Conair Corporation v Xialei Yu

[2015] ATMO 32

TRADE MARKS ACT 1995

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

Re:Opposition by Conair Corporation to registration of trade mark application 1547951(7, 21) -  CUISINWARE (stylised) - in the name of Xialei Yu.

Delegate:

Debrett Lyons

Representation:

Opponent: Ken Hamilton of Spruson & Ferguson, Patent & Trade Mark Attorneys

Applicant: no representation

Decision:

2015 ATMO 32

s52 proceedings: ss42(b), 44, 60 and 62A pressed – s60 considered; reputation established; likelihood of confusion or deception; opposition successful.

Background

1. On 22 March 2013 (“the Priority Date”), Xialei Yu (“the Applicant”) made application to register a trade mark, shown below:

(“the Trade Mark”)

1. The application was made in classes 7 and 21 and after examination it was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 11 July 2013 in respect of the following goods:

Class: 7 Domestic kitchen machines (electric); Electric hand held kitchen utensils; Electric kitchen knives; Electric kitchen machines; Electric kitchen machines for food preparation (other than cooking); Electric kitchen tools; Electric meat slicers for kitchen use; Electric slicing machines for kitchen use; Electromechanical apparatus for use in the kitchen; Kitchen machines, electric; Kitchen tools (electric utensils); Kneaders (electric kitchen machines); Liquidisers (kitchen machines); Machines for household purposes (electric kitchen); Machines for macerating (electric kitchen); Machines for preparing beverages (electric, kitchen); Machines for preparing food (electric, kitchen); Machines for sharpening (electric, kitchen); Machines for sieving (electric, kitchen); Machines for slicing food (electric, kitchen); Machines for the mixing of materials (electric, kitchen); Machines for the preparation of carbonated beverages (electric, kitchen); Machines for the preparation of foodstuffs (electric, kitchen), other than cooking; Machines for use in sifting vegetables (electric, kitchen); Machines for use in the kitchen (electric); Mechanical presses (electric machines) for kitchen use; Salad drainers (kitchen machines); Shaped covers for electric kitchen machines; Washing machines for kitchen bowls

Class: 21 Abrasive discs for kitchen (cleaning) purposes; Abrasive instruments for kitchen (cleaning) purposes; Abrasive pads for kitchen purposes; Abrasive sponges for kitchen (cleaning) use; Aluminium moulds (kitchen utensils); Articles of china for kitchen use; Articles of earthenware for kitchen use; Articles of glass for kitchen use; Articles of wood for kitchen use; Basting spoons, for kitchen use; Boxes for kitchen use; Carving boards for kitchen use; Ceramics for kitchen use; Chopping boards for kitchen use; Combined containers for kitchen use; Combined lids for kitchen containers; Combined stoppers for kitchen containers; Composite caps for kitchen containers; Container lids made for household or kitchen use; Containers for household or kitchen use; Containers for storage purposes (household or kitchen use); Covers for household or kitchen utensils; Crockery for kitchen use; Cutting boards for the kitchen; Domestic kitchen containers; Domestic non-electric kitchen apparatus; Egg separators (kitchen utensils); Garlic presses (kitchen utensils); Glassware for kitchen purposes; Hand implements for household or kitchen use in removing the lids of jars; Hand-operated apparatus for kitchen use; Hand-operated kitchen utensils; Hand-operated slicing machines for kitchen use; Hollow glass containers for kitchen use; Hollow glassware for kitchen use; Kitchen boards for chopping; Kitchen containers; Kitchen containers for water; Kitchen mixers, non-electric; Kitchen receptacles; Kitchen sponges; Kitchen tools (utensils, not electric); Kitchen utensils; Kitchen vessels; Kitchenware; Meat tenderizers (hand-operated kitchen utensil); Mechanical presses (non- electric machines) for kitchen use; Mixing apparatus (hand-operated) for kitchen use; Mixing spoons (kitchen utensils); Molds (kitchen utensils); Moulds (kitchen utensils); Non-electric hand held kitchen utensils; Non-electric kitchen devices for chipping; Non-electric kitchen devices for chopping; Non-electric kitchen devices for cutting; Non-electric kitchen devices for dicing; Non-electric kitchen devices for extruding; Non-electric kitchen devices for grating; Non-electric kitchen devices for grinding; Non-electric kitchen devices for mashing; Non-electric kitchen devices for mincing; Non-electric kitchen devices for paring; Non-electric kitchen devices for peeling; Non-electric kitchen devices for pressing; Non-electric kitchen devices for scraping; Non-electric kitchen devices for shelling; Non-electric kitchen devices for shredding; Non-electric kitchen devices for slicing; Non-electric kitchen machines for food preparation; Non-electric kitchen machines for grinding; Non-electric kitchen machines for handling foodstuffs; Non-electric kitchen machines for household purposes; Non-electric kitchen machines for macerating; Non-electric kitchen machines for making aerated beverages; Non-electric kitchen machines for making fruit juice; Non-electric kitchen machines for preparing beverages; Non-electric kitchen machines for preparing food; Non-electric kitchen machines for sharpening; Non-electric kitchen machines for sieving; Non-electric kitchen machines for slicing food; Non-electric kitchen mixers; Non-electric machines for use in the kitchen; Ornamental ware for kitchen use; Plastic kitchen containers; Porcelain for kitchen use; Portable small non-electric utensils for kitchen use; Potato mashers (hand-operated kitchen implements); Pouring spouts for kitchen use; Salad drainers (non-electric kitchen machines); Servers (kitchen utensils); Shaping machines (hand-operated) for kitchen use; Shredders (hand operated), for kitchen use; Skimmers (non-electric kitchen implements); Spatulas (kitchen utensils); Stirrers (kitchen utensils); Tenderizers (kitchen utensils); Vegetable peelers (hand operated kitchen utensils, other than knives)

