Cork and Chroma Pty Ltd v Cocktails & Canvas Asset Corp Pty Ltd

[2019] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by Cork and Chroma Pty Ltd to registration of trade mark application no. 1813219 (41) – Cork and Canvas - in the name of Cocktails & Canvas Asset Corp Pty Ltd

Delegate:	Bianca Irgang
Representation:	Opponent: Andrew Musgrave of counsel instructed by Michael Buck IP Applicant: Dean McNamara  instructed by Logie-Smith Lanyon Lawyers
Decision:	2019 ATMO 61 Trade Marks Act 1995 - Section 52 opposition: sections 42(b), 60 and 62A pressed at hearing – Section 60 established for all services.

Background

1. Cocktails & Canvas Asset Corp Pty Ltd (‘the applicant’), filed trade mark application number 1813219 on 2 December 2016 in class 41 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  Cork and Canvas (‘the Trade Mark’)

   Trade mark application no:    1813219            

   Filing Date:  2 December 2016

   Specification:  Class 41: Advisory services relating to entertainment; Arranging of entertainment; Entertainment; Event management services (organisation of educational, entertainment, sporting or cultural events); Hospitality services (entertainment); Management of entertainment events; Management of entertainment services; Organising of entertainment; Providing facilities for entertainment; Provision of live entertainment

2. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 27 April 2017. Subsequently Cork and Chroma Pty Ltd (‘the opponent’) filed its Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. 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 Mark Regulations 1995 (‘the Regulations’).        

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 21 January 2019. The applicant was represented by Dean McNamara instructed by Logie-Smith Lanyon Lawyers. The opponent was represented by Andrew Musgrave of counsel instructed by Michael Buck IP.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) however, only those grounds of opposition under sections 42(b), 60 and 62A were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

6. The evidence in this matter consists of the following declarations:

   Evidence in Support

   ·Hillary Stein (‘Stein 1’) dated 10 October 2017 with Exhibits HS-1 to HS-29

   ·Chloe Newby (‘Newby’) dated 11 October 2017

   Evidence in Answer

   ·Melinda Janiszewski (‘Janiszewski’) dated 16 January 2018 with Exhibits MJ-1 to MJ-14

   Evidence in Reply

   ·Hillary Stein (‘Stein 2’) dated 7 March 2018 with Exhibits HS-A to HS-C

   Discussion

   Section 60 - Reputation in Australia

7. Section 60 of the Act provides:

   60 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.

8. To establish the ground of opposition under section 60 the opponent relies on its use of and reputation in the unregistered trade marks “CORK & CHROMA” and “CORK AND CHROMA” (‘opponent’s trade marks’) which it asserts it coined in July 2013 and has used since August 2013.

9. Section 60 does not require that the services upon which the opponent uses its trade marks be of a specified standard of similarity with the services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that services which the applicant and opponent use their respective trade marks on are the same being ‘paint and sip’ services. These ‘paint and sip’ services are where customers pay a fee in order to paint under the guidance of an artist while drinking predominantly alcoholic beverages.

10. It is for me to determine whether the opponent has established that before 2 December 2016  the opponent’s trade marks were recognised by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of its trade mark would be likely to cause the public confusion.

11. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: [4]

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[5]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [4] [1999] FCA 1020 [50]

    [5] [1973] HCA 43; (1973) 129 CLR 353, 362

12. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [6] [2000] FCA 1335 [81]

13. Stein 1 states that the opponent was founded in 2013 and has offered ‘paint and sip’ art classes since August 2013. ASIC records show registration of the opponent on 15 August 2013. Stein 1 asserts that the paint and sip classes are offered under the opponent’s trade marks and that the opponent’s business has expanded from Queensland into New South Wales and Victoria.

14. Stein 1 establishes:

    ·The opponent has used its trade marks in Australia since at least August 2013.

    ·The opponent registered the domain name in October 2013[7] and has used its trade marks continuously on its website since that date[8].

    ·In August 2013 the opponent established an Instagram® account and started promoting its services under its trade marks which has a moderate number of followers[9].

    ·In 2016 the opponent commenced using Facebook® to advertise their services under its trade mark in Sydney and has a moderate number of followers[10].

    ·Since October 2013 the opponent has engaged in print advertising with flyers being printed and posters being displayed prominently through the cities it offers its services in including Brisbane, Sydney and Adelaide[11].

    ·In October 2013 and in February 2014 and April 2014 the opponent appeared on Radio and Television to promote its services under its trade marks[12].

    ·The opponent has promoted its services at numerous shows and exhibitions such as The Vintage Bridal Fair and pop-up D.I.Y Till You Die exhibition where they held pop-up courses and/or stalls with demonstrations on how the services are provided[13].

