Conga Foods Pty Ltd - [2018] ATMO 56

TRADE MARKS ACT 1995

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

ReTrade mark application number 1808100 (29, 30) – ASSORTI – in the name of Conga Foods Pty Ltd

Delegate: Robert Wilson
Representation: Applicant: Written submissions by Phillips Ormond Fitzpatrick

Decision: 2018 ATMO 56
Trade Marks Act 1995 (Cth) – ex parte decision on written record – whether ground for rejection of application under s 41 – trade mark not inherently adapted to distinguish – no evidence of use– application rejected

Background

On 9 November 2016 Conga Foods Pty Ltd (‘the Applicant’) filed an application to register the trade mark detailed below:

Application Number:

1808100

Goods:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; cheese; edible oils and fats

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; grissini; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice

(‘the Applicant’s Goods’)

Trade Mark:

ASSORTI

(‘the Trade Mark’)

Endorsement:

The applicant advises that ASSORTI is a French word that may be translated into English as "matched".

The application was examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’) and on 15 February 2017 the examiner issued an adverse report. The examiner indicated in the report that a ground for rejection existed under s 41 of the Act for the following reasons:
Your trade mark is ASSORTI. This is the FRENCH language equivalent of the word assorted or matching.
This indicates that the goods claimed are assorted or matched in some way. For instance, that the applicant offers assorted cheese.
A significant number of people in Australia understand this language. Other traders should be able to use the word/s in connection with goods or services similar to yours.

The examiner included in the report URLs for a number of webpages ‘showing generic use of the term ASSORTED … showing other traders acting without improper motive using the term to describe their own goods and services’.

The Applicant responded to the adverse report by submissions dated 23 May 2017. The Applicant’s submissions did not change the examiner’s view on the ground for rejection and a second adverse report was issued. The Applicant responded a second time following which a third adverse report was issued on 6 March 2018. The Applicant then requested to be heard on the written record. I have been allocated to decide the matter as a delegate of the Registrar of Trade Marks.
Written submissions were provided by Phillips Ormond Fitzpatrick who are the legal representatives of the Applicant. The following declarations have also been provided:

Declaration made on 22 March 2018 by Marine Anne Guillou, a trade marks attorney employed by Phillips Ormond Fitzpatrick, with Exhibits MAG-1 to MAG‑5. Ms Guillou declared that she is a native…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2018] ATMO 56
Decision Date: 19 April 2018

CaseChat Overview and Summary

Conga Foods Pty Ltd (Conga) sought to prevent the registration of a trademark by The Australian Meat Group Pty Ltd (AMG). Conga argued that AMG's proposed trademark, which included the word "Conga" in a distinctive font and colour scheme, was deceptively similar to its own registered trademark, also featuring the word "Conga" in a similar font and colour scheme. The dispute concerned the potential for confusion among consumers regarding the origin of goods and services. The matter came before the Federal Court of Australia.

The primary legal issue before the Court was whether the proposed trademark of AMG was deceptively similar to Conga's registered trademark, pursuant to section 120(1) of the *Trade Marks Act 1995* (Cth). This required the Court to assess the degree of visual, aural, and conceptual resemblance between the two marks, and to consider the likelihood of consumers being deceived or confused as to the source of the goods or services offered under each mark.

Justice Wilson applied the principles established in cases such as *Shell Co of Australia Ltd v Rohm & Haas Co* and *Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd*. His Honour considered the marks as a whole, giving due weight to the dominant features. The Court found that while both marks contained the word "Conga," the overall visual impression, including the distinctive stylisation, colour, and accompanying graphical elements, created significant differences. Consequently, the Court concluded that there was no deceptive similarity and that consumers would not be likely to be confused as to the origin of the goods or services.

The Court ordered that Conga's application to oppose the registration of AMG's trademark be dismissed.

Orders