Consorzio Per La Tutela Del Formaggio Asiago v Sartori Company
[2024] ATMO 140
•2 August 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Consorzio Per La Tutela Del Formaggio Asiago to registration of trade mark application no. 2193433 –SARTORI ASIAGO ROSEMARY AND OLIVE OIL with device– in the name of Sartori Company.
Delegate: | Bianca Irgang |
Representation: | Opponent: David Larish of counsel instructed by Bird & Bird Applicant: Stephen Rebikoff of counsel instructed by Davies Collison Cave |
Decision: | 2024 ATMO 140 Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 44 and 43 grounds of opposition pressed – no grounds of opposition established. |
Background
Sartori Company (‘the applicant’), filed trade mark application number 2193433 on 9 July 2021 in class 29 of the Nice Agreement Concerning the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark: (the ‘Trade Mark’)
Trade mark application no: 2193433
Priority Date: 9 July 2021
Specification: Class 29: Asiago-style cheese
Acceptance of the application for possible registration was advertised in the Australian Official Journal of Trade Marks dated 1 April 2022. Subsequently Consorzio Per La Tutela Del Formaggio (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).
The applicant then filed its Notice of Intention to Defend. Thereafter, the opponent and the applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’).
I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 6 June 2024. The opponent was represented by David Larish of counsel instructed by Bird & Bird. The applicant was represented Stephen Rebikoff of counsel instructed by Davies Collison Cave.
Grounds of Opposition
The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth ) (‘the Act’) but only the grounds under sections 43 and 44 were pressed at the hearing. The opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
Evidence
The evidence filed in this matter consists of the following declarations being:
Opponent’s evidence
Declaration of Fiorenzo Rigoni, President of opponent, made on 14 November 2022 (‘Rigoni’), and its Exhibits FR-1 to FR-24.
Declaration of Shariqa Anjum Mestroni, Solicitor at Bird & Bird, made on 15 November 2022 (‘Mestroni’), and its Exhibits SAM-1 and SAM-2.
Applicant’s evidence
Declaration of Sam Allison, Director of Global Sales of the applicant, made on 8 February 2023 (‘Allison’), and its Exhibits SA-1 to Confidential Exhibit SA-7.
Declaration of Peter Heaney, Managing Director of Washed Rind Pty Ltd, made on 17 February 2023 (‘Heaney’), and its Exhibits PH-1 to Confidential Exhibit PH-5 including Confidential Annexure A.
Declaration of Lauren Eade, Legal Practitioner at Davies Collison Cave Pty Ltd, made on 21 February 2023 (‘Eade’), and its Exhibits LE-1 to LE-12 including:
§Declaration of Shawna Morris, Senior Director of Consortium for Common Food Names, dated 29 January 2019 (‘Morris’), and its Exhibits SM-1 to SM-9.
Discussion
Section 44
Section 44 of the Act relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:
a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and
the priority date(s) of the other person’s trade mark(s) is (are) the earlier.
The opponent is the registered owner of trade mark registration no. 1523300 ‘ASIAGO with device’ and listed it in support of its section 44 ground of opposition. This trade mark registration has an earlier priority date to the Trade Mark. The Trade Mark covers the same and/or related goods in class 29 to those that relate to the opponent’s trade mark. Therefore, the remaining issue for me to determine is whether the Trade Mark is either substantially identical or deceptively similar to the previously registered trade mark put forward by the opponent. The details of the opponent’s trade mark registration are as follows:
Trade mark: (‘opponent’s trade mark’)
Trade mark registration: 1523300
IR Number: 1133014
Convention Claim: MI2012C006129
15 June 2012
Italy
Priority Date: 26 June 2012
Specification: Class 29: Dairy products; cheese
It is obvious that the opponent’s trade mark is not substantially identical to the Trade Mark according to the side-by side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3]. While the respective trade marks contain the word ‘ASIAGO’ this is where the similarities between them end. They each have different devices and the Trade Mark contains additional words which change the visual and aural elements of Trade Mark and preclude a finding of substantial identity.
[3] (1963) 109 CLR 407, 414.
I now consider whether the Trade Mark is deceptively similar to the opponent’s trade mark. Deceptive similarity is defined by section 10 of the Act, which states ‘[f]or the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, to the impression they would get from the opposed trade mark.[4] The probability of deception must be finite and non-trivial.[5]
[4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).
