Croissant King Pty Limited v Elbio Luis Perez

[2003] ATMO 57

TRADE MARKS ACT 1995

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

Re:Opposition by Croissant King Pty Limited to registration of trade mark application 845005(30) - KING OF CROISSANT ENJOY THE QUALITY and device- filed in the name of Elbio Luis Perez.

Date of Decision:

29 September 2003

Delegate:

Jock McDonagh

Representation:

Opponent: Michelle Howe of Davies Collison Cave

Applicant - ( no appearance)

Decision:

Application refused - ss.44 & 60 ground allowed.

Costs awarded to the Opponent.

Background

1. The applicant, Elbio Luis Perez, filed trade mark application number 845005 on 4 August 2000 (“the relevant date”), for the trade mark king of croissant enjoy the quality, in respect of the following goods:

   Class 30: Bakery products including croissants

The mark is displayed below:

1. Acceptance of the application was advertised in the Official Journal of Trade Marks on 4 October 2001.  On 4 January 2002 the opponent’s - Croissant King Pty Limited -attorneys, Davies Collison Cave of Sydney filed a notice of opposition was on its behalf.

2. Evidence was duly filed and served by both parties. The hearing was in Canberra on 27 June 2003 before me as a delegate of the Registrar of Trade Marks. Ms Michelle Howe of Davies Collison Cave represented the opponent. The applicant was not represented at the hearing and did not appear in person.

3. Eleven grounds of opposition were nominated in the Notice of Opposition. Two were relied on at the hearing, being sections 44 and 60 of the Trade Marks Act 1995 (“the Act”).

The Evidence

1. The evidence consists of the following statutory declarations.

Date	Declarant	Description	Annexes
Evidence	in Support
20.06.2002	Peter Gordon STEWART	Director, J.L. Stewart & Sons Pty Ltd
17.06.2002	Leslie SHER	Director, Croissant King Pty Ltd	LS-1 to LS-7
28.06.02	Grant Raymond OSBORNE	Director, Topline Foods
4.07.02	Mary Roslyn DAVIES	Director, Bake Rite Distributors
26.06.02	Kevin John PEPPER	Owner, K & R Pepper Distributors
22.06.02	Anthony Desmond HIGGINSON	Manager, Poultry Master NT
25.07.02	Fiona Margaret SHAVIKIN	Director, North Qld Wholesalers Pty Ltd
27.08.02	Phillip Martin GUMLEY	Director, Southern Foodservice Pty Ltd
4.09.02	Marco DEMIRTEL	Manager, CDS Gourmet Foods
Evidence in	Answer
10.01.03	Elbio Luis PEREZ	Director, King of Croissant Pty Ltd	KC-1 to KC-18
Evidence in	Reply
8.04.03	Ian LASKER	Director, Croissant King Pty Ltd	IL-1 & IL-2

1. The Sher declaration provides a history of the opponent since its purchase of a patisserie in French’s Forest NSW in 1989. The opponent initially traded as Croissants King, but in 1995 changed its business name to Croissant King Pty Limited. Mr Sher states that since 1989, the opponent has used the words croissant king and the following device as trade marks:

1. The Sher declaration states that in 1996 croissant king scoop n’ bake was registered (number 716353) in Class 30 for bakery products including croissants.

2. The Sher declaration provides details of the sales figures of the opponent from October 1989 to may 2002, along with details of advertising and promotions, examples of use of the opponent’s marks, and an expression of belief that the use of the applicant’s mark would be likely to cause deception and confusion amongst consumers of the applicant’s and opponent’s products.

3. The remaining evidence in support of the opposition comprises declarations by various distributors of the opponent’s goods to the effect that they would assume that the applicant’s mark was related to the opponent’s goods.

4. In his declaration, the director of the applicant Mr Perez provides a history of his company. It commenced operations as a coffee house/snack bar in 1984 and traded as “Gillies Street Coffee House/Snack Bar”. In 1987 the applicant moved premises, and began trading as “King of Croissant”, which was registered as a business name in 1988. Following the move of premises, the applicant commenced operations as a wholesale bakery. The applicant appears to trade in fresh pastries, whereas the opponent trades in frozen unbaked pastries.

