Crumble Pty Ltd v Anecdote Official Pty Ltd

[2025] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Crumble Pty Ltd to registration of trade mark application number 2358548 (classes 25 & 29) – Pistachio Papi (fig) - in the name of Anecdote Official Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Simon Kneebone and Vina Ngo of Banki Haddock Fiora

Applicant: Melissa Marcus of Counsel instructed by Natalie Williams of Switch Legal Pty Ltd

Decision:

2025 ATMO 79

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] brought by Crumble Pty Ltd (‘Opponent’) to registration of the trade mark detailed below in the name of Ancedote Official Pty Ltd (‘Applicant’):

   Trade Mark:                (‘Trade Mark’)

   Number:2358548

   Filing Date:                1 June 2023 (‘Relevant Date’)

   Specification:            Class 25: Printed t-shirts

   Class 29: Food products made from nuts (collectively ‘Applicant’s              Goods’)

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of acceptance of the application for possible registration, the Opponent filed a Notice of Intention to Oppose the registration on 8 November 2023, followed by a Statement of Grounds and Particulars (‘SGP’) on 23 November 2023.  The Applicant filed a Notice of Intention to Defend on 11 December 2023.

3. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed Evidence in Support (‘EIS’) on 11 March 2024. The Applicant’s Evidence in Answer (‘EIA’) followed on 21 June 2024 and the Opponent’s Evidence in Reply (‘EIR’) on 23 August 2024.

4. Once the time for filing evidence had ended, the parties were able to request a hearing.  Both parties requested an oral hearing.  Prior to the hearing, each party filed a written summary of their submissions.  I heard this matter as a delegate of the Registrar of Trade Marks on 4 April 2025.  At the hearing, Simon Kneebone and Vina Ngo of Banki Haddock Fiora (observed by Pierre Issa and Georgina Somerville Glover of the Opponent) appeared for the Opponent.  Melissa Marcus of Counsel, instructed by Natalie Williams of Switch Legal Pty Ltd (and observed by Chris Sarpa, Patrick LaManna and Mark Abdelmalik of the Applicant), made oral submissions for the Applicant.  I make my decision based on the aforementioned materials and submissions of the parties.

   Grounds, onus and Relevant Date

5. The Opponent’s SGP nominates grounds of opposition under ss 42(b), 44, 60 and 62A.  The Opponent did not press the s 62A ground of opposition.

6. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard on the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

   and Edelman JJ).

7. The rights of the parties are to be determined at the Relevant Date being the priority date and filing date of the application.

   Evidence

8. The following evidence was filed in the proceedings:

9.     Declarant and Position	Date	Exhibits/Annexures
EIS
Georgina Somerville Glover, Head of Growth and Communications of the Opponent (‘Glover’)	4 March 2024	GS-1 to GS-36
EIA
Christopher Sarpa, Director and co-founder of the Applicant (‘Musa’)	21 June 2024	CS-1
EIR
Georgina Somerville Glover (‘Glover 2’)	21 August 2024	GS-1 to GS-29

EIS

1. Glover declares that the Opponent owns the following Australian registrations (‘Opponent’s Registrations’):

TM Number	Trade Mark (‘Opponent’s Marks’)	Filing Date	Goods
1516506	PEPE SAYA	26/9/2012	Class 29: Butter; butter preparations; buttermilk; buttermilk products; cream (dairy products); cheese; desserts made wholly or principally of dairy products
1516522	(‘Opponent’s Logo’)

1. The Opponent began selling butter wheels at a Sydney farmers market in 2010. In 2011, they developed the Opponent’s Logo and started selling butter with the Opponent’s Marks. The brand quickly expanded to retail stores and food services in other States. In 2012, the Opponent partnered with Qantas, serving their butter in First Class. Today, their butter is served on over 20 airlines including Qantas, American Airlines, Delta, Etihad, Emirates, and Cathay Pacific.

2. The Opponent's business continued to grow until the pandemic in 2020, during which they shifted focus to online sales. Previously, their online store received a small number of orders weekly, but sales surged during the pandemic. They also began exporting their products overseas to countries like Hong Kong, the USA, Singapore, Japan, Taiwan, UAE, Saudi Arabia, South Korea, Maldives, and Thailand. In 2020, the Opponent launched several advertising campaigns on TV, radio, buses, and billboards. The Opponent plans to continue their international expansion by launching a subsidiary in the USA and attending global exhibitions in 2023.

