Consorzio per La Tutela Del Formaggio Asiago v Sartori Company
[2018] ATMO 64
•4 May 2018
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 number 1680928 (29) – SARTORI ASIAGO – in the name of Sartori Company
Delegate: Debrett Lyons Representation: Opponent: Lynne Lewis, a solicitor with the firm of Bird & Bird.
Applicant: Stephen Rebikoff of Counsel, instructed by Ian Drew of Davies Collison Cave Pty Ltd.Decision: 2018 ATMO 64
Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 43, 60 and 61 of the Trade Marks Act 1995 considered –– none established and opposition not established.Background
1. This matter concerns an opposition brought by Consorzio Per La Tutela Del Formaggio Asiago (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark SARTORI ASIAGO which is the subject of application 1680928 made by Sartori Company (‘the Applicant’).
2. The application was made on 13 March 2015 (‘the filing date’, or as the context requires, ‘the priority date’, those dates being the same in this case), examined as required by section 31 of the Act, accepted and advertised for possible registration in the Australian Official Journal of Trade Marks in respect of class 29 goods being ‘Asiago-style cheese’ (‘the Goods’) on 2 June 2016.
3. On 1 August 2016 the Opponent filed a Notice of Intention to Oppose the registration and filed a Statement of Grounds and Particulars (‘the SGP’) on 1 September 2016. The SGP nominated grounds of opposition under sections 42(b), 43, 60 and 61 of the Act. The Applicant filed a Notice of Intention to Defend on 7 October 2016.
Evidence
The parties filed evidence in accordance with the Trade Mark Regulations 1995 (Cth). The Opponent’s Evidence in Support of its opposition comprises the following declarations:
·Fiorenzo Rigoni dated 12 January 2017 (‘Rigoni’),
·Pietro Bonato dated 12 January 2017 (‘Bonato’), and
·Justin Cooper Senescall dated 17 January 2017 (‘Senescall’).
The Applicant’s Evidence in Answer comprises:
·Brian G. Gilpin dated 7 April 2017 (‘Gilpin’) and
·Angela Schelinske dated 7 April 2017 (‘Schelinske’).
The Opponent’s Evidence in Reply comprises:
·Elizabeth Anne Lewis dated 19 June 2017 (‘Lewis’).
7. Thereafter the parties asked to be heard in person and a hearing was convened in Canberra on 8 February 2018. Stephen Rebikoff of Counsel, instructed by Ian Drew of Davies Collison Cave Pty Ltd (also present), appeared for the Applicant. Lynne Lewis, a solicitor with the firm of Bird & Bird, appeared for the Opponent. Both Mr Rebikoff and Ms Lewis had earlier provided me with written outlines of their oral submissions in accordance with the pre-hearing timetable I set.
8. On the day prior to the hearing the Opponent sought to introduce other evidence. I first heard the parties in connection with the admissibility of that evidence and indicated that my final decision on that point would be here entailed. After further consideration of the opposition I have determined that the evidence sought to be admitted before the hearing has no impact on my decision as it has been reasoned and thus I do not admit it.
The Goods
9. The Opponent claims and the Applicant does not dispute that the name ‘Asiago’ is a ‘geographical indication’ as defined in section 6 of the Act. It is the name given to a style of cheese. The Rigoni declaration is uncontested to the extent that it explains that Asiago styled cheese takes its name from a region in Italy that comprises the provinces of Vicenza, Trento, Padova and Treviso and includes an area known as the ‘Asiago Plateau’ (‘the Asiago Region’).[1]
[1] Rigoni [5].
The Opponent
10. The Opponent is an association of cheese producers in Italy certifying the quality of Asiago cheese and licensing the use of the Asiago name.[2] The Opponent is the owner of two Australian trade mark registrations and a pending (accepted) application, namely:
[2]Rigoni [20], FR-4.
Number Priority date Trade mark Goods Type of mark Regn. 1523300 15 June 2012 Dairy products; cheese (29) Standard Regn. 1647738 6 May 2014
(filed 26.06.12)Cheeses (29) Certification App. 1807862 8 Nov. 2016 ASIAGO Cheese (29) Certification The Applicant
11. The Applicant is a cheese maker located in the State of Wisconsin, USA, founded in 1939 by Paolo Sartori and Louis Rossini under the name S&R Cheese Corporation.[3] It was incorporated in Wisconsin in 1947[4] and it is stated in evidence that it has been selling a cheese under the name ‘Asiago’ from 1950.[5] In 1996 it changed its name from S&R Cheese Corporation to S&R Food Corporation and in 1997 it changed its name again from S&R Food Corporation to Sartori Food Corporation.[6] In 2011 it changed its name yet again from Sartori Food Corporation to its current name, Sartori Company.[7] There is evidence (discussed later) that the Applicant and its predecessors in title have continued to sell cheese by reference to the name ‘Asiago’ through to the present time but there is no evidence that it has done so in Australia.