1. On 28 August 2013, Conair Corporation (“the Opponent”) filed a Notice of Intention to Oppose registration of the Trade Mark.  A Statement of Grounds and Particulars was filed by the Opponent on 27 September 2013.

2. On 8 November 2013, the Applicant filed a Notice of Intention to Defend.

3. Evidence, described later, was filed by both sides after which a hearing was convened in Sydney on 17 April 2015.  Acting as a delegate of the Registrar of Trade Marks, I heard the matter.

4. At the hearing the Opponent was represented by Ken Hamilton of Spruson & Ferguson, Patent & Trade Mark Attorneys.  The Applicant arrived in person at the appointed place for the hearing but having not paid the hearing fee.  The Applicant was at that time in possession of the hearing notice which he had received at his address for service.  That notice states in part:

“The fee for requesting or attending a hearing is $600 for an opposition and $400 for any other matter.  Items 14 to 17 of 'Schedule 9 - Fees' apply.  The attendance fee must be paid before the hearing …”

1. Accordingly, the Applicant was advised that he could attend the hearing and listen to the representations made by the Opponent’s attorney but could not reply or otherwise actively participate in the hearing. 

2. The Applicant then chose to take that opportunity and, for the most part, remained silent as the Opponent presented its argument and as I questioned the Opponent on certain matters.

Grounds, Onus and Relevant Date

1. The Opponent’s submissions made clear that it relied for the success of its opposition on sections 42(b), 44, 60 and 62A of the Trade Marks Act 1995 (“the Act”).

2. The Opponent bears the onus of establishing one or more of those grounds of opposition on the balance of probabilities.[1]  The relevant date at which the grounds must be considered is the Priority Date.[2]

   [1] Pfizer Products Inc v Karam [2006] AIPC 92-146 per Gyles J at [6] to [26].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592

The evidence

1. The parties filed evidence in accordance with the Trade Mark Regulations 1995 (“the Regulations”) comprising:

• the Opponent’s evidence in support being a Statutory Declaration of Kathleen D Fong made 12 February 2014 together with Exhibits 1 to 12, including Confidential Exhibits 5 and 11 (“the Fong Declaration”);

• the Applicant’s evidence in answer being a Statutory Declaration of Xialei Yu made 8 May 2014 together with Exhibits 1 to 4 (“the Yu Declaration”); and

• the Opponent’s evidence in reply being a declaration of Ken Hamilton made 14 July 2014 together with Exhibits KH-1 and KH-2 (“the Hamilton Declaration”).

1. The Applicant attempted to submit additional material in the form of a further Statutory Declaration of          Xialei Yu made 12 October 2014.  On 27 October 2014 IPAustralia wrote to the Applicant in the following terms:

   I refer to your declaration that was uploaded to Objective Connect on 13 October 2014.