3. Glover declares that the Opponent’s Marks are used on butter, butter preparations, buttermilk, buttermilk products, dairy products, cheese, desserts, spreads, pastry, pancake mixes, confectionary, lemon curd, crème fraiche, cookie dough, popcorn, t-shirts, socks, tote bags, butter knives, jams, salted caramels, ghee, peanut butter and butter sheets for baking. The Opponent also has ongoing brand collaborations which offer goods such as candles, ceramics, nougat and other sweets, cookies and baked goods.  Collectively, these products are referred to as the Opponent’s Goods.

4. The Opponent’s Goods are primarily sold to customers in retail including the major supermarkets, e-commerce, food service, and hotel, restaurant and catering as well as at its website at (‘Opponent’s Website’). Extracts of the Opponent’s Website from 1 February 2011 are exhibited to Glover as well as extracts from third party websites showing the Opponent’s Goods available for sale before the Relevant Date.  Also exhibited are extracts from other third party websites who provide the Opponent’s butter as part of the provision of their restaurant and food services.

5. Glover provides confidential sales figures for the Opponent’s Goods for financial years (‘FY’) 2014 to 2022 and figures for online sales through the Opponent’s Website from July 2020 to June 2023.  Sales have grown significantly since 2014 and generate substantial revenue.

6. To initially promote their marks, the Opponent participated in events, brand collaborations, in-store merchandising, direct sales, public relations, digital advertising, and pop-up retail spaces. They also used their marks on invoices and purchase orders. Over the years, their promotion efforts expanded to include outdoor advertising (such as major road banners, buses, and posters across Australia), radio ads on networks like 2GB, 3AW, and Kiis FM, television ads on the Nine Network, digital advertising both domestically and internationally, international tradeshows, brand collaborations, and enhanced public relations. Additionally, the Opponent promotes its products on social media, with extracts from these accounts exhibited to Glover. A selection of third-party media articles referring to the Opponent’s marks is also exhibited.

7. Details of the Opponent’s advertising expenditure from FY 2014 to FY 2022 are provided. Glover also provides the Opponent’s spending on Google Ads, Facebook Ads, marketing agencies, the production of a TV commercial called ‘The Lazy Chef for International Market,’ their public relations consultant, and a national street poster campaign. Additionally, Glover outlines their 2021 advertising campaign called ‘The Round Butter’ and provides examples of the ads.

8. The Opponent’s collaborations with other businesses to promote its goods include an educational event with Dairy + Pastry for Australia’s top pastry chefs in 2014, creating a specific puff pastry with Sonoma Bakery and butterscotch rye cookie dough with Three Mills Bakery in 2021, a croissant gelato with Messina in November 2022, and hot cross buns with The Boathouse Group in March 2023. Examples of these collaborations are supplied.

9. Finally, Glover supplies copies unsolicited correspondence from third parties whom Glover claims were confused by use of the Trade Mark.

   EIA

10. Sarpa attests that the Applicant was established in around June 2022 to provide high quality Italian style pistachio nut spread (‘Applicant’s Product’), to Australian consumers.  The mark Pistachio Papi was chosen ‘to convey a message of confidence, seduction, passion, bold, Italian, romance, sexy’.

11. On 16 November 2022, the Applicant engaged William Truong of Foodie Design to design a character/logo for the proposed Pistachio Papi spread which symbolised a ‘sexy Italian 30+ man with a bad boy persona’ having a number of specific characteristics including ‘full of passion’, ‘seductive’, ‘provocative’ and ‘wears two earrings’.  As a result of this process, the device element of the Trade Mark was chosen (‘Applicant’s Logo’).

12. In May 2023, the Applicant launched the Applicant’s Product under the Trade Mark ‘selling out within the first 4 minutes of the product being available to the public’.  Sarpa provides the gross revenue generated by sales of the Applicant’s Product. 

