co, filed submissions on behalf of the opponent. Michelle Groves, a partner in the legal firm, Deacons, filed submissions on behalf of the applicant.

Evidence

Evidence in support

1. The evidence in support comprises a statutory declaration, dated 4 July 2002, made by Gail Hill. Exhibits GMH.1 to GMH.5 accompany the statutory declaration.  Ms Hill's declaration lists a number of 'DAN' prefixed, trade mark registrations owned by the opponent and one, DANBREW, in the name of a third party, that she submits should have been considered in the examination of the trade mark.  Also included with the declaration are the results of a search for the surnames, Dane and Danes using the Search for Australian Surnames, (SFAS) searching tool, and a copy of a listing for the word Dane taken from Webster's Third New International Dictionary.

Evidence in answer

1. The evidence in answer comprises two statutory declarations with exhibits.  The first of these, dated 26 September 2002, was made by Emma Van Haaster, a solicitor with Deacons. Ms Van Haaster declares that the surnames Dane and Danes, in accordance with the Trade Marks Office's guidelines, are clearly not common. Exhibit EVH1 that accompanies her declaration contains the results of a search of the Trade Marks Office's trade mark database, ATMOSS, for trade marks in class 30 beginning with the prefix, 'DAN'.  Paragraph 7 of the declaration is a list of trade marks located in the ATMOSS search, with the prefix 'DAN', apart from the subject trade mark and the opponent's trade marks.

2. The second declaration, dated 1 October 2002, was made by Paul James Jackson, a director of the applicant.  He declares that the applicant has an 80% ownership of the  trade mark, DANBREW,  referred to in the Hill declaration  as being owned by a third party. He declares that the applicant has continuously used its trade mark throughout New South Wales, since November 1999.  Mr Jackson reports that the applicant's goods are mostly sold through a wholesale business, directly to cafes and offices but, he says, they are also sold through several speciality shops, all fully or partly owned by the applicant.  Mr Jackson declares that he has made enquiries and that to his knowledge, use of his trade mark, has not led to any instances of confusion. Exhibits to Mr Jackson's declaration include samples of packaging, a photograph of one of the applicant's speciality shops, brochures and several magazine articles written about Mr Jackson and his connection to the coffee industry.  Mr Jackson also provides revenue figures for the latter part of 1999 and the years 2000 to 2002. I consider these to be impressive given the comparatively short period of use of the trade mark.

Evidence in reply

1. The evidence in reply comprises a statutory declaration, dated 19 December 2002, by Gail Hill, in which she asserts that because of the application's priority date, 24 February 2002, a number of the trade marks referred to in exhibit EVH1 of the Van Haaster declaration are not relevant. Ms Hill reports, that a significant number of the 'DAN' prefixed trade marks referred to in the extracts, are owned by the opponent. Ms Hill notes that only three of the twenty relevant trade marks include or cover coffee products.  These are the trade marks DANTE, DANBREW and DANGER MEN COOKING.  Ms Hill submits that neither DANTE nor DANGER MEN COOKING  are similar to the opponent's DAN trade marks but that DANBREW which the opponent has cited in its evidence is deceptively similar to the applicant's trade mark. Finally, Ms Hill asserts that because the applicant has only used its trade mark for a short period the provisions of subsection 44(3)(a) of the Act are not available to the applicant.

Grounds of opposition

1. In her submissions on behalf of the opponent Ms Hill argued grounds of opposition under the provisions of sections 41 and 44 of the Act.  Ms Hill made no submissions in respect of the remaining grounds of opposition contained in the notice of opposition.

Submissions and the law

Section 41

1. Subsection 41(2) of the Act provides that an application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods from those of other traders.  Subsection 41(3) provides that in deciding the question, the Registrar must first consider the extent to which the trade mark is inherently adapted to distinguish.   If the Registrar finds the trade mark is to no extent inherently adapted to distinguish, then it is to be considered under the provisions of subsection 41(6).  If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish, but it is not capable of distinguishing on that basis alone, then it is to be considered under the provisions of subsection 41(5).  If, after consideration under the provisions of subsections 41(5) or 41(6), the Registrar is still not satisfied the trade mark is capable of distinguishing, or does in fact distinguish, then the application must be rejected.