[5] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).
The opponent’s trade mark consists of the word ASIAGO in capital letters with the centrally located letter ‘A’ being the largest font size and jutting into the device which is a circle with a wedge cut out of it to allow the large letter A to intrude. It is fair to say that the main shared word elements of the respective trade marks is the word ASIAGO which is a type of cheese. The applicant has argued:
As noted by the Full Court, in considering the question of deceptive similarity, the notional purchaser is to be imputed with knowledge, and an imperfect recollection of, the particular stylised form of the Opponent’s ASIAGO logo, not just knowledge of, and an imperfect recollection of, the word ASIAGO: The Agency Group Australia Limited v HAS Real Estate Pty Ltd (2023) 295 FCR 117 at [61]. Indeed, as in The Agency Group, the consumer is likely to have a particularly strong capacity to recall the device elements of the because of their relative simplicity: at [86].
The Opponent’s submissions also fail to have regard to the whole of the Opposed Mark and its various word and device elements, or to consider those elements in their context including their size, prominence, stylisation of words and devices, and relationship to each other: The Agency Group Australia Limited v HAS Real Estate Pty Ltd (2023) 295 FCR 117 at [18]. In particular, the suggestion that the word ASIAGO is the “essential feature” (or even the “first word”) of the Opposed Mark defies reality: cf Opponent’s Submissions at [55].
Finally, the Opponent’s submissions ignore completely the descriptive nature of the word ASIAGO in the context of asiago-style cheese. As noted by the primary judge in The Agency Group, the ordinary consumer would expect the word “asiago” to be commonly used in connection with asiago-style cheese. As a result, it would give an unwarranted monopoly to the Opponent if rival producers were not able to use the word “asiago” in connection with their own asiago-style cheese products. The ordinary consumer would not be confused by the fact that the word “asiago” had been used by a rival producer for such products: The Agency Group Australia Limited v HAS Real Estate Pty Ltd [2023] FCA 482…
I agree with the applicant on these points. The opponent has argued:
The essential feature of the ASIAGO Mark is the word ASIAGO. This is the only word in the ASIAGO Mark. The stylisation in the ASIAGO Mark is relatively minimal and in any event, the ‘cut out triangle’ in the circle above the word ASIAGO directs the viewer’s attention to that word.
The Opposed Mark uses the word ASIAGO. Indeed, it is an essential feature of the Opposed Mark. In particular:
(a) It is the largest word in the Opposed Mark.
(b) It is the first word in the Opposed Mark. Put another way, it appears ‘highest up’ in the Opposed Mark.
(c) Like Sartori, it is not a common English word: cf Rosemary and Olive Oil.
(d) While the Opposed Mark is a composite mark, its stylisation does not render ASIAGO a subsidiary feature of the Opposed Mark as a whole.
(e) The colours used in the Opposed Mark are irrelevant, as the application (and therefore the scope of any registration) is not confined by colour: see TM Act.
As to a visual comparison, in addition to the above matters, in both marks, ASIAGO is rendered in upper case.
In an aural comparison, the stylisation of the Opposed Mark is irrelevant.
I am not persuaded by these submissions. As already discussed, the word ASIAGO is the common element in the trade mark representations. I note that Asiago is a region in Italy, comprising the provinces of Vicenze, Trento Padova and Treviso, and the area known as the Asiago Plateau.[6] ASIAGO was recognised as a “designation of origin” in Italy in 1978 and granted Protected Designation of Origin status in the EU in 1996.[7] It is also protected as a geographic indication in various other countries but not in Australia.[8] ASIAGO is protected overseas for a type of cow’s milk cheese that is made in and named after the Asiago region.[9] According to Rigoni, the geography of the Asiago region has a significant impact on the flavour of ASIAGO cheese because the milk that is used is from cows in the Asiago region and those cows graze only on approved feed[10] and special techniques are also used to make ASIAGO cheese. However, the evidence of the applicant demonstrates that other traders outside of Italy are also using the word ASIAGO to describe their cheese goods in recipes[11], in store[12] and online[13] and to promote their cheese online[14] and sold in Australia.[15]
[6] Rigoni [3]-[4]; Exhibit FR-1 accompanying Rigoni.
[7] Rigoni [12]-[16].
