Davide Campari-Milano SpA v Perfection Fresh Australia Pty Ltd

[2008] ATMO 53

TRADE MARKS ACT 1995

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

Re:Opposition by Davide Campari-Milano SpA to registration of trade mark application 1086218(31 35) - CAMPARI - filed in the name of Perfection Fresh Australia Pty Ltd.

Delegate:	Iain Thompson
Representation:	Opponent Christian Schreiber of Watermark, Attorneys. Applicant Not represented, did not appear – but put in written submissions
Decision:	2008 ATMO 52 Section 52 opposition – s41 an unargued ground of opposition – reg 21.19 – trade mark is the name of a variety of tomato – no inherent adaptation to distinguish the goods:- s59 – applicant has no intention to use the trade mark in relation to advertising services – registration refused. Costs awarded against applicant.

Background

1. Perfection Fresh Australia Pty Ltd (‘the applicant’), of Underwood Rd, Homebush, NSW, filed application to register a trade mark under the Trade Marks Act 1995 (‘the Act’), details of which currently are:

   Appn No:  1086218
   Priority date:                17 November 2005 (‘the relevant date’)

   Goods/Services:          Class 31:        Fresh fruit and vegetables (‘the opposed goods’)

   Class 35:Advertising (‘the opposed services’)

   Trade Mark:                CAMPARI     (‘the opposed trade mark’)

2. The application was accepted for registration and advertised in the Australian Official Journal of Trade Marks on 16 March 2006.

3. On 14 July 2006, after seeking and receiving an extension of time in which to do so, Davide Campari-Milana SpA, (‘the opponent’) of Milan, Italy, filed Notice of Opposition, (‘the Notice’) to the registration of the trade mark. The Notice cites many grounds of opposition, of which three were relied upon at the hearing of the matter – those being under sections 44, 60 and 59 of the Act. For the sake of completeness, I note now that the opponent has not established those other grounds of opposition with the exception of that under section 41.

4. The opponent served and filed two statutory declarations in support of the application, these being a declaration by:

   ·    Leanne Michelle Oitmaa, dated 3 April 2007, with exhibits LMO-1 to LMO-3; and,

   ·    Stefano Saccardi, date 28 March 2007, with exhibits XXX-1 to XXX-14.

5. The applicant did not serve evidence in answer.

6. The matter came before me, as a delegate of the Registrar of Trade Marks, for a hearing on 7 April 2008.  The opponent was represented by Christian Schreiber of Watermark, Patent & Trade Mark Attorneys.  The applicant did not appear and submitted written submissions by letter dated 9 October 2007 – there is some indication in this letter that the applicant believed this to be evidence in answer to the opposition.  However, when an officer of the Registrar wrote to the applicant stating that such materials should be in declaratory form, the applicant did not avail itself of the opportunity of presenting this material in declaratory form.  Where the material in this letter could be considered to be evidentiary, rather than argument, I will weight it accordingly.

7. At the hearing I reserved my decision and now give my reasons for finding that the opposition has been established under sections 41 and 59.

   Evidence

8. Ms Oitmaa is a lawyer and technical assistant at Watermark, Patent & Trade Mark Attorneys.  Ms Oitmaa exhibits various materials to her declaration which are from the applicant’s website.  These materials go to establish two propositions, which I accept:

   ·    The applicant is a fruit and vegetable merchant

   ·    The beverage which is sold under the opponent’s CAMPARI trade mark is a component of cocktail drinks in which fruit or vegetables may also be ingredients.

9. Mr Saccardi’s declaration establishes that the trade mark CAMPARI is used by the opponent on, “an alcoholic beverage obtained by the infusion of bitter herbs, aromatic plants, and fruit in alcohol and water.”

10.  The goods the opponent sells under the CAMPARI trade mark include both the beverage described in the preceding paragraph and goods under the trade marks CampariSoda and Campari Mixx.

11.  The opponent sells many thousands of bottles of its beverages in Australia every year and its worldwide sales are well in excess of one billion Australian dollars annually.

12.  This evidence shows that the CAMPARI trade marked beverage is used in a number of cocktails in which citrus fruits are ingredients.

13.  Mr Saccardi’s declaration also shows that the marketing of goods bearing the trade mark CAMPARI projects an exclusive or ‘classy’ image for the product.

14.  The opponent also evidences an extremely extensive portfolio of worldwide trade mark registrations, including four registrations within Australia.

15.  The letter from the applicant is signed by Simon Simonetta, Chief Operating Officer of the applicant.  In his letter, he says:

Declaration of Stefano Siccardi

1.      It is clear that the opponent has had the campari trade mark registered in respect to liqueurs and alcoholic beverages for quite some time and is recognised as a mark in respect to alcoholic beverages. We have no dispute in this respect.

