Conrdon Bleu International Ltee v Renaud Cointreau & Cie and Le Cordon Bleu B.V

[1997] ATMO 77

TRADE MARKS ACT 1955

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

Re:Oppositions by RENAUD COINTREAU & CIE and LE CORDON BLEU B.V. to registration of trade mark application number 474808 in the name of CORDON BLEU INTERNATIONAL LTEE

Background
As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

Application number 474808 was lodged on 16 October 1987, in the name of Cordon Bleu International Ltee (the applicant).  The application was for the registration of the words CORDON BLEU in normal cursive script as shown below:

and the statement of goods, “Paté and meat spread in this class”, in class 29.  The trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 21 April 1994.

Notice of opposition to the trade mark’s registration was lodged by Renaud Cointreau & Cie and Le Cordon Bleu B.V. (jointly, the opponent), following extensions of time to do so, on 21 October 1994.  The notices of opposition listed a number of grounds.  However, the only matter which was later pursued by the opponent in depth at the hearing was that, because of the opponent’s use and reputation of its own mark, then use of the subject trade mark will be likely to deceive or cause confusion; and that the trade mark is one, the use of which by the applicant, will not be entitled to protection in a court of justice.  The opponent’s attorney did also make brief submissions which could be interpreted as referring to disputed proprietorship of the words in the present trade mark.  I have attempted here to summarise both sides’ arguments only as they relate to those grounds.

The service and lodgment of the respective evidence from both sides in the matter was completed by 21 October 1996.  The applicant requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Canberra.  The opponent was represented by Mr Robert Kelson of Callinan Lawrie who made his submissions by telephone.  The applicant’s case was presented in person by Ms Annette Freeman of Spruson & Ferguson.

Evidence
It was mutually agreed that many items included in the evidence from both sides in the present proceedings comprised copies of declarations filed in respect of another dispute involving the parties.  This was the matter of an opposition to the registration of application numbers 485578 and 611209.  There, the parties appeared in reverse roles as applicant and opponent.  A decision of the Registrar has issued in the latter matter.

Evidence in Support

In a statutory declaration dated 16 June 1995 (first Cointreau declaration), André J. Cointreau, the director of Le Cordon Bleu B.V., gave details of the history of his company, the cookery school called “Le Cordon Bleu”, which had been established in France and other countries and which had links with schools in Australia, and the use of the expression LE CORDON BLEU and the trade mark CORDON BLEU.  Exhibited to his declaration were documents relating to trade marks owned by the opponent, enrolment details at the schools run by his company, leaflets showing use of the mark on various goods, a summary of disputes between the parties and documents relating to the importing of goods under the mark to Australia.

Mr Cointreau, in another, undated, declaration (second Cointreau declaration) gave further history of the opponent’s use of the mark, details of turnover in Australia under the mark and further details of the cookery schools.

Robert Charles Kelson, in a declaration dated 13 October 1995 (first Kelson declaration), exhibited encyclopaedia extracts and a certified copy of a declaration by Mr Rex Lipman, a consultant, who gave details on the history of the term LE GORDON BLEU in relation to the opponent and the cookery schools it established.  Exhibited to the Lipman document were copies of advertisements and media articles in relation to use of the words. Also Mr Kelson, in his declaration of 19 April 1996 (second Kelson declaration), annexed exhibits RCK 3 to 5 which comprised press cuttings in relation to the opponent’s cookery schools.

Completing the evidence in support were statutory declarations by Brian Lawes of 9 April 1996, Edward A. Jackson of 10 April 1996, Jean-Michel Harzic of 12 April 1996, and Peter Du Feu of 18 April 1996, persons of some experience in the trade who all declared as to their knowledge of the trade mark in relation to the opponent’s cookery schools and products bearing the LE CORDON BLEU mark.

Evidence in Answer

J. Robert Ouimet, the president of the applicant, in his declaration of 19 May 1995, gave details of that entity’s use of the present mark in relation to specialised food products in Australia, together with sales and advertising figures of that trade.  Exhibited to his declaration were copies of catalogue pages from an Australian distributor of the applicant’s goods and a list of countries where the mark had been applied for, or registered in respect of those goods.

The balance of the evidence in answer comprised a declaration by Geoffrey Frederick Ferguson of 27 June 1995, a distributor of the applicant’s goods, who gave sales and promotion figures in relation to his company’s sale of the applicant’s goods.  Annexed to his declaration were copies of several declarations from people in the food trade.

Evidence in reply

The evidence in reply comprised declarations by Yves Corbel of 16 April 1996, Michael J. Monaghan of 23 April 1996, Richard J. Mulcahy of 26 April 1996, Wendy Lloyd Jones of 26 April 1996, Robert Sarsfield of 29 April 1996, and Robert Bruce Such of 6 May 1996, people of wide and varied experience in relation to the trade, who declared as to their knowledge of the mark LE CORDON BLEU in relation to the opponent and to the cookery school.