12. The Applicant owns Australian Trade Mark Registration 1680919, also filed 13 March 2015, for the trade mark SARTORI PARMESAN in class 27 for “Cheese”. That registration was not opposed but I note that it carries the endorsement: “Registration of this trade mark gives no exclusive right to use or authorize the use of the word PARMESAN.”
Grounds of Opposition, Onus and Standard of Proof
13. The grounds nominated in the SGP and pressed by the Opponent are:
· under section 60 of the Act, that use of the Trade Mark would be likely to deceive or cause confusion because of prior reputation of another trade mark;
· under section 42(b) of the Act, that use of the Trade Mark would be contrary to law;
· under section 43 of the Act, that use of the Trade Mark would be likely to deceive or cause confusion because of some connotation of the Trade Mark; and
· under section 61 of the Act, that the Trade Mark contains or consists of a sign that is a geographical indication for goods originating in a country, region or locality other than that in which the Goods originated.
[3] Schelinske, Annexure A.
[4] Gilpin [4], Annexure BG-1.
[5] Schelinske, Annexures D, E, F and G.
[6] Gilpin [5]-[6], Annexure BG-1.
[7] Gilpin [7].
The onus of proof to establish one or more of those grounds rests upon the Opponent.[8] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[9] The date at which grounds are to be determined is 13 March 2015, being the filing (and priority) date of the application.[10]
[8] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[9] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].
[10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].
Discussion
I have considered the grounds of opposition in the order they were presented in the Opponent’s outline written submissions, albeit that the discussion took a different path at the hearing.
Section 60
Section 60 of the Act is reproduced below:
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.
To successfully rely on section 60 the Opponent must, as a threshold issue, establish through its evidence that the Trade Mark had acquired a reputation as at the priority date. The Opponent’s position is that the Rigoni declaration demonstrates that the term ‘Asiago’[11] has been used in Australia and elsewhere as a badge of origin for cheese that is produced in the Asiago Region. Rigoni states that over 111 million kilograms of cheese from the Asiago Region was produced in the period 2011 to 2015, 99% of which was exported from Italy.[12] Confidential figures for weight and value of cheese from the Asiago Region imported into Australia are given.
[11] In the form of one or more of the Opponent’s trade marks as shown in para. 10 above.
[12] Rigoni [34] and [35].
18. The Applicant is critical of any claim to reputation in Australia based on this evidence. One reason given is that it is said to be impossible to assess the significance of the Australian figures without reference to the total weight and volume of all cheese imported into Australia during the same period. Publicly available statistics give a measure of that total volume and it is the Applicant’s assertion that the Opponent’s confidential figures indicate that Asiago style cheese only accounts for ‘a minuscule proportion’ of the total. However, I need not look more closely at either side of this argument for the reason that I am in agreement with the Applicant’s submission that:
… in assessing whether, because of that reputation, the use of another trade mark would be likely to deceive or cause confusion, it is necessary to take into account the character of the reputation which has been established in the mind of the public: That is particularly so in circumstances where the Opponent contends that its mark serves as a badge of origin not of the Opponent itself, or any of its members, but of a kind of goods originating exclusively in a particular region.
19. Rigoni explains that ‘Asiago’ is the name of a type of cheese produced by a number of different makers.[13] Even if the evidence of the amount of ‘Asiago’ style cheese imported into Australia was a measure of the likely awareness of ordinary cheese buying Australians of the ‘Asiago’ name, it is not evidence that those people understood the term in any way differently from that of other Italian cheese styles. Based on the evidence before me I am in agreement with the Applicant’s reasoning that:
[13] Rigoni [4] and [20].
… there is no reason to suppose that such consumers considered the term to be anything other than simply a descriptive term for the particular type of cheese, just like parmesan, mozzarella, ricotta or mascarpone. Given that is precisely how the word is sought to be used in the Opposed Mark, in the absence of clear and unambiguous evidence to the contrary, it cannot be said that the use of the Opposed Mark would be in any way likely to deceive or cause confusion.
20. In this respect it is noteworthy that for the purposes of section 60 the Opponent submits that the Trade Mark is deceptively similar to its trade marks 1807862 ASIAGO and 1523300 for .
21. As seen from the table in paragraph 10 above, registration 1647738 can be disregarded since it does not contain the name ASIAGO. Nevertheless, it is telling that two of the Opponent’s three trade marks are for “Certification” trade marks, that is, signs used by the Opponent (or by someone else approved by the Opponent) in relation to the quality or some other characteristic of the cheese including its origin, composition or manner of production.[14] In my assessment there is no cogent evidence of the Opponent or its members having educated the Australian public to expect that cheese bearing the name ‘Asiago’ come only from the Asiago Region.
