Corporativo Internacional Mexicano, S De R.L. De C.V v Intercontinental Great Brands LLC (Formerly Kraft Foods Global Brands LLC)

[2013] ATMO 80

TRADE MARKS ACT 1995

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

Re:Opposition by Corporativo Internacional Mexicano, S. De R.L. De C.V. to registration of trade mark application 1437513(30) - OREO - in the name of Intercontinental Great Brands LLC (formerly Kraft Foods Global brands LLC).

Delegate:

Claudia Murray

Representation:

Opponent: Ms Alison McGinn, Senior Associate of Banki Haddock Fiora, Sydney, provided written submissions.

Applicant: Ms Anne Makrigiorgos, Principal of Griffith Hack, Melbourne provided written submissions.

Decision:

2013 ATMO 80

Section 52 opposition – sections 41 and 59 - opposition unsuccessful – application to proceed to registration - costs awarded against opponent.

Background

1.     Trade mark application number 1437513 was filed by Kraft Foods Global brands LLC (which recently changed its name to Intercontinental Great Brands LLC) (‘the applicant’) on 19 July 2011, for registration of the trade mark:

2.     The application covers the following goods in class 30 of the Nice Classification of Goods and Services:

Bakery products, biscuits, cookies, crackers, cakes, brownies, slices; cake, brownie, biscuit, cookie, cracker and slice mixes; bread; pastry; cereals; flour and preparations made from cereals; snack foods; confectionery; ice cream; edible ices; ice cream cones; dairy desserts and yoghurt; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices.

3.     No grounds for rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination. The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 24 November 2011.

4.     Corporativo Internacional Mexicano, S. De R.L. De C.V. (‘the opponent’) filed notice of opposition to registration on 24 February 2012. Fourteen grounds of opposition were listed in the notice.

5.     Evidence in support and answer was duly served and filed. On 1 May 2013, the opponent requested a hearing on the opposition. On 19 July the applicant indicated that it too wished to be heard. A hearing was scheduled for 6 August 2013 in Canberra, before me, as a delegate of the Registrar of Trade Marks. However, the parties decided, upon exchange of their written submissions before the hearing that neither would appear on the day. Ms Alison McGinn, Senior Associate of Banki Haddock Fiora, Sydney, provided written submissions for the opponent and Ms Anne Makrigiorgos, Principal of Griffith Hack, Melbourne provided written submissions for the applicant.

Evidence

6.     The evidence in relation to this opposition comprises:

Evidence in Support

ØStatutory declaration of Natasha Trajkovska, with Exhibits NT-1 to NT-21, dated 18 May 2012.

ØStatutory declaration of James William Cowan, with Exhibit JWC-1, dated 23 April 2012.

ØStatutory declaration of Rupert Henry Gillies, with Exhibit RHG-1, dated 6 April 2012.

ØStatutory declaration of Sergio Manuel Barragan Arrieta, with Exhibit SMBA-1, dated 2 May 2012.

Evidence in Answer

ØStatutory declaration of Mary A. Carragher, with Annexures MAC-1 to MAC-12, dated 19 December 2012.

7.     Mr Sergio Arrieta is the opponent’s Intellectual Property Legal Counsel. The opponent is a Mexican corporation and is part of a group of companies known as ‘Gamesa’. Gamesa manufactures a range of biscuit products under various brands in Central and South America, as well as the United States. Exhibit SMBA-1 to the Arrietta declaration contains an earlier declaration also made by Mr Arrieta, intended to support a similar opposition by his company to New Zealand Trade Mark Application No. 846021. That trade mark application was for an identical trade mark in relation to identical goods. Subsequent to the applicant having been denied an extension of time within which to file its evidence in answer to the opposition[1], the New Zealand application has now been withdrawn.

[1] Kraft Foods Global Brands LLC v Corporativo Internacional Mexicano, S DE RL DE CV [2012] NZIPOTM 39 (13 November 2012).