Submissions
Mr Kelson, in his submissions, gave his version of the history of the term CORDON BLEU.  He said that it had its origins four centuries ago as a reference to a ribbon worn by a French order of knights, famous for the excellence of their table.  A similar ribbon was later awarded to top female chefs.  The term was, in time, used with reference to classic French cuisine and in the title of a publication on fine French cooking.  This led to the establishment of a CORDON BLEU cookery school, a predecessor of the opponent, where top chefs came to teach.  The school, over time, developed a reputation for innovation in cooking and fine food.  All of this, he said, was supported by the opponent’s evidence.

With respect to the recent reputation of the words in relation to the opponent, Mr Kelson said that the term was widely used in relation to cookery schools run by the predecessor of the opponent and now the latter party.  The words had also been used in a reference to the opponent’s predecessor in a 1950s Hollywood film, Sabrina, which had international release.  He said that it was also the name of a famous dish which originated in the cookery school.  He said that the evidence showed that the primary international significance of the term CORDON BLEU was in relation to the opponent’s cookery school and to the classic French cuisine taught there.  Mr Kelson said that, although the present trade mark consisted of those words in a particular script, the idea of the mark was principally the words CORDON BLEU.  Therefore, he said, the mark could refer to the opponent’s famous cookery school, its cooking styles, or to the opponent’s products.  He said that the evidence showed there were a wide range of registrations and applications for those words in the name of the opponent, on a wide variety of goods and services relating to cookery and food.

Mr Kelson said that the evidence further showed that the opponent’s reputation in those words was so widespread that persons in the ordinary community would associate any use of the mark with that party.  This, he said, had not been rebutted by the applicant, whose evidence had been directed towards showing a reputation in a narrow area of use.  Mr Kelson further referred to the Office decision and submissions made in the case of the opposition to registration of application numbers 485578 and 611209.  There, Hearing Officer Zars had found that the respective parties’ CORDON BLEU trade marks, although not substantially identical, could be confused with each other because of their deceptive similarity.  He said that, in that instance, the evidence had shown that, if there was any reputation for the then opponent, it was limited to paté de foie and that there had been no attempt to expand that range of goods in Australia.

Mr Kelson referred to the case of Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd. (1979) RPC 409, in relation to the present opponent’s international reputation spreading to Australia and the need to protect the public against being deceived or confused. He said that such a result could occur here, given the opponent’s worldwide reputation for its trade mark in relation to its cookery schools and its associated food products - even if no use of the mark had occurred in Australia on the specific goods. He referred for support here to the case of Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448.

Mr Kelson said that, given the very high renown which the opponent’s mark had achieved, then the adoption of the present mark by the applicant had not been done with clean hands.

Ms Freeman made submissions in answer to the s.28 ground and also responded to other matters included in the notice of opposition.  However, as I have said, Mr Kelson restricted his submissions to mainly those on the s.28 ground but did obliquely refer to the s.40 ground.  Accordingly, I only intend to deal with those matters here.

In her submissions in reply, Ms Freeman said that the date when the present trade mark’s eligibility for registration needed to be considered was the date of application - 16 October 1987.  She related some of the background of the mark’s progress towards registration, saying that the goods for which registration was sought were limited to paté and meat spread and that the evidence of use tendered to gain registration showed use on those goods in Australia since the early 1960s.  She said that the mark’s registrability had been the subject of two Office decisions and, ultimately, it had been accepted for registration.  In the decision in relation to the opposition to application numbers 485578 and 611209, currently on appeal, Hearing Officer Zars had found that the present trade mark and the logo mark owned by the applicant there (the present opponent) were deceptively similar.  Ms Zars had further found that the reputation which the present applicant had in its stylised version of the words  was sufficient to support a claim that the use of the present opponent’s logo mark on food would be misleading or deceptive.  Thus, the s.28(a) leg of the opposition had been established there, as far as the logo mark was concerned.  However she had also found that it had not been shown that the present opponent had indulged in any blameworthy conduct.  Thus the opposition, as it was based on s.28, failed.

Ms Freeman said that the present mark here had been used for 30 years on the applicant’s goods without any instances of deception and confusion occurring, and that there was no evidence to suggest otherwise.

Ms Freeman said, in relation to the s.40 leg of the present opposition that, although Mr Kelson did not pursue that ground at length during the hearing, that the applicant claimed to be the proprietor of its own mark for the narrow range of goods, paté and meat spread.  This was because of common law ownership stemming from its first and continuous use on those goods since the 1960s.  She said that the opponent’s cookery school did not commence use of its mark on food items until at least 30 years after that time.