    ·Since November 2013 the opponent has received positive reviews and numerous write ups in a number of newspapers and magazines including; The Sydney Morning Herald, Style Magazine, The Courier Mail, The Frankie Magazine and The Weekend Edition[14].

    ·Continuously since 2013 the opponent has been the recipient of positive blog and online reviews from various reviewers including The Good Food blog, Queensland.com, Weekend Notes, The Australian, The Australian Traveler, he Mamamia, The Courier Mail online and The Queensland Business Insider[15].

    ·The opponent has engaged with the charities Scar Stories in August 2015 and Refugee Awareness Day in June 2016.

    ·The opponent’s annual revenue and advertising expenditure has grown considerably over the years. The annual revenue for the opponent is now substantial considering the specialised nature of the services offered.

    [7] Exhibit HS-2 accompanying Stein 1

    [8] Exhibit HS-3 accompanying Stein 1

    [9] Exhibit HS-6 accompanying Stein 1

    [10] Exhibit HS-5 accompanying Stein 1

    [11] Exhibits HS-10 and HS-11 accompanying Stein 1

    [12] Exhibit HS-13 accompanying Stein 1

    [13] Exhibit HS-14 accompanying Stein 1

    [14] Exhibit HS-16 accompanying Stein 1

    [15] Exhibits HS-17 and HS-18 accompanying Stein 1

15. Given all of the above, I am satisfied that the opponent’s trade marks had acquired a significant reputation in the niche market for ‘paint and sip’ services within Australia before the priority date of the Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark by the applicant would be likely to deceive or cause confusion.

16. Overall I consider that, given the reputation acquired by the opponent’s trade marks, a significant number of consumers would at the very least experience a reasonable doubt[16] as to the existence of some sort of connection between the opponent’s trade marks and the Trade Mark if it were used to the extent of all the services listed in the opposed application. In considering the similarities between opponent’s trade mark and the Trade Mark it becomes clear that the respective trade marks share similarities.

    [16] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

Opponent’s trade mark

Trade Mark

Cork and Chroma

Cork & Chroma

Cork and Canvas

1. The trade marks all contain three words and the first two words of all the trade marks are “CORK AND” followed by a third word which is arguably descriptive of art materials being Canvas or Chroma (a word describing colour intensity). The impression of the trade marks is very similar: they are all three word slogans using alliteration in the first and third word, the third word is related to art and it commences with the letter ‘C’. A consumer attempting to recall any of the respective trade marks is likely to more strongly focus on the beginning of the trade mark being the word ‘CORK’ and if attempting to locate the services of one of the traders without fully recalling the trade mark would likely type ‘CORK’ into Google® followed by the word ‘AND’ to come up with both traders offering identical services.

2. The applicant has argued that :

   …We agree that the residual impression that the two trade marks leave on an ordinary person is important to consider. We respectfully submit that ‘chroma’ is an unusual word and would typically have the ordinary person running for a dictionary to discover the meaning of the word. The trade marks do not sound or look alike, there is the unusual word chroma and the specialised nature of the services that need to be considered.

   We respectfully submit that the factors listed in the above paragraph need to be considered in determining whether the marks are similar or not. We are not talking about a detailed exercise referred to by Counsel for the Opponent in paragraph 51 of the outline. It is important to remember that, as found in the well-known House of Lords “Rysta” decision – Lord Greene MR at page 105 of Aristoc Ltd v Rysta Ltd [1945] AC 68, the doctrine of imperfect recollection should not be carried too far:

   The doctrine of imperfect recollection must not be carried too far. In considering its application not only must the class of person likely to be affected be considered, but no more than ordinary possibilities of bad elocution, careless hearing or defective memory out to be assumed. 

3. I agree with the applicant that imperfect recollection must not be carried too far. However, the formula of the applicant in adopting a three word alliterative slogan commencing with the same two words as the opponent’s trade marks and applying that trade mark to the same services as those provided by the opponent is likely to lead consumers to wonder if the applicant and the opponent are related or affiliated with each other, particularly since the opponent has demonstrated growth across three states of Australia in a highly specialised marketplace. I turn to Kodak (Australasia) Pty Ltd’s Application[17] which noted, “the well-known trade practice of traders in adopting a certain word as a trade mark and constructing other trade marks for distinguishing characteristics of their goods by using such word as a basis and adding thereto.”

   [17] (1936) 6 AOJP 1724

4. I find that the similarities between the respective trade marks taken together with the opponent’s demonstrated reputation in Australia and the services offered by the respective parties being the same brings about a tangible likelihood of confusion taking place in the marketplace.

5. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all of the applicant’s services. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

   Decision

6. Section 55 of the Act 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:          Forlimitationssee section 6.

7. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly I refuse to register trade mark application no. 1813219.

   Costs

8. 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 applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Oppositions and Hearings

   6 May 2019