8.     Mr Arrieta’s earlier declaration explains the opponent’s perspective upon the opposed trade mark, which it sees as an attempt to gain a monopoly in a generic biscuit shape and surface decoration, with a view to preventing competitors from selling their own biscuits with a similar shape or decoration. Indeed, much of the opponent’s evidence features photographs of round, (mostly) chocolate biscuits, (some bearing more arguably similar designs to the opposed trade mark than others) already on the market in Australia, New Zealand and Mexico. Mr Arrieta argues that the opposed trade mark is in fact a ‘shape mark’ and that it should not be registered at all. However, if it is to be registered, it should be subject to a disclaimer similar to that made in relation to the applicant’s United States trade mark application, no. 77959229. A representation of that trade mark, which is quite different from the opposed trade mark, is shown below:

9.     The disclaimer in relation to that trade mark reads: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "COOKIE" AND THE PICTORIAL REPRESENTATION OF A SANDWICH COOKIE APART FROM THE MARK AS SHOWN.[2]

[2] Statutory declaration of Sergio Manuel Barragan Arrieta, dated 2 May 2012, Exhibit SMBA-1, paras 1 to 12.

10.   Ms Carragher’s declaration describes the history of her company and its predecessor’s use of the trade mark OREO and the opposed trade mark. She explains:

The trade mark OREO was first used in the USA in 1912 in respect of biscuits and cookies. In 1912, the OREO trade mark was used on a cookie that had a distinctive design. This design was updated in 1923 and again in 1931 before the current unique design of the OREO cookie was decided upon in 1952. This design has remained unchanged for almost 60 years. Today, the OREO cookie design is instantly recognisable and is the world's biggest selling cookie…

The trade mark is a representation of the OREO cookie design which was adopted in 1952, but is separately identifiable from, and exists in its own right quite apart from, the cookie itself. The use of [‘representation of the OREO cookie design’] by [the applicant] is use of [representation of the OREO cookie design] as a trade mark…

[The applicant] is the owner in Australia of 4 trade mark registrations containing or consisting of the trade mark OREO in respect of a range of food products in Class 30…

[The applicant] is the owner worldwide of numerous registrations for the [representation of the OREO cookie design] trade mark in respect of a range of goods in Class 30 including in particular cookies and biscuits. The registrations are in the following countries and regions: Armenia, Afghanistan, Bahrain, Brazil, Brunei Darussalam, Benelux, Cambodia, Canada, China, Croatia, Costa Rica, Dominican Republic, El Salvador, Egypt, Estonia, the European Community, Honduras, Iceland, India, Indonesia, Jamaica, Jordan, Kazakhstan, Lebanon, Liechtenstein, Malaysia, Monaco, New Zealand, Oman, Panama, Portugal, Singapore, Slovak Republic, Serbia, Switzerland, Ukraine, USA, Vietnam and Yemen…

In Australia, cookies and biscuits bearing the trade mark have been available since at least 1998. Since 1998, [the applicant] has extensively sold and advertised cookies and biscuits branded with the [representation of the OREO cookie design] trade mark throughout Australia…

The [representation of the OREO cookie design] trade mark has been extensively advertised throughout the world including Australia.[3]

[3] Statutory declaration of Mary A. Carragher, dated 19 December 2012, paras 1-10;

11.   Ms Carragher explains the history of the disclaimer applied to the US trade mark pictured from the opponent’s evidence above as being related to the applicant’s use of the word cookie and the device of a cookie, per se. She points out that the applicant also has a long-standing US registration (TM No. 1901838, registered from 1994) for the opposed trade mark. Ms Carragher provides confidential worldwide and also specifically Australian sales and advertising figures for cookies and biscuits sold under the trade mark which are more than considerable, especially given the relatively low individual cost of a packet of chocolate biscuits.[4]

[4] Ibid, paras 11-18.