Ms Freeman referred to the case of Shell Company (Australia) Limited v Rohm and Haas Co (1949) 78 CLR 601 where the High Court lay down some principles of proprietorship - particularly the origination, or first adoption of the mark. She said that the notice of opposition referred to first use of the term CORDON BLEU by the opponent but the supporting evidence only showed use in relation to the opponent’s cookery schools and not food products. She further referred for support to the case of Riv-Oland Marble Co (Vic) Pty Ltd v Settef S.p.A. (1988) 12 IPR 321, with respect to common law ownership not being lost unless the mark had been abandoned. Here, the mark had been in long and constant use and the applicant still claimed to be the proprietor of the mark for its narrow range of goods, She said that, in the previous Office decision, Hearing Officer Zars had found that the present opponent’s class 29 goods were not the same goods, or goods of the same description as paté, except for the item “pastry”. Ms Zars had found that, if that item was deleted from the statement of goods of application number 485578, then that application could proceed to registration.

Discussion
I only intend here to discuss the grounds relied upon by Mr Kelson at the hearing - that of s.28, that use of the subject trade mark will be likely to deceive or cause confusion, that the trade mark is one which will not be entitled to protection in a court of justice; and of s.40, that the applicant is not the proprietor of the trade mark.

Section 28 - Deception and confusion

The provisions of this section of the Act read as follows:

A mark -

(a) the use of which would be likely to deceive or cause confusion;
           (b) the use of which would be contrary to law;
           (c) which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

The test to be applied under paragraph (a) of these provisions, on which the opponent partly relies, has been well established by cases such as Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, (1954) 91 CLR 592, where it was said, at 608:

Registration should be refused if it appears that there is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case the two products come from the same source.

However, that risk must extend to a substantial number of people likely to be concerned in the purchasing of the goods - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300. In assessing the reputation of the opponent’s mark in Australia, I agree with Ms Freeman that the relevant date is that of the lodgment of the opposed application, 16 October 1987 - Southern Cross, supra.

Mr Kelson attempted to show, in his submissions and by reference to the evidence, that because of the wide reputation of the opponent’s Le Cordon Bleu cookery schools, then the use of the words CORDON BLEU on any foodstuffs would indicate that the origin of those goods is the present opponent.

Ms Zars considered the same line of argument in her decision in relation to application numbers 485578 and 611209, albeit with the present parties in reversed roles.  I have studied that decision and agree with her findings in relation to the s.28 matter.  She has expressed her findings most succinctly and I quote her on this point:

Mr Lipman’s declaration refers to advertising in Australia of the Le Cordon Bleu cooking school in Paris, the earliest being in 1982, which invites applications for a cooking course.  He expresses the opinion that Australian graduates of the course and persons enquiring about the course would be fully aware of the reputation of “Cordon Bleu” and “Le Cordon Bleu”.  From exhibit B of Mr Cointreau’s second declaration, it appears that during 1981 and 1988, 50 persons from Australia enrolled in the Le Cordon Bleu cooking school.  Actual first use in Australia of the marks incorporating the words CORDON BLEU and LE CORDON BLEU in respect of some items of foods specified in the present applications, however, occurred in 1991, after lodgment of the present applications (numbers 485578 and 611209).  I do not believe that this evidence supports the views expressed by Messrs Lawes, Jackson and Harzic and Du Feu that the mark LE CORDON BLEU had become well known in Australia by virtue of Australian citizens attending the schools in Europe or through advertising before 20th April 1988.  Nor can this claim be substantiated by sales of the products, and the offering of culinary courses at the International College of Hotel Management in South Australia and in Sydney Ryde College, because all those events took place subsequent to the lodgment of the subject applications.  The applicant’s (the present opponent) evidence, in my opinion, does not establish that, on seeing the words CORDON BLEU, LE CORDON BLEU or CORDON applied to food products persons would assume that those products would necessarily be produced by the applicant or under the applicant’s authority.

She went on to find that, even though the reputation achieved through the use of the present applicant’s trade mark has only been moderate, on balance and given absence of use of the present opponent’s marks in that period, she believed that there could be a reasonable likelihood of deception or confusion in relation to the use of the present opponent’s logo mark incorporating the words CORDON BLEU, amongst a substantial number of persons.  She accordingly decided that the opposition to the registration of that mark succeeded - although she then went on to find that the opponent there (the present applicant) had not indulged in any improper conduct which might disentitle the opposed mark to protection in a court of justice in terms of s.28(d).  She therefore found that the opposition, as it was based on s.28, failed.