13. Sarpa claims that the Applicant’s Product ‘is sold through hundreds of Australian retail stores and purchased by several bakeries, cafes, restaurants, and other food service venues for use in their food products’.  In addition, the Applicant’s Product is sold via its website at (‘Applicant’s Website’).  Consumers can also purchase t-shirts, aprons, candles and scented drops on the Applicant’s Website.

14. The Applicant has collaborated with other brands to promote the Trade Mark and Applicant’s Product including popular bakeries, HiSmile to create a co-branded pistachio flavoured toothpaste and Yo-Chi frozen yoghurt stores.  Examples and media about these collaborations are exhibited to Sarpa.

15. Sarpa comments on the differences between the Opponent’s butter and the Applicant’s Product, notes that a number of the Opponent’s Goods do not feature the Opponent’s Logo and criticises various aspects of the Opponent’s evidence.  Sarpa also notes differences in the Applicant’s logo and the Opponent’s Logo and points to other similar marks on the Trade Mark Register.

    EIR

16. Glover 2 declares that William Truong, designer of the Applicant’s Logo, was a graphic designer for the Opponent from September 2014 to April 2023.  Glover 2 attests that Mr Truong consulted the Opponent whilst designing the Applicant’s Logo on whether it was sufficiently different from the Opponent’s Logo and exhibits copies of the relevant text messages.  After seeing the Applicant’s Logo, the Opponent ceased working with Mr Truong.

17. In Glover 2, a comparison of the stockists of the Applicant’s Product and the Opponent’s Goods is supplied with Glover attesting that there is overlap in the retailers, wholesalers and distributors.

18. The Opponent addresses the Applicant’s claim that not all of the Opponent’s Goods bear the Opponent’s Logo.  A table of various goods other than butter which bear the Opponent’s Logo is provided with screenshots from the Opponent’s Website and a copy of its April 2024 catalogue showing the Opponent’s wholesale range of goods.  Glover 2 also provides confidential sales figures for various non-butter products for 2022 and/or 2023.

19. In conclusion, Glover 2 outlines similarities between the parties’ respective logos and attests to an additional instance of purported consumer confusion.

    Late evidence

20. On 4 September 2024, about 2 weeks after the Opponent’s EIR was filed, the Applicant lodged a further declaration of Christopher Sarpa made on 3 September 2024 with Exhibit CS-1 (‘Sarpa 2’).

21. The purpose of Sarpa 2 is to correct an error in Sarpa, where Mr. Sarpa claimed that Mr. Truong was the creator of the Opponent’s Logo. The Opponent’s EIA clarifies that Mr. Truong did not initially design the logo but was later hired as a graphic designer by the Opponent and subsequently worked with the logo.

22. Sarpa 2 states that Mr. Sarpa mistakenly believed Mr. Truong was the original designer of the Opponent’s Logo because the logo appeared in the work section of Mr. Truong’s website.

23. The Applicant has filed submissions in support of the consideration of Sarpa 2 arguing that the error was unintentional, the purpose of Sarpa 2 is solely to correct the error and there is no prejudice to the Opponent in admitting Sapra 2 as evidence.  The Opponent does not object to Sarpa 2 being considered and I am satisfied that it is appropriate for me to have regard to Sarpa 2.

    Discussion

    Section 44

24. Section 44 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.

25. To succeed on the s 44 ground of opposition, the Opponent must nominate a trade mark(s) that meets the following requirements:

    ·is in the name of a person other than the Applicant (‘first requirement’);

    ·has a priority date which is earlier than the Relevant Date (‘second requirement’);

    ·covers goods and/or services which are either similar and/or closely related to the Applicant’s Goods (‘third requirement’); and

    ·is substantially identical with, or deceptively similar to, the Trade Mark (‘fourth requirement’).

26. Even if I find that a ground for opposition is established, the Applicant may still be entitled to registration of the Trade Mark if it has established honest concurrent use of its mark under
    s 44(3)(a), other circumstances justifying registration of the Trade Mark under s 44(3)(b) and/or prior continuous use of its mark since before the priority date or any relevant prior mark covering similar goods or services under s 44(4).

27. In its SGP, the Opponent nominates the Opponent’s Registrations as the basis for this ground of opposition.  The Opponent’s Registrations satisfy the first and second requirements in that the registrations are in the name of a person other than the Applicant and each has an earlier priority date than the Trade Mark.