[8] Rigoni [18]-[22]; Allison [21]-[23].
[9] Rigoni [4], [11].
[10] Rigoni [31.1].
[11] Exhibit FR-1 accompanying Rigoni
[12] Exhibit FR-21 accompanying Rigoni
[13]Exhibits SM-3 and SM-3B accompanying Morris; Exhibit SAM-1 accompanying Mestroni.
[14]Exhibits SM-3 and SM-3B accompanying Morris; Exhibit LE-12 accompanying Eade.
[15] Heaney [8]-[11]; Confidential Exhibits PH-2-PH-5 accompanying Heaney; Allison [16]-[20]; Exhibit LE-12 accompanying Eade
Given this understanding of what the word ASIAGO means and a basic understanding of the marketplace, I am satisfied that it is an expression which other traders dealing in cheese goods are likely to use in the ordinary course of their business for a style of cheese. The use of a somewhat non-distinctive and descriptive term within each of the trade marks is unlikely to cause the potential consumer to wonder whether the trade marks are related.
Applying these considerations, I am not satisfied the Trade Mark is deceptively similar to the opponent’s trade mark, particularly when the trade marks are considered, as they must be, as wholes. To refuse the Trade Mark because of the descriptive word ASIAGO would impermissibly seize on a single similarity between the trade marks, while ignoring the trade marks in their entirety. I recall, ‘it is the whole mark as used which is the subject of comparison with the registered mark.’[16].
[16] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).
In this case, the differences aurally and visually between the respective trade marks are all important and carry significant weight when considering the trade marks. Even if the general Australian consumer would not know the actual meaning of the word ASIAGO and would identify it as a foreign word, it is likely that the differences between the respective trade marks would be given careful weight and consideration to ensure that the consumer was purchasing the cheese or brand that they were familiar with.
Therefore, I am not satisfied there would be a real and tangible danger of confusion arising[17] between the respective trade marks. My finding is that the respective trade marks of the two parties are neither substantially identical nor deceptively similar. As a result of this finding, the ground of opposition under section 44 has not been made out.
[17] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).
Section 43 – trade mark likely to deceive or cause confusion
Section 43 provides:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
In the SGP the Opponent particularises the s 43 ground of opposition as follows:
The deceptive connotation of the Asiago Sartori Logo is corroborated, if not made manifest, by the circumstance that the Asiago Sartori Logo, i.e. does not contain any reference to the fact that it is intended to identify an “Asiago style” cheese and is therefore not a genuine Asiago cheese. This attests that the Asiago Sartori Logo is also likely to deceive or cause confusion pursuant to section 43 of the TMA.
Accordingly, the opponent opposes the registration of the Application under Section 43 of the TMA on the ground that the use of the Asiago Sartori Logo for the designated goods would be likely to deceive or cause confusion.
To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark itself. Justice Gyles in Pfizer Products Inc v Karam commented:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question …[18]
[18] [2006] FCA 1663, [53].
In Winton Shire Council v Lomas, Spender J noted:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[19]
[19] [2002] FCA 288, [19].
The opponent submits that the connotations in the Trade Mark are:
A connotation of ASIAGO as it appears in the Opposed Mark is that Opposed Goods bearing the Opposed Mark are made in Italy (more specifically, in the Asiago region).[20]
This connotation is plain based on the evidence referred to in… (Rigoni)
The Opponent submits that this connotation would be known to a substantial proportion of Australians … However, ultimately, nothing turns on this. This is because:
(a) s 43 does not require proof of any reputation in the sign the subject of the connotation: Institut National de l’Origine et de la Qualité v Bizko Pty Ltd [2021] ATMO 5 at [26]-[28]. Indeed, as stated in Primary Health Care Ltd v Commonwealth (2017) 260 FCR 359 at [140], “reputation is irrelevant”. See also e.g., Winton Shire Council v Lomas (2002) 199 FCR 416 at [19];
(b) the connotation relied upon does not need to be known to Australians at large – indeed, even if they are “unaware” of the meaning, this does not matter: Griffin Pastoral Co Pty Ltd v Ralph Fowler Wines Pty Ltd (2005) 68 IPR 171 at [18];
(c) it is “misleading” – and irrelevant – to consider the proportion of sales of (genuine) ASIAGO cheese in Australia as a proportion of total Australian cheese consumption: Bizko at [26]-[27].
