Conga Foods Pty Ltd v Boundary Bend Olives Pty Ltd

[2017] ATMO 114

TRADE MARKS ACT 1995

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

Re:Opposition by Conga Foods Pty Ltd to registration of trade mark application 1645105 (29) – THE GREAT ALL ROUNDER - in the name of Boundary Bend Olives Pty Ltd

Delegate:	Nicholas Smith Decision on the Written Record
Decision:	2017 ATMO 114 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 41 considered – ground established – registration refused

Background

1. This is an opposition brought by Conga Foods Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark subject of the application detailed below in the name of Boundary Bend Olives Pty Ltd (‘Applicant’): 

Application Number:	1645105
Filing Date:	4 September 2014
Goods:	Class 29: Extra-virgin olive oil; Olive oil; Olive oil dip; Olive oil for food; Olives, preserved; Prepared olives; Processed olives (collectively ‘Applicant’s Goods’)
Trade Mark:	THE GREAT ALL ROUNDER   (‘Trade Mark’)

2. On 27 November 2014 IP Australia issued a first adverse examination report, identifying a ground for rejection pursuant to s 41 of the Act (‘First Report’). 

3. The Applicant responded to the First Report on 27 January 2016, by way of submissions and a statutory declaration Following the provision of evidence a clear report was issued, accepting the Trade Mark on the basis of the provisions of s41(4).

4. Following the advertisement on 18 February 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 23 March 2016 and a Statement of Grounds and Particulars (‘SGP’) on 19 April 2016. The SGP was assessed by this office as adequate. The Applicant filed a Notice of Intention to Defend on 16 May 2016. The SGP raised grounds of opposition under s 41 and s 62(b) of the Act.

Evidence

5. The Opponent filed Evidence in Support of the opposition (‘EIS’) on 10 August 2016. This evidence consists of a declaration made on 4 August 2016 by Ian Kingwell Keck, the Administrative Officer of the Opponent, with Exhibits IKK-1 to IKK-4 (‘Keck Declaration’) and a declaration made on 10 August 2016 by Russell Waters, Partner at Phillips Ormonde Fitzpatrick and legal representative of the Opponent, with Exhibits RJW-1 to RJW-8 (‘Waters Declaration’).  The Waters Declaration includes as an exhibit the entirety  of the declaration by Timothy Francis Smith, Director of the Applicant, dated 20 January 2016 (‘Smith Declaration’) which was provided by the Applicant during the examination stage.

6. The Applicant chose not to file Evidence in Answer. As a result, the time allowed for filing evidence had ended, and the parties were given an opportunity to request a hearing or to file written submissions.  The Opponent, by letter on 5 January 2017 indicated that it did not wish to request a hearing but enclosed its written submissions (‘Opponent’s Submissions’).  By letter issuing from IP Australia on 11 January 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party filed submissions in response to the 11 January 2017 letter (the Opponent having already filed its submissions prior to that date.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A, 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.

The Opponent

8. The Keck Declaration contains the following claims/statements:

·    On 2 October 2014, the Opponent received a letter from the Applicant’s legal representatives referring to the Opponent’s intention to use the term ‘THE ALL ROUNDER’ in relation to olive oil.  The letter stated that the Applicant had used the term ‘THE GREAT ALL ROUNDER’ as a tag line in relation to its Red Island olive oil product since 2013.

·    Following receipt of the 2 October letter, the Opponent investigated the Applicant’s use of ‘THE GREAT ALL ROUNDER’ and concluded that it did not appear on the Red Island product and had only been used occasionally on the Applicant’s Facebook page.

·    The Opponent’s representatives responded to the 2 October letter on 10 October, noting that the term ‘All Rounder’ was a descriptive term commonly used in respect of olive oil products and referred to the existing descriptive use of the term by the Applicant and third parties.  It also stated that the Trade Mark was both laudatory and descriptive.

9. The Waters Declaration contains the following claims/statements:

·    The term ‘all-rounder’ has obvious dictionary definitions including “one able to do many things with equal competence’, while the term ‘great’ equally has an obvious dictionary definition.

· The Trade Mark was only accepted for registration pursuant to s 41(4) of the Act, in reliance on the information provided in the Smith Declaration. The Smith Declaration states that other traders would not legitimately seek to use the Trade Mark for similar goods/services except to trade off the reputation of the Applicant; this is contrary to evidence provided to him about existing use of the term ‘all-rounder’ and ‘great all-rounder’ provided to him by the Opponent on 10 October 2014.