2. Ms Hill argued that, although the words DANE and DANES are surnames, they are unlikely to be regarded as surnames or personal names although she did not provide any evidence in support of her argument.  She said that DANES is more likely to be seen as indicative of a Danish connection and as such it has no inherent capacity to distinguish, because it is a word having direct reference to the character or possible quality of the goods in question.  She claimed that support for this proposition can be found in statements made on behalf of the applicant.  The basis of Ms Hill's claim lies with the Jackson declaration, where Mr Jackson states that DANES was created by him, as a variation of DANBREW and that to 'the best of his knowledge', the trade mark, DANBREW, was the creation of a 'Danish lady' who formed the company, Danish Brew Coffee Pty Ltd, in 1972.  (Ms Groves submitted that the applicant now wholly owns this company).  It would seem that the Danish connection is of a tenuous nature if it exists at all.

3. Ms Groves submitted that the trade mark DANES GOURMET COFFEE should be considered as a whole and the principles defined by Dixon CJ in Mark Foy's Ltd. v. Davies Coop & Co. Ltd., (1956) 95 CLR 190, at page 194, applied. His Honour said,

   It is, I think, a mistake first to assume that words like "Tub Happy" do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is.  Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods.

Ms Groves argued that the word DANES has no descriptive significance in relation to the claimed goods, as the word DANE refers to a Norseman of Viking times, a native or inhabitant of Denmark or a person of Danish descent. She acknowledged that the words DANE and DANES are surnames but submitted that they meet the Trade Marks Office's guidelines for registrability.  She further submitted that consideration must be given to the words of Kitto J in Clark Equipment Co. v Registrar of Trade Marks, 111 CLR 511 at page 515 where he said the question of whether a trade mark is adapted to distinguish is,

... tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark ...

1. The trade mark is DANES GOURMET COFFEE and I find, despite the lack of an apostrophe, the impression it creates is that of superior quality coffee produced or made by a person with either the unusual given name or surname DANE or rare surname DANES. Clearly the phrase GOURMET COFFEE which forms a minor part of the trade mark, is descriptive and laudatory and not capable by itself, of distinguishing coffee.  However, I think it is far-fetched to suggest that the word DANES makes direct reference to any of the characteristics or qualities of coffee and coffee products or to suggest that Australian consumers on seeing the trade mark would be likely to assume a connection with Denmark. If the trade mark were Danish Gourmet Coffee or Gourmet Coffee from Denmark then such a connection would be reasonable.  DANES is the predominant feature of the trade mark and in my opinion is more likely to be seen as a reference to a person so named, rather than a country. I find that the trade mark, as a whole, is inherently adapted to distinguish.

2. The provisions of section 55 of the Act make it clear that in opposition proceedings the opponent bears the burden of establishing its grounds of opposition.  The opponent has failed to establish its ground of opposition under the provisions of section 41 of the Act.

Section 44

1. Section 44 provides that a trade mark application must be rejected if the trade mark is substantially identical with or deceptively similar to another trade mark registration or application for registration, which has an earlier priority date, and which is in respect of similar goods or closely related services. 

1. It was not argued that the subject trade mark is substantially identical with any of the opponent's trade marks. However, Ms Hill submitted that DANES GOURMET COFFEE is deceptively similar to the opponent's trade marks shown in the table below, all of which have earlier priority dates. The goods of these registrations specifically include coffee, or clearly encompass coffee, so it cannot be argued that these goods are not similar goods.  Ms Hill also submitted that the subject trade mark is deceptively similar to DANBREW, a trade mark registered since 28 July 1989, for coffee and coffee products. However, since this trade mark is now wholly owned by the applicant it has become irrelevant for the purposes of the opponent in these proceedings.