[14] Section 168 of the Act.
22. It follows that there is no relevant reputation in any of the Opponent’s marks such that use of the Trade Mark is likely to deceive or cause confusion. I find that the Opponent has not established its ground of opposition under section 60.
Section 42(b)
23. Section 42(b) of the Act provides that an application for registration of a trade mark must be rejected if ‘its use would be contrary to law.’ The Opponent contends that the use of the Trade Mark would be contrary to sections 18 and 29(1)(h) of the Australian Consumer Law (‘ACL’) (Schedule 2 of the Competition and Consumer Act (2010) (Cth)).
24. Section 18 of the ACL prohibits conduct which is likely to mislead or deceive and section 29(1)(h) prohibits false or misleading representations about goods. The argument is that if the Applicant was to use the mark SARTORI ASIAGO in connection with cheese, consumers in Australia are likely to be misled or deceived as to both the origin and the characteristics and quality of the goods. The Opponent submits that there is a real risk that consumers will believe that the Applicant’s cheese (i) originates from the Asiago Region, and (ii) has characteristics and/or qualities commensurate with cheese so originating and produced with the approval of the Opponent.
25. The Applicant reminds me that the mere risk of confusion is not sufficient to make out a case under sections 18 and 29 of the ACL[15] and that a consequence of this threshold is that if the Opponent has failed to establish a ground under section 60 of the Act, it cannot prevail under section 42(b). Based on my section 60 findings, I do not consider there to be any false or misleading representation, nor any misleading or deceptive conduct more generally.
[15] Google Inc v Australian Competition and Consumer Commission (2013) 249 CLR 435 at [8].
26. The section 42(b) ground has not been established.
Section 43
Section 43 of the Act provides:
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.
The Opponent accepts that for section 43 to be triggered, there must be some connotation carried by the Trade Mark itself and quotes the case of Winton Shire Council v Lomas where Spender J held:
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.[16]
[16](2002) 119 FCR 416 at [19].
The Opponent argues, as before, that the Trade Mark connotes that the cheese would be produced in the Asiago Region with the approval and under the supervision of the Opponent. As before, the Applicant responds that there is nothing to prove with any authority that consumers who see the Trade Mark will regard it as an indication that the Goods have been produced in a particular place or in accordance with particular specifications.
30. Therein lies the resolution of the section 43 ground of opposition for the simple reason that the potential connotation of the Trade Mark is tied to the particular goods of the application and the question of whether or not the use of the Trade Mark in relation to those goods would be likely to deceive or cause confusion. The Goods are ‘Asiago-style cheese’ and that is the end of the matter. I find that the section 43 ground has not been established.
Section 61
31. Section 61(1)(a) of the Act provides that registration of a trade mark may be opposed because it ‘contains or consists of’ a sign that is a geographical indication for goods (‘the GI goods’) originating in a country, or in a region or locality in a country, other than the country in which the applied-for goods originated if the applied-for goods are similar to the GI goods or the use of a trade mark in respect of the applied-for goods would be likely to deceive or cause confusion.’ [17]
[17] I have paraphrased the section for the reason that it creates its own terminology which might be confusing in the context of what has been written so far. For reference the section reads, so far as relevant:
32. That provision is subject to the immunity given by section 61(2)(c) which applies if the Applicant, or its predecessors in title described earlier, have used the name ‘Asiago’ in respect of the Goods before 1 January 1996, or the day on which the name was recognised as a geographical indication for the GI goods in their country of origin, whichever is the later. In this opposition, that exemption has in turn led to the question of whether or not the prior use of the name ‘Asiago’ in respect of the Goods must be use in Australia.
33. The Applicant’s written submissions include the passage below:
For the purposes of this opposition, the Applicant does not dispute that the word ASIAGO is a geographical indication within the meaning of the Act, or that the requirements of s 61(1) of the Act are otherwise satisfied on the evidence but contends that the opposition under this ground fails pursuant to s 61(2)(c) because the Applicant has established that it used the sign ASIAGO in good faith in respect of the relevant goods before 1 January 1996.
34. That passage is footnoted with the following statement:
It is not clear on the evidence whether the relevant date is 1 January 1996 or 21 June 1996, given that ASIAGO was not designated as a geographical indication under the laws of the European Union until 21 June 1996 but was (apparently) recognised under the laws of Italy from 21 December 1978. For present purposes, nothing turns on this, since the Applicant’s evidence establishes use of the sign ASIAGO going back to the 1950s.