5. The Perez declaration also contains discussion regarding his dealings with the opponent in 2001/2002.

6. In evidence in reply, Ian Lasker, a director of the opponent, provides an instance of confusion between the competing companies in 1995 or 1996, further details of the interaction between the applicant and opponent in 2001. Mr Lasker also provides a letter from the predecessor in title of the opponent as to its business name between 1982 and 1989.

Grounds Considered

Ground 1 - s44: Identical etc. Trade marks

1. So far as is relevant, section 44 states:

Identical etc. trade marks

44.(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) it 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.

1. The opponent cited its own trade mark 716353 - croissant king scoop n’ bake -having a priority date of 29 August 1996, which is earlier than the applicant's priority date. The registration is for Class 30 goods, being bakery products in this class; premixed food in this class for making croissants, muffins, cakes, bread, pastries and confectionery.

2. The matters for determination are:

   (a)whether the applicant's mark is deceptively similar to the registered trade mark cited by the opponent in that it so nearly resembles that mark that it is likely to deceive or cause confusion (Section 10); and

   (b)whether the trade mark cited by the opponent is registered in respect of similar goods; that is, the same goods or goods of the same description.

3. I have considered the relevant principles to be considered for deceptive similarity as recently restated by Bennett J in Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited & Anor [2003] FCA 901, paragraphs 72 to 80, in particular:

• The two words are considered by look and by sound but not side by side. An attempt must be made to estimate the effect or impression produced on and retained by customers and potential customers.

• What is to be compared with one mark is the impression based on recollection of the other mark that persons of ordinary intelligence and memory would.

• Consideration is given to the goods to which the marks are to be applied and the nature of the customer, as well as all the surrounding circumstances when the marks are used in a normal way as a trade mark.

• In considering the look and sound of the marks, the goods, the customers and all the surrounding circumstances, it is also important to look at the whole of the marks.

1. Considering the competing marks in light of the principles, I consider that the elements of the marks that persons of ordinary intelligence and memory would recall are king of croissant and croissant king. The remaining elements would have little distinguishing value.

2. I have taken into consideration the clear similarities between the competing marks, the similarities of the goods to be provided under the marks and the likely manner in which the goods will be purchased. I note the opinions of relevant traders as to the likelihood of confusion between the marks.

3. I am satisfied that the opponent has clearly established that there is very real likelihood that consumers seeing the applicant’s trade mark and the opponent’s trade mark in use on the same goods would be caused to wonder whether those goods come from the same source. I find that the applicant’s mark is deceptively similar to the opponent’s registration 716353.

4. The goods are clearly similar goods.

5. I find that this ground of opposition has been established.

Ground 2: s60 Trade mark similar to trade mark that has acquired a reputation in Australia

1. Section 60 of the Act provides:

   60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

   Note 2:  For priority date see section 12.

2. Accordingly, to satisfy section 60, the opponent has the burden of establishing the following elements:

1. a pre-existing trade mark;

2. substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

3. the acquisition of a reputation in Australia by the pre-existing trade mark; and

4. a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

1. The pre-existing trade mark relied on for this ground is the device shown at paragraph 6, above. I am satisfied that the evidence establishes that the opponent’s device mark (“croissant king device”) has been used as a trade mark since 1989 and continuously up to the relevant date.

2. I have considered the same principles for deceptive similarity as for the section 44 ground. For this ground, I consider the essential features of the competing marks to be the words king of croissant and croissant king, and the croissant and crown elements of both devices. The applicant’s device has the crown surmounting the croissant while the croissant king device has the croissant above the crown. The crown elements of both marks are essentially identical.

3. For the reasons set out under the section 44 ground, above, I am satisfied that the word elements are likely to cause people to wonder whether the goods come from the same source. The crown and croissant device reinforces this perception. I am satisfied that the competing marks are deceptively similar.

4. The opponent has produced convincing evidence of the reputation in Australia of its trade marks. I am satisfied that a substantial number of persons would be aware of the opponent’s marks’ reputation and would be likely to be at risk of deception or confusion.

5. I am satisfied that this ground of opposition has been established.

Decision

1. The opposition has been successful. I am satisfied that the opponent has clearly established that the applicant’s trade mark should not be registered.

2. Pursuant to section 55 of the Act, I refuse to register trade mark application number 845005.

Costs

1. The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

29 September 2003