Grounds of opposition

12.   The onus is upon the opponent to establish one or more of its grounds of opposition. The Federal Court has referred to the standard of proof required in terms of a ‘balance of probabilities’.[5] The opponent indicated in its written submissions that it wished to press only the grounds under sections 41 and 59 nominated in its notice of opposition. I will discuss those grounds below, noting here for completeness that the other grounds listed in the notice of opposition have not been made out.

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

[5] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011) per Stone J at [11] to [12].

The legislation

13. Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. The section relevantly[6] provides:

[6] The Intellectual Property Laws Amendment (Raising the Bar) Act2012 came into full effect on 15 April 2013. The Act repealed section 41 of the Trade Marks Act 1995 and substituted it with a new section 41. However, the repealed provisions continue to apply here, because the subject application was filed prior to 15 April 2013.

(2)      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 (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.

(3)      In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account 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.

(4)      Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)      If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)         the Registrar is to consider whether, because of the combined effect of the following:

(i)           the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

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

(iii)         any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)         if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)          if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Note 1:            For goods of a person and services of a person see section 6.

Note 2:            Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6)      If the Registrar finds that 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, the following provisions apply:

(a)         if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)         in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

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.

Note 2:            Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

14. Subsections 41(5) and (6) of the Act focus upon evidence of trade mark use. However, if a trade mark is determined to be inherently adapted to distinguish an applicant’s goods or services, then it is acceptable for registration under subsection 41(3), without reference to the later subsections of section 41.

15. Section 17 – ‘What is a trade mark’ - specifies:

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note: For sign see section 6

16. Section 6 – ‘Definitions’ - defines ‘sign’ as:

sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

17. Section 7(4) – ‘Use of trade mark’ - defines use of a trade mark in relation to goods as:

…use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).

Submissions

18. Ms McGinn summarised the opponent’s submissions in relation to section 41 as follows:

a) that the Opposed Image is not a “sign” as defined in the Act;

b)   alternatively, that the Opposed Image is not capable of functioning as a trade mark;

c)    the graphical representation is of the OREO cookie design but the Opposed Image is only used as part of the product itself and not as a trade mark to denote the trade origin of the Applicant’s goods;

d) alternatively, that with respect to the section 41 ground of opposition, the Opposed Image is a sign (if found to be a sign) that has no inherent adaptation to distinguish the designated goods, and the provisions of subsection 41(6) apply;

e) with respect to the section 41 ground of opposition, the evidence in the proceedings, including the Applicant’s alleged use of the Opposed Image as a trade mark:

i.does not include use of the Opposed Image; and/or

ii.does not include use of the Opposed Image as a trade mark; and/or

iii.does not establish that the Opposed Image had become capable of distinguishing the Applicant’s goods in Australia.

19.   Ms Makrigiorgos, for the applicant, responded:

a) that the [representation of the OREO cookie design] trade mark is a “sign” used on or in relation to goods as defined in s. 7(4) of the Trade Marks Act 1995 (‘the Act’);

b)   that the [representation of the OREO cookie design] trade mark is capable of functioning as a trade mark;

c) the [representation of the OREO cookie design] trade mark is used as a trade mark to denote the trade origin of the Applicant’s designated goods as defined in s. 17 of the Act;

d) the [representation of the OREO cookie design] trade mark is a sign that has inherent adaptation to distinguish the designated goods under s. 41(3) and was correctly accepted;

e) To the extent that it is necessary, the evidence in the proceedings does show use of the trade mark and if required, does establish that the [representation of the OREO cookie design] trade mark has become capable of distinguishing the Applicant’s designated goods in Australia under s. 41(5) on the basis of the combined effect of limited inherent capacity to distinguish coupled with the evidence of extensive use and if required does establish that the trade mark does in fact distinguish the Applicant’s designated goods in Australia under s. 41(6).