35. Since it is the Applicant pressing for the application of this defence I will look to its argument first. In this regard, the evidence establishes that the Applicant’s predecessor in title, S&R Cheese Corporation, incorporated in 1947, had a 1950-1951 product description brochure and the 1951 price sheet includes a reference to ‘Asiago’ cheese. That and other evidence of historical use presented by the Applicant was criticized by the Opponent but on examination I am satisfied that there is evidence of use of the name ‘Asiago’ so as to otherwise satisfy section 61(2)(c).
36. The Applicant’s position is that there is no requirement under s 61(2)(c) that the relevant use occur in Australia. It argues that
… it cannot be said that it is necessary to read the plain words of s 61(2)(c) as subject to a further limitation that the prior use occur in Australia. On the contrary, there is every reason to suppose that the omission of the words “in Australia” from the terms of s 61(2)(c) was quite deliberate.
… the provision was included in the Act in order to enable Australia to fulfil its obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS”). Article 24(5) of TRIPS expressly provided for the preservation of the right to apply for a trade mark in member countries where “rights to a trade mark have been acquired through use in good faith” before the commencement of the relevant provisions. There is nothing in those provisions which requires that use to have been in the country in which the trade mark is sought.
If the Parliament had intended s 61(2)(c) to require use in Australia, it would have been a simple matter for the words “in Australia” to be included in the section. Indeed, there are a number of other provisions of the Act where the Act expressly specifies that, for the purposes of the relevant provisions, use or reputation must be “in Australia” (particularly where the provision is apt to apply to the actions of a foreign trader).[18]
…
In those circumstances, there is no reason to suppose that the omission of the words “in Australia” from the terms of s 61(2)(c) was inadvertent, or that it is necessary to read those words into the legislation in order to give effect to the purposes of the legislation. On the contrary, the better view is that Parliament consciously turned its mind to the application of the provision and deliberately chose not to confine the requisite use.
Such a construction is also consistent with the way in which s 61(2)(c) has been applied in other decisions which have considered the provision. In Consorzio Tutela Vini Emilia v Vinedos Emiliana SA [2017] ATMO 67, it was held that the Applicant could avail itself of the defence under s 61(2)(c) because it had operated a successful organic winery in Chile for almost 30 years, and had therefore been using the relevant sign in relation to its wines prior to January 1996.[19] There was no suggestion by the delegate (or, it seems, the parties) that the use was required to be in Australia.
On that basis, the Applicant contends that the terms of s 61(2)(c) should be given their plain and ordinary meaning and should not be confined by the implication of words which do not appear in the legislation.
[18] The Applicant gives the examples of sections 59, 60 and 120(3) of the Act and contrasts the wording of section 41(4).
[19] Consorzio Tutela Vini Emilia v Vinedos Emiliana SA [2017] ATMO 67 at [49]-[53].
37. The Opponent, for its part, points to Article 22(2) of TRIPS which requires member states (including Australia) to prevent:
… the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;...
38. I observe that section 61 does that. The Opponent refers to the evidentiary foundation for the status of the name ‘Asiago’ as a geographical indication (a matter of fact the Applicant admits). The Opponent refers to Article 24(5) of TRIPS without saying more about how the reference therein to ‘the right to use a trademark’ might be understood. I do not find that I am closer to understanding the argument that the earlier use must be use in Australia.
39. On the basis of these submissions I have no cause to read a gloss onto section 61(2)(c) by way of a requirement that the evidence of use before the relevant date in 1996 must be use in Australia. I find that there was use of the name ‘Asiago’ before the relevant date by one or more predecessors in title to the Applicant’s business and I find that the defence provided by section 6(2)(c) has been triggered.
40. For these reasons the Opponent has not established a ground of opposition under section 61.
Decision
Section 55 of the Act relevantly provides:
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 failed to establish a ground of opposition and so, subject to any appeal from the Registrar to the courts, I order that registration of this application should proceed thirty days from the date of this decision.
43. Section 55(1)(b) give the Registrar the power to add a condition or limitation to the registration and in that regard I am reminded that the Applicant’s registration 1680919 carries the endorsement: “Registration of this trade mark gives no exclusive right to use or authorize the use of the word PARMESAN.” There were no submissions that a similar endorsement should be added to this registration and I do not see the need for one.
Costs
The Applicant 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 has failed to establish a ground of opposition, I award costs against the Opponent under section 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.
Debrett Lyons
Hearing Officer
Hearings and Oppositions
4 May 2018
Trade mark containing or consisting of a false geographical indication
(1) The registration of a trade mark in respect of particular goods (relevant goods) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods (designated goods) originating in:
(a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or
(b) … ;
if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.
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6
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