CytoSport, Inc v Body Ripped Sports Nutrition Pty Ltd [Sec=Unclassified]
[2009] ATMO 74
•14 September 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by CytoSport, Inc. to registration of trade mark application 1152695(29) - MASSIVE MUSCLE MILK; MASSIVE MUSCLEMILK - filed in the name of Body Ripped Sports Nutrition Pty. Ltd.
Delegate: Claudia Murray Representation: Opponent: Wayne Willis, of FB Rice & Co, Sydney.
Applicant: Sharmie Sadikay, Director, Body Ripped Sports Nutrition Pty Ltd.Decision: 2009 ATMO 74
Section 52 opposition – amendment to add s58 to notice of opposition under s66 allowed – ss58 and 60 – opposition successful under s58 – registration refused – no award of costs.Background
Body Ripped Sports Nutrition Pty. Ltd. a Victorian company (‘the applicant’), filed trade mark application number 1152695 on 18 December 2006, for a series of trade marks which now appears as:
MASSIVE MUSCLE MILK and MASSIVE MUSCLEMILK
The application was filed in class 29 of the International (Nice) Classification of Goods and Services in respect of:
Edible soy proteins; food preparations with added proteins for use by athletes; food protein for human consumption; milk protein; milk protein products; milk proteins; protein for human consumption; protein-based food preparations being dietetic supplements or nutritional additives (not for medical purposes); whey protein
The trade marks were advertised accepted for possible registration in the Australian Official Journal of Trade Marks on 26 July 2007.
On 22 October 2007, CytoSport, Inc. of California, USA (‘the opponent’) filed notice of opposition to registration of the trade marks. A single ground of opposition, under section 60, was specified in the notice.
The opponent sought several extensions of time within which to serve and file its evidence, which was finally completed by 7 October 2008. The applicant chose not to respond with evidence in answer. The opponent then requested a hearing, and the matter was set down to be heard by me, as a delegate of the Registrar of Trade Marks, on 19 June 2009.
Three days prior to the hearing date, the opponent’s legal representative, Mr Wayne Willis of FB Rice & Co, Sydney, requested an adjournment of proceedings. Mr Willis explained that the notice of opposition, specifying only one ground, was filed by the opponent’s former attorneys. Upon appointment of his firm as the opponent’s new representative, (in January 2008), Mr Willis had recommended that an application be made to add at least one other ground of opposition, under section 58, and that evidence of the extent of the opponent’s reputation in the relevant industry prior to the filing date of the opposed application also be provided. However, communication with the opponent was a slow process, being conducted via its instructing US attorneys. Then, to add to Mr Willis’s woes, the applicant’s decision not to serve evidence in answer significantly truncated the opposition timetable. In short, Mr Willis requested more time within which, potentially, to request an amendment to the notice of opposition, and serve and file further evidence.
The applicant’s Director, Mr Sharmie Sadikay, protested vehemently against the prospect of yet more delay in proceedings, resulting in further hindrance of his business. Although the opposing parties had already indicated that they did not intend to be present at the hearing, they had each committed to providing written submissions. Absent mutual agreement to postpone the hearing, I proposed to continue the opposition timetable as scheduled. Under those circumstances, Mr Willis sought my agreement to consideration of his formal request under section 66 of the Act to urgently amend his client’s notice of opposition to include the new section 58 ground. If this could be achieved, then, in the interests of avoiding further delay, he undertook to abandon his secondary aim of introducing additional evidence into the proceedings.
At this juncture, I advised the parties that I would take their written submissions prior to 19 June upon both the amendment request and the substantive opposition on grounds based on sections 60 and 58, and that my written decision with reasons would determine all matters. First Mr Willis and then Mr Sadikay duly provided written submissions on that basis.
Evidence
The evidence in relation to this opposition comprises just the opponent’s evidence in support, which is a statutory declaration by Roberta White, with Exhibits 1 to 3, dated 18 September 2008. Ms White is the opponent’s ‘Vice President of Legal/Regulatory’. She declares that her company was incorporated in 1998, primarily with the objective of producing nutritional supplements and food preparations with added proteins for athletes. Ms White asserts that the trade mark MUSCLE MILK was coined by her company to identify a protein, fat and carbohydrate food supplement, that the opponent first used the trade mark in the USA in 2000, and that it is ‘known by athletes throughout the USA and other countries around the world.’ She continues:
My Company currently supplies MUSCLE MILK product to numerous countries around the world and has been doing so for at least eight years. My Company is either the applicant for registration or the registered owner of the MUSCLE MILK trade mark in numerous countries worldwide.