Discussion

20. There are some interesting aspects to the opponent’s arguments under section 41, about the true nature of the opposed trade mark. The opponent’s position is that the trade mark is in fact a ‘quasi shape mark’ and, being merely a ‘moulded design feature of a biscuit’, ‘a decorative and functional element of the goods themselves’, the opposed trade mark does not even qualify as any sort of sign in terms of section 6 of the Act. Further, it has not been properly ‘graphically represented’, as it is not accompanied by the kind of endorsement required (under regulation 4.3(7)) in respect of ‘non-traditional’ trade marks, such as shape trade marks. In the alternative, the opponent argues that, even if it is found to be a sign, the opposed trade mark lacks any capacity to distinguish the applicant’s goods, and that the applicant’s evidence does not demonstrate that it has become distinctive of the applicant’s goods through use, or even that it has been used as a trade mark at all. The opponent believes the opposed trade mark is in the category described in the explanatory note to subsection 41(6), and envisaged by Jacob J in British Sugar PLC v James Robertson & Sons Ltd when he said:

The phrase [‘devoid of any distinctive character’] requires consideration of the mark on its own assuming no use. It is the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark.[7]

[7] [1996] RPC 281 at 306 in relation to s. 3 (1) (b) of the Trade Marks Act 1994 (U.K).

21.   The opponent itself quoted from the Full Federal Court in Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited:

…merely to produce and deal in goods having the shape, being a functional shape, of something depicted by a trade mark…is not to engage in a "use" of the mark "upon, or in physical or other relation to, the goods" within s 7(4), or to "use" it "in relation to the goods" within s 20(1). "Use" and "use", in those contexts, convey the idea of employing the mark, (first) as something that can be "upon" or serve in a "relation" to the goods, (and secondly) so as to fulfil a purpose, being the purpose of conveying information about their commercial origin. The mark is added, as something distinct from the goods. It may be closely bound up with the goods, as when it is written upon them, or stamped into them, or moulded onto them (see TheCoca-Cola Company v All-Fect Distributors Limited trading as Millers Distributing Company (2000) AIPC 91-534), or, in the case of a liquid, it may be sold in a container so formed as to constitute at once both container and mark. But in none of these cases is the mark devoid of a separate identity from that of the goods. The alternative ways of using a trade mark in relation to goods do not include simply using the goods themselves as the trade mark. The reason is plain: it is to be assumed that goods in the market are useful, and if they are useful, other traders may legitimately wish to produce similar goods (unless, of course, there are, for the time being, subsisting patent, design or other rights to prevent them from doing so), and it follows that a mark consisting of nothing more than the goods themselves could not distinguish their commercial origin, which is the function of a mark: Johnson & Johnson at 342, 348-349. As Jacob J said of a "picture mark" in Philips Electronics NV v Remington Consumer Products at 292:

"A picture of an article is equivalent to a description of it - both convey information. If the picture is simply of an artefact which traders might legitimately wish to manufacture then to my mind it is just like the common word for it and, like the word for it, incapable of distinguishing."[8]

[8] [2000] FCA 876, para 12.

22.   The opponent’s arguments may have gained more traction, were the opposed trade mark indeed a simple three-dimensional representation of a biscuit with minimal ‘decorative embossing’, ‘an artefact which traders might legitimately wish to manufacture’, along the lines of many of the biscuits featured in its evidence,[9] for example:

[9] See Statutory declaration of Natasha Trajkovska, dated 18 May 2012, Exhibits NT1 to NT-14.

23.   In fact the application is clearly in respect of a two-dimensional word and device trade mark, a manifestly ‘traditional’ kind of trade mark. It is, as Ms Makrigiorgos observed:

…a drawing which is a combination of a word and device. The trade mark is not a 3 dimensional representation or shape of a biscuit. It is a 2 dimensional drawing. The sign is something other than the good themselves. The inherent nature of the goods is a biscuit and the trade mark is something which can appear on a biscuit as it can appear on packaging.