Number	Trade Mark	Goods
231352	DANY	Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; bread biscuits, cakes, pastry and edible ices; honey, molasses; yeast, baking powder; salt, mustard; pepper, vinegar, sauces; spices; icing
444903	DAN'UP	All goods in this class; including coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (except salad dressings); spices; ice
444907	DANESSA	All goods in this class; including coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (except salad dressings); spices; ice
444909	DANETTE	All goods in this class; including coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (except salad dressings); spices; ice
482764	DANINO	Biscuits, cakes, pastry; and preparations in this class  with a coffee, chocolate or caramel basis
566556	DANNY BOY	Ice-cream, ice confections and all other goods included in this class
675334	Coffee, tea, cocoa, chocolate, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, pasta, pies, pizzas, bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustards; vinegar, sauces; spices; ice
749043	DANONE	Coffee, tea, cocoa, chocolate; coffee-based beverages, cocoa-based beverages, chocolate-based beverages; sugar, rice, tapioca; flours including groundnut flour, pies (sweet or salted), pizzas, tarts (sweet or salted); pasta (plain or  flavoured and/or filled), cereal preparations, cereals for breakfast; prepared meals totally or partially composed of pasta; ready made dishes partially or totally made of pastry; bread, rusks; biscuits (sweet or salted), wafers, waffles, cakes, pastries; all of the aforesaid products being plain and/or coated and/or filled and/or flavoured; salted or sweet appetisers composed of biscuit, pastry, dough or batter; confectionery; ice cream, frozen creams; honey; salts; mustard; vinegar; sauces (condiments), sweet sauces, pasta sauces; spices

1. In support of her argument that DANES GOURMET COFFEE is deceptively similar to each of the above trade marks Ms Hill referred to the established principles for determining deceptive similarity defined in, Pianotist Co.'s Appn., (1906) 23 RPC 774 at 777, Australian Woollen Mills Ltd. v F S Walton & Co. Ltd.,  (1937) 58 CLR 641 at 658, Shell Co. of Australia v Esso Standard Oil, (1961) 109 CLR 407 at 414, Sym Choon & Co. and Another v Gordon Choons Nuts Ltd., (1949) 80 CLR 65 at 78, Johnson & Johnson v Kalnin, (1993) 26 IPR 435 and Registrar of Trade Marks v Woolworths Ltd., 45 IPR 411.

2. Ms Hill asserted that the applicant's trade mark is likely to be seen as an extension of the opponent's listed trade marks because of the shared prefix DAN and a similarity in the goods.  She said that it is well accepted that, for the purposes of trade mark comparison, the beginning of a trade mark is more significant because of the 'tendency of persons using the English language to slur the termination of words'[1]. Ms Hill further submitted that there is a strong visual and phonetic similarity between the trade marks and a likelihood of a similar impression being created in the minds of the consumers regarding a Danish association. Finally, Ms Hill asserted that the goods are relatively low priced items that may be purchased in a hurry, thus increasing the risk of deception and confusion.

   [1] London Lubricants (1920) Ltd's Appn. (1925) 42 RPC 264

3. Ms Groves also referred to the Shell, Pianotist and Woolworths cases, supra, in support of her position that the trade marks are not deceptively similar. She also submitted that in assessing aural similarity consideration must be given to Aristoc Ltd. v Rysta Ltd., (1943) 60 RPC 87 at 108 where Luxmore LJ said,

   The answer to the question of whether the sound of one word resembles too nearly the sound of another ...must nearly always depend on the first impression, for obviously a person who is familiar with both words will neither be deceived nor confused.  It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

4. Ms Groves said that applying this test, no one who has retained an imperfect recollection of any of the trade marks cited by the opponent, will have a recollection of similarity when hearing the words DANES GOURMET COFFEE.  She said that the fact that all the trade marks share the same element DAN is insufficient to displace the significant phonetic and visual differences in the trade marks. 

5. Given the descriptive nature of the words GOURMET COFFEE in relation to the goods specified, and their physical insignificance in relation to DANES within the trade mark, I think they must be given little weight in a comparison of the trade marks for deceptive similarity.  The focus must be on whether or not DANES is deceptively similar to any of the opponent's trade marks.