28. In relation to the third requirement, s 14 provides that two sets of goods are similar if they are the same or of the same description.  The factors to be considered are the nature of the goods, their uses and the trade channels through which they are bought and sold.[4]  The parties debated whether or not the actual product sold by the Applicant is a nut butter.  This is not the relevant question for the purposes of s 44.  What is relevant is that the scope of the Applicant’s goods would notionally include nut butters which in my view are similar goods to the Opponent’s Goods.  Accordingly, I am of the view that some of the Applicant’s Goods are similar to those of the Opponent.  For the reasons set out below, it is not necessary to consider this issue with any greater precision.

    [4] Jellinek's Application (1946) 63 RPC 59 (Romer J).

29. The next consideration is whether the Trade Mark is substantially identical or deceptively similar to either of the Opponent’s Marks.  The marks for comparison are:

Opponent’s Marks

Trade Mark

1. PEPE SAYA

2.

1. Although the Opponent did not press the issue of substantial identity at the hearing, it is clear from a side-by-side comparison that there is no overall impression of resemblance between the Trade Mark and either of the Opponent’s Marks. The words ‘PEPE SAYA’ and ‘Pistachio Papi’ in the Trade Mark are entirely different. Additionally, there are distinct differences between the Opponent’s Logo and the Trade Mark, including the additional words ‘Pistachio Papi’ and the differing hairstyle, angle from which the faces are viewed and facial features of the Applicant’s Logo compared to the Opponent’s Logo. Therefore, the Trade Mark is not substantially identical to either of the Opponent’s Marks.

2. Accordingly, I must now determine whether the Trade Mark is deceptively similar to either of the Opponent’s Marks.  Section 10 provides that ‘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’.

3. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J made the following comments with respect to deceptive similarity:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

   [5] [1963] HCA 66, [13] (Windeyer J).

4. As the High Court explained in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd:

   The essential task is one of trade mark comparison; the resemblance between the two marks must be the cause of the likely deception or confusion. In evaluating the likelihood of confusion, the marks must be judged as a whole, taking into account both their look and their sound.[6]

   [6] (2023) 277 CLR 186, [26] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

5. It was stated in Clark v Sharp:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[7]

   [7] (1898) 15 RPC 141, 146 (Byrne J).

6. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J noted the following regarding the risk of deception or confusion:

   While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[8]

   [8] (1954) 91 CLR 592, 594 (‘Southern Cross’).

7. What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Trade Mark and each of the Opponent’s Marks, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.

8. The notional buyer does not possess any knowledge about the actual use of the prior marks, the business of the owner of the prior marks, the goods produced by the owner of the prior marks, or any reputation associated with the prior marks.[9]  Hence, I must consider each of the Opponent’s Marks separately and cannot have regard to the fact that the Opponent’s Marks are used together in order to compare the combination of the Opponent’s Marks with the Trade Mark.

   [9] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

1. The Opponent identifies elements from the Trade Mark and argues their similarity to the Opponent’s Mark. For instance, the Opponent asserts that ‘PEPE’ is visually and phonetically similar to ‘Papi’ in the Trade Mark, as both share the consonant ‘P’, followed by a vowel, the letter ‘P’, and ending in a vowel. The Opponent claims this alliterative technique is memorable, whilst the exact vowels may not be recalled by consumers. Additionally, the Opponent argues that the Applicant’s Logo in the Trade Mark resembles the Opponent’s Logo, as both depict a European man with a large nose, similar hairline, shown in profile with one ear visible, square jawline, a supercilious expression, and rendered in watercolour. Given the similar look, sound, feel, and concept of the Trade Mark and the Opponent’s Marks, the Opponent contends that consumers with an imperfect recollection might wonder if goods bearing the Trade Mark originate from the same source as the Opponent’s Goods.

2. In addition, the Opponent points to alleged instances of actual confusion[10] noting that in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd,[11] the High Court commented that ‘evidence of actual cases of deception or confusion is of great weight, but not essential’.

   [10] Glover, Exhibit GS-36 and Glover 2, Exhibit GS-29.