My company has not yet entered into any formal distributorship agreement in relation to the Australian market although discussions with this objective in mind have been held from time to time over the last few years. My Company has, however, been supplying product bearing the MUSCLE MILK trade mark to either consumers or on-sellers in Australia from at least as early as 2004 and this has been achieved either by direct shipment from my company or, alternatively, by shipment to Australia of product purchased from my Company in the US and shipped to traders in Australia.
Section 66 - Amendment to notice of opposition
As promised, before the substantive matters of this opposition can be dealt with, I must settle the preliminary question of whether the opponent’s request under section 66 of the Act to amend its notice of opposition should be allowed. Section 66 (‘Amendment of other documents’) provides:
The Registrar may, at the request of the person who has filed an application (other than an application for the registration of a trade mark), a notice or other document for the purposes of this Act or at the request of the person’s agent, amend the application, notice or document:
(a) to correct a clerical error or an obvious mistake; or
(b) if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.
Note: For file see section 6.
Mr Willis submitted that his application should be amended under paragraph 66(b). He argued:
In the present matter the applicant did not serve any evidence at all and the opponent proposes to argue the s.58 ground on the basis of the evidence that the opponent has already served so the request for amendment does not alter the status quo. Because of this it is submitted that the request for amendment, at this stage of proceedings, is fair and reasonable on the basis that the applicant is not prejudiced and that it is preferable that an opposition be considered on those grounds that are relevant to the facts.
Hearing Officer Jock McDonagh recently allowed a similarly late application for amendment of a notice of opposition. He summarised the relevant issues in the following manner:
For the Registrar to be fair and reasonable in exercising a discretion the following should be taken into account:
· Relative inconvenience to the parties;
· The public interest
· The desirability of operating the trade mark system efficiently and without unreasonable delays.
While there is inconvenience to the applicant in having to revisit its submissions based on an additional ground of opposition (particularly as the advice regarding grounds to be pursued was also given at a late stage), the opponent would also be inconvenienced in not being able to canvass all grounds it believes it can support with the evidence already served.
Further, I consider it is in the public interest that trade mark applications are tested as completely as practicable by the Trade Marks Office at the examination and opposition stages. It should avoid increasing the probability of appeal, and the consequent additional costs to both parties.
It is also in the public interest that the system operates as efficiently and quickly as possible. Therefore, I intend to allow the opponent to add the section 58A ground to its Notice of Opposition, relying on the evidence already filed and served in the proceedings.[1]
[1] Margaret Kerr, Kent Sasse, Henry Arthur Sasse and Toddler Kindy Gymbaroo Pty Ltd v Invecon Australia Pty Ltd [2008] ATMO 102 (24 December 2008), paragraphs 11-14.
For all the reasons given above, I too consider it to be fair and reasonable to allow the opponent’s request to include the section 58 ground in its notice of opposition. However, I am mindful that, at the last gasp of this opposition, the opponent’s amendment has effectively doubled the number of grounds that the applicant is now required to deal with in its submissions. As I advised the parties at the time the request was raised, such circumstances may be taken into account when awarding costs against an unsuccessful party. I will return to this point later.
Grounds of opposition
I will deal with the grounds of opposition in the order the opponent has argued them.
Section 60 – Trade mark similar to trade mark that has acquired a reputation in Australia
The subject application was filed after a significant amendment to section 60 came into force on 23 October 2006. Accordingly, the amended version of the section applies.[2] The section 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.
Note: For priority date see section 12.
[2] Apple Computer Inc. v TodayTech Group Pty Ltd, [2007] ATMO 40 (17 July 2007).
To satisfy these provisions, an opponent must demonstrate that, at the time of filing of the opposed application, it had a reputation in a trade mark, such that use of the applicant's trade mark(s) would likely cause the public to be deceived or confused. The opponent's trade mark need not be subject of an application or registration, in order to be able to be relied upon under this section.