24.   The evidence shows that this is precisely how the applicant uses the opposed trade mark. It is applied to its biscuits, photographs of which are then reproduced on its packaging, and in various other forms of advertising. In particular, the distinctive word OREO is clearly visible in either case, but the device as a whole, containing the word, is essentially distinguishable wherever the applicant chooses to represent it. The opposed trade mark is cleverly designed so that every biscuit the applicant produces announces its origin, in or out of the packet. I am satisfied that the opposed word and device trade mark, is a trade mark within the terms of the Act, that it has a separate identity from the goods to which it is applied, and that the applicant’s use of it conforms with section 7.

25.   Further, the opponent has done nothing to persuade me that this is not a trade mark inherently adapted to distinguish the applicant’s goods from those of other traders. The opponent has shown by its evidence that there are other traders, in this and other jurisdictions, who feel the need to use very similar designs to the opposed trade mark on their chocolate cream biscuits, even to the extent of applying alternative similar words, such as ‘ORIO’[10] to the centres of those decorated biscuits. However, I do not accept that these instances result from traders behaving according to the accepted tests, ‘being actuated only by proper motives’ and ‘wishing to make honest use of words forming part of the common heritage, for the sake of signification they ordinarily possess’.[11] Further, I believe the public interest here lies in discouraging such practices. If the applicant’s claim that its OREO and device branded cookie is ‘the world’s best-selling cookie’ is to be believed, those practices have the potential to deceive and confuse would-be consumers of genuine OREO biscuits everywhere.

[10] Statutory declaration of Natasha Trajkovska, dated 18 May 2012, Exhibit NT-6.

[11] Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 at 513.

26. There is no need for me to consider the applicant’s considerable evidence further, in terms of subsections 41(5) or (6), as the opponent has failed to discharge the initial onus upon it in terms of subsection 41(3). The opponent has not made out its ground under section 41.

Section 59 - Applicant not intending to use trade mark

The legislation

27. Section 59 deals with an applicant’s intention to use its trade mark. It provides:

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)      to use, or authorise the use of, the trade mark in Australia; or

(b)      to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:   For applicant see section 6.

Submissions

28. Ms McGinn’s summary of the opponent’s submissions under section 59 was:

·the applicant does not intend to use, or authorise the use of, the Opposed Image as a trade mark in relation to the goods of the application, because the Opposed Image is not a sign and is not capable of functioning as a trade mark.

·with respect to the section 59 ground of opposition, including the evidence in the proceedings of the Applicant’s alleged use of the Opposed Image as a trade mark, [the evidence]:

odoes not amount to use of the Opposed Image; and/or

odoes not amount to use of the Opposed Image as a trade mark; and/or

oif the Opposed Image is, or may be registered, as a trade mark it would be vulnerable to removal.

29.   In response, Ms Makrigiorgos asserted that the opponent’s arguments that the opposed trade mark was not capable of functioning as a trade mark, and that its use by the applicant was not trade mark use were untenable. She added that the evidence shows irrefutably that the applicant not only had an intention to use the trade mark in Australia at the time it was filed, but that it has in fact used that trade mark for many years.

Discussion

30. I have already dismissed the opponent’s arguments in relation to sections 17, 6, and 7 above, in terms of section 41. Having failed upon these points, the opponent’s case that the applicant had no intention to use its trade mark at the time of filing its application also fails, and the applicant therefore has no case to answer in terms of section 59. However, had I found that in fact it did have a case to answer, I would also have found that the applicant’s subsequent very significant use of its trade mark, as put into evidence, had certainly thrown light onto the existence of its intentions at the time of filing.[12]

[12] Suyen Corporation v Americana International Ltd [2010] FCA 638; (2010) 187 FCR 169; (2010) 87 IPR 262; [2010] AIPC 92-389, at [207] and [211].

Decision

31. Subsection 55(1) of the Act provides:

(1)      Unless the proceedings are discontinued or dismissed, 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.

32.   I find that neither of the grounds relied on by the opponent has been established. The trade mark may proceed to registration after one month from the date of this decision has expired. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

33. The applicant has requested its costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark opponent.

Claudia Murray

Hearing Officer

Trade Marks Hearings

17 October 2013