   [11] [2023] HCA 8, [30] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

3. The Applicant submits that the Trade Mark looks and sounds different from PEPE SAYA.  The Applicant argues that the repetitive ‘Ps’ in ‘PEPE’ and ‘Papi’ is not sufficient to render the marks deceptively similar particularly given that ‘PEPE’ is the first word in PEPE SAYA whereas ‘Papi’ is the second word in the Trade Mark and the first word ‘Pistachio’ takes precedence.  Also, the Opponent's PEPE SAYA mark is a coined term that evokes a different image than the concept of the Trade Mark representing a 'pistachio father/daddy'.  Moreover, the Applicant says that the Opponent’s arguments ignore the device element of the Trade Mark.  The Applicant references the following comments of the Full Court in Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited[12]

   … some caution needs to be exercised before characterising words in a complex composite registered trade mark as an ‘essential feature’ of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different.

   [12] [2004] FCAFC 196, [100] (Moore, Sackville and Emmett JJ) (‘Crazy Ron’s’).

4. Regarding the Opponent’s Logo, the Applicant contends that the Opponent now seeks to ignore the words of the Trade Mark and focus solely on the device element. However, even when comparing the Applicant’s Logo element to the Opponent’s Logo, the Applicant argues that the similarities are limited to both featuring a caricature of a European man's head. The Applicant highlights differences such as the orientation of the heads, hairstyles, the eyes (closed in one and open in the other), the Italian moustache versus the thin French moustache, and the sizes of the foreheads and chins, among other details.

5. The Applicant also disputes the significance of the alleged instances of confusion between the marks, arguing that in many cases, it is clear that consumers are aware the products come from different sources. In other instances, it may be a case of ‘reverse confusion’. The Applicant claims that the fact that consumers perceive the two logos as conveying a similar idea or having stylistic similarities does not constitute a real, tangible danger of confusion.

6. In my opinion, when the Trade Mark is considered as a whole, it is not deceptively similar to either of the Opponent’s Marks. The overall impression of the respective marks must be evaluated, including the size and prominence of word and device elements and their relationship to each other. The Opponent’s mark PEPE SAYA is entirely different from the Trade Mark.  The marks are not visually, phonetically or connotatively similar.  Any resemblance between these marks is limited to the use of two ‘Ps’ alternated with vowels, but this is not sufficiently unique to make PEPE SAYA and the Trade Mark deceptively similar. The words ‘PEPE’ and ‘Papi’ remain visually and conceptually distinct. Furthermore, when considering the additional words in both marks, as well as the device element of the Trade Mark, it is clear that there cannot be a tangible danger of confusion with the Opponent’s mark PEPE SAYA.

7. Regarding the Opponent's Logo, I acknowledge that there are some limited similarities between the details of the Opponent's Logo and the device element of the Trade Mark, such as the hairline and large nose.  Many of the similarities are subtle and unlikely to be noticed by consumers.  In my view, the distinct differences in the specifics of the respective logos outweigh any similarities, resulting in overall different images.  The impression created by the Opponent’s Logo is distinguishable from that of the Trade Mark. I believe that each party’s respective marks convey its intended impression: the Opponent’s Logo suggests a ‘food snob,’ whereas the device element of the Trade Mark represents a ‘sexy Italian man’. Regardless, the visual distinctions of the heads, result in different effects on the minds of the consumers.  Additionally, the words ‘Pistachio Papi’ form an essential element of the Trade Mark, and I consider that this element is likely to be recalled by consumers. The Trade Mark also includes the ‘spread’ behind the words ‘Pistachio Papi’ and a knife device.  The visual, aural, and connotative differences between the marks as a whole overcome any similarities in the respective head devices and negate any likelihood of confusion.

8. While I note the consumers who have contacted the Opponent regarding the Trade Mark, I agree with the Applicant that many of these consumers are familiar with the Opponent’s Marks and aware that the goods bearing the Trade Mark come from a different source. Although these consumers seem passionate about the Opponent’s products and offended that the Trade Mark, in their view, connotes a similar idea, this is not the legal test for deceptive similarity. Some of these consumers appear to be comparing the device element of the Trade Mark with the Opponent’s Logo rather than the Trade Mark as a whole. The context of other consumers who have contacted the Opponent seeking to purchase the Applicant’s Goods is unclear, but in my view, these instances do not amount to a real tangible danger of confusion between the marks.