Mr Willis argued that I should take into account the opponent’s ‘admittedly modest’ use of the MUSCLE MILK trade mark in Australia for the purposes of this section, because:
In the case of trade marks of foreign owners where there is extensive goodwill and reputation overseas, it is appropriate to accept some spillover of the foreign registration into Australia because, in modern times, there is extensive travel by Australian residents who will encounter the trade mark outside Australia (Anheuser-Busch Inc. v. Castlebrae Pty Ltd (1991) 23 IPR 54). In the case of sports nutrition products, it is submitted that sporting enthusiasts will travel to sporting events overseas and have a particular interest in the specialist sports nutrition products that they find there. The opponent has given evidence that it is a significant commercial entity in relation to sports nutrition products with major sales in the US prior to the priority date of the opposed application and a significant presence in the world market. It is therefore submitted that it is reasonably likely that consumers of sports nutrition products in Australia as at 18 December 2006 would have been "aware" of the MUSCLE MILK trade mark of the opponent via both its Australian and International reputation and that, because of this, the use of the MASSIVE MUSCLE MILK trade mark at that time in relation to sports nutrition products would be likely to deceive or cause confusion. It is therefore submitted that the opponent has established a basis, on the balance of probabilities for the rejection of the opposed application under the provisions of s.60.
Mr Sadikay, for the applicant, disputed this claim and rejected the comparison with the Anheuser-Busch case because that case dealt with beer, a ‘mass-marketed product’ likely to be available overseas to Australian travellers in many locations, whereas the opponent’s MUSCLE MILK, ‘if such a product existed’, would never be seen outside a bodybuilding event or fitness expo.
I have considered the opponent’s evidence carefully, particularly in view of the close similarity between its trade mark and the applied-for trade marks, and the very specialised nature of the market both parties operate in. Reputation in a trade mark can be demonstrated in a variety of ways, some less obvious than others. Kenny J discussed this issue in McCormick & Co v Mary McCormick. After exploring some possible options, she commented:
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.[3]
[3] McCormick & Co v Mary McCormick (2001) 51 IPR 102, at 129.
The relevant date at which the opponent’s reputation is to be assessed is 18 December 2006. The opponent’s evidence as at that date, as both Mr Willis and Ms White have recognised, reflects only modest use of the trade mark in Australia. And there is little, if anything, in the evidence to substantiate the claims made by Mr Willis about the ‘awareness’ of the opponent’s trade mark that Australian consumers of sports nutrition products would have gathered via their travel to sporting events overseas. I find that the opponent has not demonstrated that it had the requisite reputation in MUSCLE MILK, at the filing date of the applied-for trade marks, to make its case that deception or confusion would be likely to result from use in Australia of those MASSIVE MUSCLE MILK trade marks. The section 60 ground of opposition has not been made out.
Section 58 – Applicant not owner of trade mark
The opponent’s new ground of opposition under section 58 deals with ownership of a trade mark. It provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
To succeed on this ground, absent any evidence of use by an applicant before the priority date of its application, (as is the case here[4]), an opponent must be able to demonstrate use prior to that date, of the same or a substantially identical trade mark, in relation to the same goods.[5]
[4] Although Mr Sadikay has claimed in his written submissions that the applicant first distributed its product to customers under the trade mark during October 2005, it will be remembered that no evidence in answer was served or filed.
[5] Re Hicks Trade Mark (1897) 22 VLR 636.
The parties have not disputed that their respective goods of interest are what may fairly be described as ‘the same’. The identity of the goods being thus established, the remaining issues for determination are whether the opponent has used an identical, or substantially identical, trade mark on those goods, prior to the filing date of the application.
The accepted test for substantial identity involves side-by-side visual comparison of the relevant trade marks[6]. A finding of substantial identity means that ‘in a real sense a claim to proprietorship of the one [trade mark] extends to the other.’[7] Mr Willis submitted that, while the trade marks in question were not, of course, the same, they were certainly substantially identical. He cited PB Foods Ltd. v. Malanda Dairyfoods Ltd.[8], where the trade marks CHILL and CHOC CHILL were found to be substantially identical because CHOC was merely descriptive, and argued that the addition of MASSIVE to MUSCLE MILK fell into the same category. He wrote that ‘the rights of the foreign owner to its trade mark cannot be defeated by the addition of immaterial subject matter’, and relied upon the decision of the High Court of Australia in Seven Up Co v. OT Ltd, where Williams J said:
...in the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner. The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia. It is not then a mark which another trader is entitled to apply to register under the Trade Marks Act because it is not his property but the property of the foreign trader.[9]
[6] Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 414-5.
[7] Carnival Cruise Lines Inc v Sitmar Cruises Ltd, (1994) 31 IPR 375, at 391.
[8] (1999) 47 IPR 47.
[9] (1947) 75 CLR 204 at 211.