I do not think that the situation decided by Ms Zars has altered in the present case.  All of the evidence here was substantially the same as in the previous case, as were the submissions put by Mr Kelson.  I think any possible “spillover” of the opponent’s international reputation for its mark into Australia, as Mr Kelson alluded to in his reference to the case of Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd., supra, would have been minimal amongst the appropriate purchasers.  This is especially so, given that the mark had not been used on any goods in Australia as at the relevant date and not until 1991.  Even though, as Mr Kelson said in relation to Radio Corporation Pty Ltd v Disney, supra, an objection based on s28 did not need to be based on a trade mark at all, any reputation relied upon should be in the relevant market.   If there was a reputation for the opponent’s trade mark, I think it would have been for the services of cookery schools.

I agree with Ms Zars that the evidence supports the present applicant’s claim that it alone has used the present mark, since the 1960s, in respect of paté and meat spread.  I also concur with Ms Zars that the current applicant had established a reasonable reputation in this country in respect of those goods before the present application’s lodgment date.  There is nothing in the evidence to show that there have been instances of deception and confusion in relation to its use.

Given the foregoing, I cannot agree with Mr Kelson that I should find that the situation here is different to that which confronted Hearing Officer Zars and that I should find that the use of the present applicant’s mark would lead to deception and confusion.  Accordingly, the opposition must also fail in respect of the s.28(a) leg.

Having so found, there is no need for me to continue with the discussion, as it relates to s.28(d).  However, for the sake of completeness, I will briefly refer to the matter.  Following the High Court decision in the New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385, the Moo/Moove case, the Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613. That is, that all paras of s.28 should be read together. In Canon Kabushiki Kaisha v Robert James Brook and Rachel Brook trading as The Cannon Watch Company 36 IPR 88, Tamberlin J, after considering the judgments in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited (1990) 171 CLR 363, concluded that, in his view, the reasons for judgment delivered by members of the High Court left the matter open as to whether there was a need to find blameworthy conduct in opposition proceedings based on s.28(a) as opposed to expungement proceedings. He went on to find that:

Notwithstanding the diverse opinions expressed by members of the High Court in New South Wales Dairy Corporation case, I consider that I should follow the views expressed by the Full Federal Court in that case, with the result that in the case presently before me the opponent to the application for registration is required to demonstrate "blameworthy conduct".

This means that, for the opposition to be successful on the s.28 ground, had I found that the mark was likely to deceive or cause confusion, then it would also have been necessary to find that it would not be entitled to protection in a court of law.  However, there is nothing before me to show that there has been any blameworthy conduct on the part of the applicant nor any other circumstance which would disentitle the mark to protection in a court of justice.  The opponent has produced no evidence to show improper conduct on behalf of the applicant in relation to the present matter.  Mr Kelson said that blameworthy conduct resided in the applicant adopting the mark in the face of the opponent’s reputation.  However, that reputation, such as it was at the relevant date, was in relation to cookery schools and I do not regard this application for registration for a mark covering paté and meat spread to have any sinister connotations.  The applicant appears simply to be seeking to register a trade mark for a narrow statement of goods which it has been using unhindered for over 30 years.  The application must therefore also fail on the s.28(d) leg.

It follows that the opposition, as a whole, is not successful on the s.28 ground

Section 40 - Proprietorship

The provisions of s.40, so far as is relevant here, are that:

A person who claims to be the proprietor of a trade mark may make application to the Registrar for registration of that trade mark in Part A or Part B of the Register

On that subject, McGarvie J said in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd(No 2) 59 ALJR 77 at 83.
 ...

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

In other words, the first user of the mark in Australia (for relevant goods and prior to the date of application) becomes the proprietor at common law.  That proprietorship, however, is limited to "the same kind of thing", as per Holroyd J in Hick's trade mark (1897) 22 VLR 636. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that goods of a particular trader are being offered for sale in Australia.

I am concerned, in deciding the issue of proprietorship, with whether the marks are identical or so similar as to be virtually the same mark - The Kendall Co v Mulsyn Paint and Chemicals, supra; and Tavefar Pty Ltd v Life Savers (Australasia) Ltd 12 IPR 159. In the present case, the marks used by the respective parties are very similar - the applicant’s mark being the words CORDON BLEU in slightly stylised script and the opponent claiming use of those words alone. However, notwithstanding any similarity of the respective party’s marks, the applicant is claiming use on a narrow range of goods, being paté and meat spread since the 1960s. On the other hand, the opponent is claiming use in Australia, in relation to its French cookery school, since 1982 and, on some food items, since 1991. The applicant is therefore clearly the first user, and accordingly the proprietor of its mark in this country, in respect of the relevant goods.

Given the foregoing, I find that the opposition fails, as it is based upon s.40.

Conclusion
I have found that the opponent has failed on all of the grounds relied upon at the hearing.  Therefore, subject to any appeal from this decision, I dismiss the opposition and the application should proceed to registration.

Costs
I can see no reason why costs should not follow the result and I therefore award costs in the matter to the applicant.

Ian Forno
Hearing Officer

8 December 1997