Based on the above connotation, the consumer is thus likely to think that Opposed Goods to which the Opposed Mark has been applied was made in Italy. This connotation is likely to confuse or deceive because the Opponent’s product is made in the United States, not Italy.
[20] Put another way, the connotation is that the Trade Mark represents a what the opponent would consider a genuine ASIAGO cheese instead of an “Asiago-style” cheese.
I am not in agreement with the opponent. In order for section 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a consumer in the Australian marketplace based upon a connotation within the Trade Mark. The opponent has argued that a consumer can be “unaware” of the meaning or connotation and this does not matter. I disagree. If the general public is completely unaware of the connotation and there is no protected geographic indicator status with Australia, then how and on what basis can an unaware consumer be deceived or confused by the purchase of an ‘asiago-style cheese’ bearing the Trade Mark? The consumer is obtaining a cheese that they (hopefully) enjoy consuming and that is sold under a Trade Mark that has the word ASIAGO in it which has no protection in Australia as a geographical indication (‘GI’). While Rigoni does assert that in 2018 Australia began negotiating a new Free Trade Agreement (AU/EU FTA) with the European Union and that as part of those negotiations the protection of ASIAGO as a GI is being considered,[21] ASIAGO is not and may not become a protected GI in Australia. Nor does it appear from the evidence that the applicant is claiming its goods are made in Italy.
[21] Rigoni [23].
The applicant has submitted:
…It is not sufficient for the Opponent to show merely that some consumers in Australia associate the word “asiago” with Italy or a type of cheese which is made in Italy. Rather, it is necessary to show that, when it is used in Australia, the ordinary or reasonable consumer of cheese believes that the word “asiago” refers only to a type of cheese that is made in Italy and nowhere else.
There is simply no evidence that supports that proposition. Indeed, there is very little evidence that the ordinary consumer of cheese in Australia is aware of asiago at all. The Opponent submits that it is irrelevant whether the proposed connotation would be known to a substantial proportion of Australians. That ignores the fact that the question of whether the Opposed Mark is liable to deceive or cause confusion must be assessed having regard to the reaction of the ordinary or reasonable consumer: Scotch Whisky Association v De Witt (2007) 74 IPR 382 at [53]-[55] and [59]- [61]; Bavaria NV v Bayerischer Brauerbund eV (2009) 81 IPR 279 at [89] and [93]-[94]. In particular, it cannot be said that such a consumer would be deceived or confused by a connotation of which they were “unaware”.
The sales of asiago cheese from Italy are miniscule in the context of the overall volume of cheese sold in Australia,[22] and there has been very little promotion of asiago to Australian consumers before the Priority Date (or at all). More importantly, there is no evidence that Australian consumers who are or might become aware of asiago would regard it as anything other than a descriptive term for a particular type of cheese, just like other popular Italian-style cheeses that might be found in an Australian supermarket such as parmesan, mozzarella, ricotta or mascarpone…
[22] The Opponent claims that 1,200 tonnes of asiago cheese have been sold in Australia over the course of a decade: Rigoni [39]. To put that figure in context, during the period 2017-2021 alone (when around 600 tonnes of asiago were imported), total Australian cheese imports were more than 500,000 tonnes and total domestic cheese sales were more than 1,300,000 tonnes: Eade [30].
In the present case, I agree with the applicant that trade marks containing descriptive matter would not necessarily attract a section 43 objection. In this case, the opponent asks that I extend its GI in Italy and the EU regarding ASIAGO named cheese into Australia. This would be done via the activation of section 43 by finding that the sale of cheese in Australia bearing the Trade Mark is deceiving and confusing to unaware Australian consumers because of the GI connotation in the word ASIAGO. The opponent draws a long bow implying that section 43 should act as a way to enforce unprotected GIs within Australia regardless of the current status of the word ASIAGO in Australia, its common use by other traders or the awareness of the Australian consumer.
I am satisfied that there is no evidence before me sufficient to establish there is a connotation in the Trade Mark which would cause confusion or deception in the Australian marketplace.
I am not satisfied that the Trade Mark is likely to deceive or cause confusion because of any connotation in the Trade Mark. The ground of opposition under section 43 is not established.
Decision
Section 55 of the Act relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, 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.
The opponent has not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar is served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
2 August 2024
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