   The opponent’s evidence in reply filed on 14 July 2014 completed the evidence stages. If you wish to have your latest declaration considered by the hearing officer, you need to make a written  request pursuant to regulation 21.19 for the Registrar to take your additional declaration into account in the opposition proceeding.

   Under Regulation 5.3, the Registrar may direct the means by which a document or evidence is to be filed, and if the direction is not complied with, may treat the document or evidence as not having been filed or tell the party to comply with the direction.

   In accordance with regulation 5.3(2)(b), I direct that the Applicant files its request on Objective Connect within 14 days of the date of this letter. The request should be uploaded to the folder called ‘Regulation 21.19 – Request and additional information’. Your declaration has been placed in this folder.

   The other party may make representations on your request. You will be given a copy of any representations made by the other party.

   Unless the other party requests to be heard on the matter, your request and any representations from the other party will be considered by the Hearing Officer when the substantive matter is decided.

2. I am informed that the Applicant did not file a request as outlined by that letter and in accordance with the Regulations.  The Applicant has not met procedural requirements and furthermore the information provided is not of material significance to my decision for reasons given later. 

3. The evidence is that the Opponent is the owner in Australia of various trade mark registrations for CUISINART and, for the purposes of section 60 under which I have decided this matter, relies on the asserted reputation it has established in that trade mark (hereinafter, “the Opponent’s trade mark”) in Australia.

4. The declaration of Kathleen Fong, Vice President Chief Legal Officer of the Opponent is that the Opponent’s trademark was coined in 1971 and first used in connection with a domestic food processor.  The Fong Declaration states that since 1979 use of the Opponent’s trade mark has expanded to include a wide range of cookware, bakeware and kitchen utensils (which, together with food processors, are hereinafter referred to as “the Opponent’s goods”).

5. The Fong Declaration states that the Opponent’s trade mark was first used in Australia in 2003.  Confidential information given in exhibits to the declaration pertaining to Australian sales and promotional expenditure are for the period 2008 to 2013.  On any reading of the evidence, the Opponent’s trade mark has been used on the Opponent’s goods in Australia since at least as early as 2008, five years before the Priority Date.

6. The Fong Declaration indicates that the Opponent’s goods sell in the price range, AUD20 to AUD650.  Within context, the confidential sales figures indicate to me that since 2008 and extending to the Priority Date, the Opponent has sold an enormous volume of the Opponent’s goods in Australia.

7. The promotional expenditure over the same period is equally impressive and the Fong Declaration shows that the Opponent’s goods are advertised in magazines such as Feast, Gourmet Traveler and Belle and are sold in retail outlets such as Myers, David Jones and Harvey Norman.  Further, the Opponent’s goods have been marketed at trade shows and food festivals including the Adelaide Good Food and Wine Show (2011, 2012) and the Brisbane Good Food and Wine Show (2011, 2012).

8. The Applicant is the Managing Director of Cuisinware Australia Pty Ltd, a company formed in March 2013 “to sell bakeware products” as the Yu Declaration states.   The Yu Declaration indicates that since late 2013 the Applicant has sold goods bearing the Trade Mark to China.  On my reading of the evidence, there have been no Australian sales of Goods bearing the Trade Mark.

9. Much of the Yu Declaration is argument, not evidence.  It is said that “Cuisinware and Cuisinart share the same prefix but has (sic) a totally different suffix.”  Further, that the “trademarks are visually very different” and “sound totally different”.  It is then put that the Applicant’s company website has a “totally different design and style” and that “Cuisinware is Focus on china marketing (sic), but Cuisinart is focus on global marketing”.  Finally, it is said that the packaging design is different and that “Cuisinware is an Australian Brand, Cuisinart is an USA origin Brand (sic)” and “we proudly announce in everywhere that we are Australia brand (sic)”.

10. Of some note is the statement in the Yu Declaration that “[T]here are 176 trade mark contains words “cuisine” in IP Australia, I do not put a list here but it is very obvious that cuisin is not belongs to Cuisnart. (sic)”

Section 60

1. Section 60 provides:

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

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.

1. The Opponent’s success under section 60 is contingent upon proof of a reputation in the Opponent’s trade mark in Australia before the Priority Date. In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:

   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?

2. I have taken account of the confidential sales and marketing figures set out in the Fong Declaration and I am satisfied that the Opponent’s trade mark had a significant reputation in Australia before the Priority Date.