2.      Throughout the Statutory Declaration there are numerous references to beverages however there are no references to the campari trade mark applying to fresh fruit and vegetables.

3. In paragraph 17 the opponent refers to a medium alcohol content beverage containing the fruit flavours of orange, peach and limes. We are prepared to restrict our trade mark to exclude orange, peach and limes.

Internet Searches

We note that as a reference only, we have undertaken a brief search of the internet through Google. We entered the word “campari” and searched and noted 75,000 results. Briefly it would appear that many of the results relate to campari the beverage however there were also results which related to:

·    hotels

·    restaurants

·    tomatoes (an American web page have noted a trade mark adjacent to the campari word) [sic]

The goods and services applied for under our application are fresh fruit and vegetables and advertising of those products. We do not believe that confusion or deception could be caused in the eyes of a consumer between a fresh fruit or vegetable generally marketed in bulk form in a fresh fruit and vegetable market as opposed to an alcoholic or non alcoholic beverage generally marketed in glass or plastic casing, any liquid format and sold generally in liquor stores (or the like).

16.  In view of the applicant’s reference to the word CAMPARI having a claimed trade mark status in the USA, and in view of ‘tomatoes’ being included within the opposed specification of goods, to inform myself in terms of regulation 21.19, I searched (using the Google Search Engine) for Internet pages containing both the words ‘tomato’ and ‘campari.’  This search revealed the webpage on which such trade mark status is claimed as the second entry on the search result.  The first Google search result is the following Wikipedia entry at tomato

From Wikipedia, the free encyclopedia

Campari is a variety of tomato, noted for its juiciness, high sugar level, low acidity, and lack of mealiness. Camparis are deep red and larger than a cherry tomato, but smaller and rounder than a plum tomato. The popularity of the campari took off in North America in 2002, following a brief appearance on the television mafia drama The Sopranos.

Originally from Europe, the campari was introduced in North America in 1997 by the Mastronardi Produce company, based in Kingsville, Ontario, Canada. Paul Mastronardi, a fourth-generation employee at the company, experimented with about 60 varieties of seeds before settling on the campari, after being urged by a customer to "Throw out all the rules that say big, big, big and let's focus only on flavour and see what that tomato looks like." ^[1]

Sales of camparis have grown rapidly since the variety was introduced, and the tomato maintains a loyal following. The tomato is produced by three suppliers in North America, Eurofresh Farms, BC Hothouse, and Mastronardi Produce, the latter two in Canada. Together, the producers form the Campari Marketing Group, which produces 50 million pounds of camparis annually, as of 2005. ^[1][2]

The campari cultivar is a globe-shaped hybrid, with regular leaves, and exhibits resistance to the tobacco mosaic virus. The plant grows 6-8 ft., and matures in 69-80 days. ^[3]

References

1. Grice, Samantha. "That's Campari", National Post, CanWest Global Communications Corp., July 13, 2004. Retrieved on 2007-07-17. 

2. Campari Tomato Shippers Form Marketing Organization. Eurofresh Farms News. Eurofresh Farms (June 22, 2005). Retrieved on 2007-07-17.

3. PlantFiles: Detailed information on Tomato, Greenhouse Lycopersicon lycopersicum 'Campari'.

17.  Further related inquiry on the USA Patent & Trademarks Office data-base shows that the owner of the website on the Google search had applied to register the trade mark CAMPARI in the USA in respect of goods in International Classes 30 and 31 and encountered the following report from the Examining Attorney:

VARIETAL NAME REFUSAL – CLASSES 30 AND 31

Registration is refused because the proposed mark “CAMPARI” is a varietal name for the identified goods and as such, does not function as a mark.  Trademark Act Sections 1, 2 and 45; 15 U.S.C. §§1051, 1052 and 1127; TMEP §1202.12.  See attached evidence from the Internet that shows that “CAMPARI” is the varietal name for a particular variety of tomatoes.

Varietal (or cultivar) names are generic designations and cannot be registered as trademarks.  See In re Delta & Pine Land Co., 26 USPQ2d 1157, 1159 n.4 (TTAB 1993); In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034 (TTAB 1979); In re Farmer Seed & Nursery Co., 137 USPQ 231 (TTAB 1963); In re Cohn Bodger & Sons Co., 122 USPQ 345 (TTAB 1959); Dixie Rose Nursery v. Coe, Comm’r Pats., 55 USPQ 315 (D.C. App. 1942, cert. denied).

The applicant should also note the following additional ground for refusal.