6. The first of the trade marks cited by the opponent is DANY, which is a four letter word with no obvious meaning other, perhaps, than as a misspelling of the given name Danny. DANES, on the other hand, is a known word of five letters.  A difference of even one letter in words with so few letters makes a significant difference visually. Aurally also, there are differences between the invented word DANY and the known word DANES.  This coupled with the visual differences makes it likely that the trade marks will be recalled differently.

7. Likewise, DAN'UP and DANES create quite different ideas. DAN'UP is an unusual combination of the words DAN and UP, separated by an apostrophe. While DAN could be a reference to a person so named it could also be a reference to a grade in martial arts, but it may in fact, be a reference to neither. However, DAN in combination with UP immediately strikes the eye and fixes itself in the memory as an unusual trade mark with little in common with DANES.

8. DANETTE and DANESSA appear to be feminine forms of the male name DAN.  Paulette and Antoinette for example, are feminine versions of masculine names and DANETTE appears to fit neatly into that group of names formed by the addition of the suffix 'ette'.  Although no longer politically correct, the suffix 'ess' was, in the relatively recent past, used to create feminine forms of masculine nouns, for instance, waitress, hostess or actress.  The suffix 'essa' also indicates feminine versions of male nouns. The Italian words, patronessa, professoressa and poetessa, for instance, would readily be identified by English speakers as feminine versions of patron, professor and poet. In the same way DANESSA will, I believe, be seen as a feminine form of Dan.  The overall impression created by these two trade marks is that they are feminine given names quite dissimilar to DANES.

9. In DANINO and DANONE the stress is placed on the final two syllables in each word, 'nee-no' and 'no-nee' so that phonetically, they sound quite different from DANES.  Both DANINO and DANONE appear to be invented words.  While confusion between two invented words used as trade marks, may readily occur when limited attention is paid to the items being purchased, confusion is not so likely when the comparison is between an invented word and a known word, such as DANES.

10. The remaining trade mark cited by the opponent is DANNY BOY. There can be only one impression created by this trade mark and that of course is of the famous Irish folk song. Visually, aurally and evocatively, DANNY BOY and DANES GOURMET COFFEE are not deceptively similar.

11. In all of these trade marks the only shared element is DAN and even this element, because of the effect of other letters in the trade marks, is not pronounced in a phonetically similar way. The letter 'a' in the opponent's trade marks is pronounced as in the word 'at' while in the applicant's trade mark the letter 'a' is pronounced as in the word 'day'.  Both visually and phonetically the applicant's trade mark is not deceptively similar to any of the trade marks cited by the opponent.

1. This is not the end of the matter. Deceptive similarity may result from contextual similarity. In John Fitton & Co Ltd's Application, 66 RPC 110 at 113 the Assistant-Comptroller, Mr S E Chisholm said,

   With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks 'Jests' and 'Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

2. I must consider if, within the context of all the circumstances of the market place, the applicant's mark is likely to be seen by purchasers as being an extension of the opponent's registered trade marks, because of the element DAN. In classes 29 and 30 there are sixty-six registrations with earlier priority dates than the subject application, for trade marks containing the word prefix, DAN. Twenty-seven of these registrations are in the name of the opponent and thirty-nine are owned by other traders.  While some of the opponent's registrations are limited to dairy goods, the majority have broad specifications covering a wide variety of goods and ten of them cover all goods in their respective classes. It seems to me, given the number of DAN trade marks owned by other traders, that although the opponent has shown a preference for registering trade marks with the prefix DAN, this falls well short of providing a circumstance that would confuse or mislead purchasers into a belief that trade marks with the DAN prefix emanate from the same source. The opponent has chosen to occupy a 'crowded field' where its trade marks co-exist with many other DAN prefixed trade marks registered for similar goods.  In my opinion the addition of DANES GOURMET COFFEE to that field is not likely to lead to deception and confusion.

3. I find the ground of opposition under the provisions of section 44 of the Act has not been established.

4. The remaining grounds of opposition were not argued and I now dismiss them.

Decision

1. As neither of the grounds of opposition relied on by the opponent has succeeded my decision is that this trade mark application may proceed to registration, one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. I order that the opponent pay the applicant's costs in accordance with the official scale.

Mary Skivington

Hearing Officer

Trade Marks Hearings

22 August 2003