3. For the purposes of section 60, the question is then whether consumers will be confused into believing that the Trade Mark signifies that the Goods emanate from the Opponent. In practical terms, that requires that I assess the likelihood of deception or confusion resulting from the combined effects of the reputation of the Opponent’s trade mark, the degree of similarity of the trade marks and finally, the nexus of the goods.

4. The Opponent’s submissions in this respect are that the evidence shows the Opponent’s trade mark to have been used in connection a very wide range of goods including bakeware, blenders, bread makers, brick ovens, coffee makers, cookware, countertop cooking appliances, deep fryers, food processors, frozen yoghurt/ice cream and sorbet makers, hand mixers, kitchen tools and gadgets, microwave ovens, pizza ovens, popcorn makers, pressure cookers, stand mixers, waffle makers and water filtration apparatus.

5. My finding is that this is a fair appraisal of the evidence exhibited along with the Fong Declaration.  The Goods and the Opponent’s goods are essentially identical.  Where it might be said they are not, the distinctions are in my view inconsequential to my further findings.

6. The Opponent reminded me that for the purposes of section 60 there is no requirement for the Trade Mark to be substantially identical or deceptively similar[3] to the Opponent’s trade mark but put to me that the compared trade marks were, nonetheless, deceptively similar.

   [3] As was once the case under section 60.

7. I indicated to the Opponent’s representative my reservation about a conclusion that the compared trade marks were “deceptively similar” (within the meaning of section 44 of the Act) however I have no hesitation in finding that they are similar trade marks for the following reasons.

8. The word “cuisine” is a well-recognized, dictionary word in English.  Even its French origin would be known to many Australians.  Were the compared trade marks to have used that word in combination with either “art” or “ware” then the assessment of similarity would have been different.

9. I can place no weight on the Applicant’s claim that the common prefix is a diluted term not uniquely used by the Opponent.  The Applicant’s search methodology is unclear.  The Yu Declaration refers to 176 instances of the word “cuisine” on the Register, which if correct[4] would neither surprise me nor alter my reasoning.  The non-compliant statutory declaration of Xialei Yu  made 12 October 2014 attempts to deal with this argument once more, showing a “cut and paste” image of a part word search of the Register for the integer “cuisin-”, but the search parameters are uncertain.  The declaration does not assist me and the Hamilton Declaration exposes the shortcomings of the Applicant’s claim by evidencing in full the virtual absence of trade marks on the Australian Register in classes 7 and 21 containing the integer, “cuisin”, when its own registrations are put to one side.

   [4] There is no actual support for this claim in the Yu Declaration.

10. Accordingly, whilst deletion of the letter “e” from the known word “cuisine” does not produce a highly distinctive term, it nonetheless produces a term with no direct meaning, seemingly unused and unregistered by others. 

11. I am not persuaded by the Applicant’s claim that the words “art” and “ware” themselves serve to distinguish the compared trade marks.  When those words are used in respect of the class of goods at issue, “ware” is a common, generic term whilst “art” is quite capable of carrying the suggestion of a premium grade of those same wares.

12. Coupled with the very significant reputation that I have already found to exist in the Opponent’s trade mark, I consider that there is a high likelihood that ordinary consumers would regard the Trade Mark as somehow connected with the Opponent.

13. I observe, too, from the exhibits to the Fong Declaration that, in use, the following trade mark is very commonly applied to the Opponent’s goods:

1. Although the font of that iteration of the Opponent’s trade mark is not identical to the font of the Trade Mark, the other similarities in get-up are immediately apparent and I am reminded of the Court’s words in Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641; (1937) 11 ALJR 186 where it was said:

   The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public. 

1. I am reminded, too, of Mason J’s observation in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

2. In other words, it is all the possible uses of the Trade Mark that registration permits which must be considered and so the Applicant’s references to its current company website design and its marketing focus on China and sales to China cannot influence me.  It is within the scope of any registration that might ensue that the Goods be sold in Australia.

3. For the purposes of section 60, the question is then whether consumers will be confused into believing that the Trade Mark signifies that the Goods emanate from the Opponent. I find that there is a real tangible danger of confusion and so I find that the Opponent has established its opposition under section 60 of the Act.

Decision

1. Relevant to the timing of this application, subsection 55(1) of the Act provided:

   55Decision

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

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. My decision is to refuse to register the Trade Mark.

Costs

1. Since the Opponent has been successful in its opposition, I award costs against the Applicant calculated in accordance with Schedule 8 of the Regulations.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

22 April 2015