9. I am not satisfied that the Trade Mark is deceptively similar to either of the Opponent’s Marks and accordingly, the s 44 ground of opposition is unsuccessful.

   Section 60

10. Section 60 relevantly provides:

    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.

11. To establish a ground of opposition under s 60, the onus is on the Opponent to demonstrate that:

    i.as at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons; and

    ii.because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

    Reputation

12. In McCormick & Co Inc v McCormick (‘McCormick’), Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is ‘the recognition of the [trade mark] by the public generally’.[13] The existence and extent of a trade mark’s reputation must be established as a matter of fact by the Opponent.[14]

    [13] [2000] FCA 1335, [81] (‘McCormick’).

    [14] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).

13. In Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[15] 

    [15] [2019] FCA 923, [83].

14. Further, Kenny J stated in McCormick that:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[16]

    [16] McCormick (n 12), [86].

15. A trade mark’s reputation must be amongst a ‘significant or substantial’ number of Australian consumers, having regard to the relevant market[17] and the nature of the goods or services in question.[18] The likelihood of deception or confusion between trade marks requires consideration of the notional use of the opposed trade mark in a normal and fair manner in respect of the goods the subject of the trade mark application.[19]

    [17] ConAgra (n 13), [15]; Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

    [18] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

    [19] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

16. In its SGP, the Opponent claims to have a reputation in the Opponent’s Marks for the Opponent’s Goods.  The Opponent submits that this reputation is demonstrated by the long-term use of the Opponent’s Marks from around 2011 and the extensive range of goods sold which are widely available.  These products include dairy products such as butter, butter preparations, buttermilk, buttermilk products, other dairy products, cheese, crème fraiche and butter sheets for baking; desserts and pastry, pancake mixes, cookie dough and popcorn; spreads, lemon curd, passionfruit curd, jams; confectionery such as buttery salted caramels, chocolate salted caramels and chocolate butter truffles; and non-food products such as t-shirts, socks, tote bags and butter knives.  The Opponent claims that the significant advertising undertaken and substantial sales of its products demonstrate that the Opponent’s Marks had broad reach and ‘extremely high’ consumer recognition before the Relevant Date. 

17. The Applicant contends that allowing the Opponent to succeed under s 60 would effectively grant the Opponent a monopoly over caricatures of men, even when these caricatures are vastly different and images of men are often used on various food products by third parties. The Applicant argues that for many years, the Opponent’s Marks were primarily used for butter. While Glover 2 provides sales figures for other goods, the Applicant says it is unclear whether these sales are limited to Australia. Similarly, although sales increased significantly from 2020, it is not evident what proportion is attributable to sales in Australia versus exports. The Applicant asserts that sales of other products are not significant and notes that often the Opponent’s Logo does not feature prominently on the packaging of its other food products.

18. On my assessment of the Opponent’s evidence, I am satisfied that the Opponent had acquired a reputation in each of the Opponent’s Marks for butter.  The reputation in the Opponent’s Marks may be inferred based on the duration and extent of use of these marks in Australia and flights to/from Australia as well as promotion of the Opponent’s butter.

19. However, there is insufficient evidence of use of the Opponent’s Marks for other products to establish that the Opponent’s Marks had been used to such an extent that they had acquired a reputation as of the Relevant Date.  The sales figures provided in Glover 2 are for a single year or two, are not significant and the length of time that most of these goods have been available is relatively short.  I am not satisfied that there was a reputation in the Opponent’s Marks for goods other than butter at the Relevant Date.

    Likelihood of deception or confusion

20. Having found that the Opponent’s Marks had a reputation at the Relevant Date for butter, I must now determine whether use of the Trade Mark is likely to deceive or cause confusion.

21. The likelihood of deception or confusion from the use of the opposed mark must arise because of the reputation of the other mark.[20]

    [20] Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd (2015) 115 IPR 82, [29] (Jessup J).