DESCRIPTIVE REFUSAL– CLASS 30 ONLY

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

The applicant seeks to register CAMPARI for use on “salsa, hot sauce, picante sauce, tomato sauce, and sauces; tomato puree.”  A term is merely descriptive if it conveys an immediate idea of the ingredients, qualities, or characteristics of the identified goods or services.  In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); Goodyear Tire & Rubber Co. v. Cont’l Gen. Tire, Inc., 70 USPQ2d 1067, 1069 (TTAB 2003); In re TMS Corp. of Ams., 200 USPQ 57, 58 (TTAB 1978).  As set forth above, CAMPARI is the varietal name for a particular type of tomato.  Therefore, the mark is merely descriptive of an ingredient of the goods, all of which contain tomatoes as a primary ingredient.

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

18. The above issue is thus a live one as regards similar goods contained within the opposed specification of goods because similar reservations about registering a varietal name as a trade mark should apply in Australia under section 41 of the Act.

19. As section 41 is a ground of opposition, I therefore wrote to the parties in terms of regulation 21.19 which provides:

21.19  Registrar may use information available

(1)If:

(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and

(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and

(c)the Registrar proposes to take the information into account in making a decision in the proceedings;

before making the decision the Registrar must:

(d)provide the information to the party; and

(e)give the party a reasonable opportunity to make representations about the information.

(2)For the purposes of paragraph (1) (e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

20.  I allowed the parties to make written representations to me within four weeks of my letter (dated 2 June 2008) which advised them of the web encyclopedia definition and the information from the United States Patent & Trade Mark data-base, enclosing copies of the references relied upon by the Examining Attorney.

21. I have had no response to the letter and therefore now make my decision in terms of section 41 of the Act.

Section 41

22. The nature and operation of section 41 were discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440. Her Honour concluded that there are three options open to the Registrar after considering the trade mark in terms of section 41(3):

a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b) 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; or

(c) 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 there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

23. The enquiry starts at subsection 41(3) of the Act, which states:

(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.

24.  The assessment as to whether a trade mark is inherently adapted to distinguish is to be tested according to the test set out in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 where Kitto J said at paragraph 5:

That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.”

25.  As the word CAMPARI is the name of a variety of tomato, other traders have a need in the ordinary course of trade to use the word for the sake of its ordinary signification in relation to tomatoes of that variety.  The trade mark is thus one without any inherent adaptation to distinguish the applicant’s goods from the similar goods of other traders.  The trade mark is therefore one to which the provisions of subsection 41(6) apply.

26.  As explained in The Trade Marks Manual of Practice and Procedure:

The name of a plant variety, whether registered or not, is incapable of distinguishing the trade origin of plants of that variety in terms of section 41 of the Act. It is the generic name that identifies the plant itself and plant material of the variety, such as fruit, flowers, seeds and vegetative cuttings. Any trader offering for sale plants or plant material of a particular variety should be free to use the name by which it is known, with or without any trade mark which they may also choose to apply to indicate the trade origin. The inability of varietal names to also function as trade marks is considered in Wheatcroft Bros Ltd’s Trade Marks (1954) 71 RPC 43 and “Ogen" Trade Mark [1977] RPC 529 and in "Tropical Birch" Trade Mark (1999), 47 IPR 191.

27.  The applicant has not provided any evidence of use of the trade mark.  Subsection 41(6) provides:

(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.

28.  Hence, the trade mark is taken not to be capable of distinguishing the designated goods from the goods of other persons.

29.  Subsection 41(2) provides:

(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.

30.  Accordingly, as the trade mark is taken to be not capable of distinguishing the applicant’s goods, I reject application 1086218 for all of the goods in respect of which application is made.

Section 59

31. Section 59 of the Act provides:

Applicant not intending to use trade mark

59. 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.

32.  The opponent pursues this ground in relation to the ‘advertising services’ in respect of which the applicant has applied to register the trade mark CAMPARI.

33.  The opponent’s evidence shows that the applicant is a fruit and vegetable merchant.  In his letter, Simon Simonetta of the applicant says, “The goods and services applied for under our application are fresh fruit and vegetables and advertising of those products.”  However, the advertising services within Class 35 are services that are performed on the behalf of others – as in, for example, by an advertising agency which designs and arranges advertising campaigns for its clients and receives payment for doing so.

34.  It is logical therefore to conclude that the applicant has no intention to use the trade mark on relation to advertising services which are offered to, or are performed on behalf of, others.

35. The opponent has established its ground of opposition under section 59.

Decision

36. Section 55 of the Act provides:

Decision

55. 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.

37.  I refuse to register application 1086218.

Costs

38.  The opponent in these proceedings has been successful.  I order costs against the applicant.

Iain Thompson
Hearing Officer
Trade Marks Hearings
3 July 2008