Finally, Mr Willis submitted that the opponent had indeed provided the requisite ‘small amount of use’ envisaged by Williams J as being sufficient to defeat the applicant’s claim to ownership of the MASSIVE MUSCLE MILK trade marks.
For his part, Mr Sadikay has disputed the veracity of the opponent’s supporting documentation, and has observed, in passing, that the applicant’s prior application number 1084590 for the series of trade marks Muscle Milk; Musclemilk, which was filed on 9 November 2005, was ‘approved after IP Australia found no evidence of a similarly-named product within Australia.’ Indeed, it is a matter of public record that, having met no opposition, that series of trade marks filed by the applicant proceeded to registration in June 2006. While the existence of that registration represents a definite anomaly in the surrounding circumstances of this case, it is not the subject of this opposition. I propose to take no further notice of it here, save to observe that the opponent’s evidence of prior use which I will discuss below predates both the filing date of the opposed application and that of the applicant’s registration.
Firstly, I accept Mr Willis’s submissions about the close similarity between the opponent’s trade mark and the applied-for trade marks. I find they are substantially identical in terms of the well-known test cited above. Secondly, I have closely examined the supporting documentation provided to Ms White’s declaration, relating specifically to the period prior to the relevant date of 18 December 2006. This evidence breaks down to two photocopied invoices to Australian addresses dated in 2004, and a very poor photocopy of a Permit to Import Quarantine Material, valid from 29 November 2004 to 29 November 2006 and issued to a company at the same address as that shown on one of the invoices. While the MUSCLE MILK product is clearly referred to in all these documents, as Mr Sadikay has pointed out, the quantities recorded in the invoices are small.
However, the courts have indicated on many occasions that high incidences of use are not required, in order for common law ownership of a trade mark in Australia to be established. In Malibu West, Inc v Catanese[10], prior to quoting the words of Williams J in Seven Up already quoted above, Finkelstein J said:
While a local trader can deliberately adopt a foreign trade mark not previously used in this country, such action described by Williams J in Re Registered Trade Mark "Yanx" (at 202) as "sharp business practice", the court is inclined to regard this practice with suspicion and to "frown on these borrowings from abroad" (Aston v Harlee Manufacturing Co at 400 per Fullagar J). This is especially so where one of the local trader's motives in adopting the foreign mark is to prevent the foreign owner's use in this country. The corollary is that courts will regard a small amount of use, or slight use, of a mark in Australia by an overseas proprietor as sufficient to establish proprietorship of the trade mark in Australia: Aston v Harlee Manufacturing Co at 400; Moorgate Tobacco at 432; Riv-Oland Marble Co v Settef SpA at 353-354.
[10] [2000] FCA 1141 (18 August 2000), at paragraph 28.
Jacobs J also referred to the Seven Up case when he found in the High Court decision Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd[11] that:
It has been held that any use at all on the Australian market will suffice to deny to the applicant the right to claim authorship and consequent registration…
In the present case the use relied on is a use by the American corporation when it dealt with the local company. It happened to be a single sale so that the local company was a single importer but that is by the way. It is a use in Australia, and registration by another of the trade mark prevents the further use of the mark by the person who had been the first to use it. That is not permissible because it bars the true proprietor of the mark in Australia, the person who had first used the mark to distinguish his goods in the course of trade in this country.
[11] [1974] HCA 51; (1974) 131 CLR 592 (28 November 1974), from paragraphs 16 and 18.
Weighing all of the matters discussed above into the balance, I find that the opponent has made its case for ownership of the applied-for trade mark under section 58.
Decision
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.
Note:For limitations see section 6.
The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the appropriate standard of proof required in terms of a ‘balance of probabilities’.[12] His findings upon that issue, arrived at after an exhaustive consideration of the relevant authorities, have recently been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.[13]
[12] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599.
[13] [2009] FCA 891 (18 August 2009), paragraphs 22-27.
I find here that the opponent has met the onus upon it, in terms of the ground of opposition argued under section 58. I therefore refuse to register trade mark application number 1152695.
Costs
It is usual for costs to follow the event, unless a reason has arisen in the course of proceedings for the delegate to depart from that principle. I believe such a reason exists in this case, where the opponent has succeeded with a ground of opposition raised only on the eve of the hearing, and in the face of the applicant’s quite valid protestations about the serious inconvenience caused to it by such late notice. I make no award of costs against the unsuccessful applicant under these circumstances, as it is appropriate that each party bears its own costs.
Claudia Murray
Hearing Officer
Trade Marks Hearings
14 September 2009
0
12
0