22. The assessment of the likelihood of deception or confusion is to be made with regard to the strength of the reputation of the Opponent’s Trade Marks, the inherent distinctiveness of the respective trade marks and the degree of similarity between them, and the degree of connection between the respective goods and services.[21]

    [21] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40] (Hearing Officer I. Thompson).

23. The threshold for confusion is not high, although a mere possibility of confusion is not enough.[22] There must be a real and tangible danger of confusion or deception. It is enough if the ordinary person entertains a reasonable doubt.[23]

    [22] Australian Postal Corporationv Digital Post Australia [2013] FCAFC 153 [70] (North, Middleton and Barker JJ).

    [23] Southern Cross (n 7) 595 (Dixon CJ, McTiernan J, Webb J, Fallagar J, Taylor J); Crazy Ron’s (n 11) [76] (Moore, Sackville and Emmett JJ).

24. The Opponent claims that owing to the substantial reputation in the Opponent’s Marks, coupled with the deceptive similarity between the Trade Mark and the Opponent’s Marks, and the similarity in the Applicant’s Goods and those of the Opponent, there is a tangible danger of deception or confusion arising from use of the Trade Mark as evidenced by the emails and messages the Opponent has received from consumers discussed at [19] and [55] above.

25. The Applicant argues that the marks are sufficiently different that confusion is not likely particularly as the goods are ‘expensive’ as compared to competing butters and spreads so consumers are likely to be discerning.

26. I do not believe that there is a real likelihood of confusion between the Opponent’s Marks and the Trade Mark.  In my opinion, the differences in the marks are too great.  The Opponent’s products will be referred to as PEPE SAYA whereas the Applicant’s Goods will be pronounced ‘Pistachio Papi’.  Any similarity between the respective head devices is not so great as to outweigh the differences in the Trade Mark as a whole compared to the Opponent’s Marks.  The marks of both parties are inherently distinctive and I believe that consumers will recall the differing word elements PEPE SAYA and ‘Pistachio Papi’.  Whilst there is some similarity in the two sets of goods and the trade channels, given the differences in the marks, I believe it is unlikely that consumers will be caused to wonder whether the Applicant’s Goods emanate from the same trade source as the Opponent’s butter.  With respect to the claimed instances of confusion, I reiterate my comments at [55] that in my opinion this unsolicited correspondence does not amount to actual confusion between the marks.

27. Accordingly, the s 60 ground of opposition fails.

    Section 42(b)

28. Section 42(b) provides that a trade mark may be opposed on the basis that its use would be contrary to law.

29. The Opponent submits that use of the Opposed Trade Mark would constitute misleading or deceptive conduct under section 18 of the Australian Consumer Law, Schedule 2 of the Competition and Consumer Act 2010 (Cth) (‘ACL’), false or misleading representations under section 29(1)(g) and (h) of the ACL and the tort of passing off.

    Australian Consumer Law

30. Section 18 of the ACL requires that there be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s Goods due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading. The expression ‘mislead or deceive’ in s 18 of the ACL is effectively equivalent to the expression ‘false or misleading’ in s 29 of the ACL.[24]

    [24] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

31. The test for conduct contravening the ACL is a stricter one than the test under s 60,[25] which requires only that consumers would be likely to be deceived or confused. Since I am not satisfied that the s 60 ground of opposition is established, it follows that on the stricter test to be applied under the ACL I am not satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive, or amount to a false or misleading representation under the ACL.

    Passing Off

    [25] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

32. If use of a trade mark does not contravene s 18 of the ACL it will also not constitute the tort of passing off. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

    the scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[26]

    [26] [1989] FCA 506, [40] (French J).

33. Sections 18 and 29 of the ACL are the equivalents of ss 52 and 53 of the TPA.[27] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off. As I have found that ss 18 and 29 of the ACL have not been contravened, it follows that use of the Trade Mark does not amount to passing off.

    [27] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [410] (Rangiah J).

34. The ground of opposition under s 42(b) is not established.

    Decision

35. Section 55 relevantly provides:

    (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.

36. The Opponent has failed to establish any of the grounds of opposition nominated in the SGP.  Trade mark application number 2358548 may proceed to registration not less than one month from the date of this decision. 

37. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

38. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221, in the amounts set out in Schedule 8 of the Regulations.

    Tracey Berger

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    1 May 2025