· In accepting the Trade Mark for registration pursuant to s 41(4) the examiner noted that the Trade Mark had only been used since January 2014 but there were impressive sales figures supplied by the Applicant that compensate for the short time frame of use.

The Applicant

1. The Applicant has not filed any evidence in this Opposition, however below I summarise the evidence in the Smith Declaration exhibited to the Waters Declaration.

2. The Smith Declaration contains the following claims/statements:

   ·    The Applicant uses the Trade Mark to market its Red Island brand of Olive Oil.  It has used this mark since as early as 2014 and sells its Red Island brand throughout Australia, including through Woolworths, Coles and IGA.

   ·    The Trade Mark has been used in supermarket catalogues in connection with the Applicant’s product and used online on the Applicant’s redisland.com website and on the Applicant’s Facebook page.

   ·    The Applicant’s sales of olive oil in Australia are in excess of $70 million per year.  The Applicant sells several different brands of olive oil, including the brand Red Island.

3. Two aspects of the Smith Declaration are notable.  Firstly, it appears that the Trade Mark is not used on the packaging or label of the Applicant’s Red Island brand of olive oil, only as a tag-line on advertising in connection with the Red Island brand.  Secondly the Applicant’s stated sales of $70 million per year are not supported by internal documents or broken down to brand level.  It is not clear, on the basis of the Smith Declaration, what the sales of the Applicant’s Red Island brand of Olive Oil were in 2014.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above the SGP nominates grounds of opposition under ss 41 and 62(b) of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 41. Consequently, it is unnecessary that I consider the remaining ground. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

2. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 4 September 2014, being the filing date of the application in Australia (‘relevant date’) (except in circumstances, not present here, in which a different priority date is provided for in the Act).[3]

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Section 41

1. The relevant provisions of the Act with respect to the s 41 ground are reproduced below:

Section 41 - Trade mark not distinguishing applicant's goods or services

1. 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 or services in respect of which the trade mark is sought to be registered (the designated goods or services ) from the goods or services of other persons.

   Note:          For goods of a person and services of a person see section 6.

2. A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

3. This subsection applies to a trade mark if:

   (a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

4. This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)             the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)            the use, or intended use, of the trade mark by the applicant;

   (iii)             any other circumstances.

   Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)the time of production of goods or of the rendering of services.

5. It is appropriate to first discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[4] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   [4] (1998) 40 IPR 498, 505.

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

   Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

   The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

   Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

   Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

   (a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

   (b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

   (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies][5]

   [5] [2017] ATMO 25, [38]-[40].

6. Paraphrasing what the same Hearing Officer said in Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd[6](with emphasis being that of the Hearing Officer in that decision) :

   As mentioned in paragraph [7] above the Opponent bears the onus of establishing its s 41 ground of opposition. However, its onus is effectively limited to satisfying me that the [Trade] Mark is not sufficiently adapted to distinguish the Applicant’s Goods and Services as to qualify for registration on that basis alone, being the issue addressed in particular by s 41(3) [as it stood prior to the Amending Act.][7]  In this regard both parties agreed that, as Mr Rubetzki put it:

   When assessing whether a mark is sufficiently adapted to distinguish the Applicant’s Goods and Services, it should be presumed that the mark is sufficiently adapted to distinguish unless the Registrar is satisfied otherwise. However, if it is necessary to consider the mark under ss 41(3)(b) or (4)(b) (as they now stand), the Applicant must demonstrate that the criteria referred to in those sub-sections are made out.

   [6] [2015] ATMO 69 at [16]-[18]. I have in the main also retained the Hearing Officer’s original footnotes.

   [7] See Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [26]-[29], [40] for a full discussion on this point,

   Consideration of the Opposed Mark under section 41(3)

   In accordance with Branson J’s analysis then, the first issue which arises for consideration is “the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.”  Justice Kitto in Clark Equipment Company v Registrar of Trade Marks stated that:

   [T]he question whether a mark is adapted to distinguish [is to] be 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 granted in respect of it. [8]

   More recently, the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited considered the former s 41(3) and in particular the question of whether a trade mark is inherently adapted to distinguish in some detail. In a joint judgment the majority of the Court explicitly approved Kitto J’s above-quoted words and went on to say at [70]-[71] (with original footnotes omitted and my emphasis added in bold):

   Interpretation of s 41(3)

   [70] In accordance with the principles established in [Mark Foy’s Ltd v Davies Coop & Co Ltd[9]] and restated in [Clark], [FH Faulding & Co Ltd v Imperial Chemical Industries Ltd[10]] and [Burger King Corporation v Registrar of Trade Marks[11]], determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.

   [71] As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with.  Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.  If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly.  However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it.  Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish. [12]

   [8] (1964) 111 CLR 511, 514. The case concerned possible registration of the claimed trade mark MICHIGAN in Part B of the then two part Register as a mark ‘capable of becoming distinctive’ under s 25(1) of the now repealed Trade Marks Act 1955.  Under s 26 of that Act a trade mark could not be considered distinctive unless it was ‘adapted to distinguish’ the relevant goods or services.

   [9] (1956) 95 CLR 190.

   [10] (1965) 112 CLR 537.

   [11] (1973) 128 CLR 417.

   [12] (2014) 254 CLR 337, [70]-[71].

7. The ground based on s 41 of the Act is particularised in the SGP as follows:

   The trade mark comprises the words “THE GREAT ALL ROUNDER”. “THE” is the definite article; it is commonplace and has no distinguishing character. “GREAT” is a laudatory term meaning “notable” or “first-rate”. “ALL ROUNDER” is a descriptive term meaning “something suited for a variety of purposes or situations”, so that the mark as a whole merely indicates that the goods are high quality goods suitable for multiple applications. Other traders are likely to wish to use this term for their own similar goods, and the mark has insufficient inherent adaptation to distinguish.

   Further, given the lack or inherent adaptation to distinguish, any evidence of use, intended use, or other circumstances filed on behalf of the applicant was insufficient to allow for acceptance of the application on the basis of that evidence.

Ordinary Signification

1. Having considered the inherent nature of the Trade Mark in relation to the designated goods and all the material before me, I consider that the Trade Mark consists of a known phrase that has refers to the character and quality of the goods, indicating that the goods to which the Trade Mark was applied were above average or high grade goods which are suited to a variety of purposes.  I am also satisfied by the evidence before me that other traders are likely to wish to use the Trade Mark (or words similar to the trade mark) in connection with similar goods to the Applicant’s Goods; indeed there is substantial evidence of use in the EIS of the term ‘all rounder’ by other traders in the olive oil industry to describe their goods.

2. I find on the balance of probabilities, the Trade Mark is, to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Goods. It is therefore necessary to consider whether s 41(4)(b) applies in this matter. Notably a trade mark with a very low level of inherent adaptation to distinguish will require correspondingly high levels of use as a trade mark and other circumstances in order to permit registration[13].  For common, descriptive or laudatory words, even extensive use is unlikely to be sufficient.[14].

   [13] Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2003) 134 FCR 51.

   [14] Re Ocean Spray Cranberries Inc (1999) 46 IPR 601, [24], Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2013] FCA 8, [107].

Evidence of Use

1. I find the Smith Declaration does not establish that the Trade Mark did at the relevant date distinguish the Applicant’s Goods or that it was capable of doing so.

2. While it is accepted that use after the priority date may be taken into account for the purposes of s41(4), it is nevertheless apparent that the Trade Mark was only used for 8 months before the relevant date. As noted in paragraph 13 above, while the Applicant’s overall sales of olive oil are impressive, the Trade Mark is only used in connection with one of the Applicant’s several brands. In the absence of a breakdown of sales figures on a brand level between January and September 2014, it is entirely unclear how many sales of the Applicant’s Red Island brand of olive oil occurred during this period. Furthermore, the Trade Mark does not appear to be used on the packaging of the Applicant’s Red Island product. In summary, the evidence of the Applicant’s use of the Trade Mark appears to be limited to use in advertisements in several supermarket catalogues between January 2014 and the relevant date (circulation figures not being provided), and also limited to use on online sites.

3. Given the descriptive nature if the Trade Mark and the limited evidence of sales and use in the Smith Declaration, I cannot conclude that the actual or intended use of the Trade Mark by the Applicant is such that by reason of this use (or other circumstances), the Trade Mark does (or will) distinguish the Applicant’s Goods as being those of the Applicant. 

4. I find that the Opponent has established the ground of opposition under s 41.

Decision

1. I have found the Opponent has established the ground of opposition it raised pursuant to s 41 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Costs

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent successfully established a ground of opposition under s 41 of the Act, I award costs against the Applicant under section 221 of the Act in line with the Official Scale set out in Schedule 8 of the Trade Mark Regulations 1995.

Nicholas Smith
Hearing Officer
Oppositions and Hearings
10 October 2017