Destination Tweed Inc v Jayne Henry

[2019] ATMO 7

TRADEMARKSACT 1995

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

Re:Opposition  by  Destination  Tweed  Inc  to  registration  of  trade  mark  application 1748912 (29, 41, 43) - TASTE TWEED (Logo) - in the name of Jayne Henry.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: Trademark Consultants Applicant: Self-represented

DECISION:

2019 ATMO 7

Trade Marks Act 1995

Section 52 opposition to registration - grounds under section 60, 43 and 62A not supported by evidence. Opposition to registration not established.

Background

1. In this proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Jayne Henry (‘Ms Henry’ or ‘the Applicant’) has filed an application to register the trade mark which appears below:

Application No:         1748912
Priority Date:             12 February 2016

Goods:Class 29: Banana based snack food products; Food products derived from meat; Food products made from cooked fruits; Food products made from cooked nuts; Food products made from cooked vegetables; Food products made from dried fruits; Food products made from dried nuts; Food products made from dried vegetables; Food products made from eggs; Food products made from meat; Food products made from nuts; Food products made from preserved fruits; Food products made from preserved nuts; Food products made from preserved vegetables; Food products made from seaweeds; Potato based snack food products; Smoked food products; Snack food products made wholly or principally of potatoes; Vegetable food products

Class 41: Arranging of festivals; Arranging of exhibitions for cultural purposes; Arranging of exhibitions for educational purposes; Arranging of exhibitions for entertainment purposes; Arranging of exhibitions for training purposes; Demonstration (for instructional purposes); Academy education services; Advisory services relating to entertainment; Arranging

of entertainment; Conducting of exhibitions for entertainment purposes; Education services; Entertainment; Event management services (organisation of educational, entertainment, sporting or cultural events); Health education; Management of entertainment events; Mentoring (education and training); Organisation and conducting of dance, music and other entertainment festivals; Organisation of entertainment events; Organisation of exhibitions for entertainment purposes; Organisation of fairs for entertainment purposes; Organisation of promotions (entertainment events); Organising charitable fundraising events being the provision of entertainment, sporting and cultural services; Organising events for entertainment purposes; Organising of entertainment; Organising of entertainment and social events; Party planning (entertainment)

Class 43: Arranging for the provision of food

Trade Mark:

(‘the Trade Mark’)

1. The Trade Mark was examined as required by section 31 of the Act and advertised as accepted for possible registration on 7 July 2016 in the Australian Official Journal of Trade Marks.

1. On 2 September 2016, Destination Tweed Inc (‘the Opponent’) filed a Notice of Intention to Oppose, followed on 31 October 2016 by a Statement of Grounds and Particulars which (as amended by the exclusion of section 58A) specifies grounds under sections 60, 43, and 62A.

1. On 10 February 2017, the Applicant filed a Notice of Intention to Defend.

1. Thereafter, the Opponent filed Evidence in Support on 12 May 2017 being a declaration made by William John Tachell, made on 11 May 2017, with attachments A to C; and, on 25 August 2017, the Applicant filed a declaration by Ms Henry made on 25 August 2017 with attachments A to S.

1. Both parties were informed of their right to be heard or to make written submissions. Neither party made written submissions.

1. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.1

1. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date2 of the opposed application and I note that where section 60 specifies the ‘priority date’ that is here the same as the filing date.

The Evidence

1. In the circumstances of this matter it is simplest to discuss what the Opponent’s evidence might establish rather than to recount in any detail the assertions that the Opponent makes because these are lengthy, numerous, and are unsupported by corroborating material.

1. Attachment A to Mr Tachell’s declaration is an ASIC business name extract for the name ‘Taste the Tweed’ which commenced on 22 January 2010.

1. Attachment B to Mr Tachell’s declaration is a copy of a page headed ‘Taste the Tweed’from a draft report bearing a diagram titled ‘Figure ES1 Taste the Tweed Management Network’ and which shows as the source ‘Pacific Southwest Strategy Group Pty Ltd, 2007’.

1. Attachment C is an ASIC extract showing the commencement of an association called ‘Taste of the Tweed Incorporated’ on 22 October 2015.

1. However, section 17 of the Act provides:

17  What is a trade mark?

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

Note:       For sign see section 6.

1. The registrations of a business name and/or the incorporation of an association do not in and of themselves constitute uses of a trade mark or establish the intention to use a trade mark.  The

1 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles

J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

former merely complies with statutes concerning trading names and does not confer rights3 and the latter establishes the formation of an association which might use a trade mark but not what that trade mark might be or when it was first used.

1. Further, there is no corroboration of the relationship(s) between the Opponent, and ‘Taste of the Tweed Incorporated’, and/or the ‘Taste the Tweed Management Network’ which is referred to in the draft publication at attachment B to Mr Tatchell’s declaration. Nor is there any corroboration of what trade marks any of these entities (if they be such) might have used, or intended to have used, or if the draft report was ever circulated or to whom, or if it was finalised and/or acted upon. Further, it is not clear whether the distinction between the names ‘Taste the Tweed’ and ‘Taste of the Tweed’ is significant.

1. It is also unnecessary, in view of the above observations, to discuss the Applicant’s Evidence in Answer in detail because what Ms Henry rebuts are, in effect, uncorroborated assertions which do not discharge the onus referred to in para [8], above, that is on the Opponent. I observe, however, that Ms Henry’s declaration is well supported by corroborative materials and is of considerably more probative weight than is the Evidence in Support.

Section 60

1. Section 60 of the Act provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

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.

1. To found this ground an opponent must establish the existence of a trade mark with a reputation such that the use of the opposed trade mark would be likely to confuse or deceive.

3 See for example Lone Star Steakhouse & Saloon v Zurcas [2000] FCA 29; 48 IPR 325 at [25].

1. Here the Opponent has asserted, but not established, use of the trade mark TASTE [OF] THE TWEED. This cannot therefore be found to have contributed to ‘reputation’ of that trade mark in terms of the observation by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’):4

   (a) What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name

   ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

2. Kenny J explained in McCormick how the reputation of a trade mark is established:5

(a)      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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that 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. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. The Opponent has not established any use by a person of the trade mark TASTE [OF] THE TWEED in Australia nor quanta of revenue or expenditure on advertising in relation thereto and, consequently, it does not establish any recognition of that trade mark by the public generally.

1. The Opponent has not established its opposition under section 60 of the Act.

4 [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

5 Op cit at [81].

Section 43

1. Section 43 of the Act provides:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. The Opponent’s assertions in the Statement of Grounds and Particulars are lengthy but appear to fall under two headings:

Firstly, that the Applicant uses the Trade Mark in various different ways and is likely to deceive or cause confusion on that basis;

Secondly, that the Applicant’s use of the Trade Mark dilutes the Opponent’s TASTE [OF] THE TWEED trade mark and would be the source of deception or confusion because of its similarity to that trade mark.

1. It relation to the first assertion, this is not founded on the central principle of the ground under section 43 of the Act. That is, the connotation referred to within section 43 must be contained within the Trade Mark itself; further, in any event, such behaviour by the Applicant is asserted but not corroborated by the Opponent.

1. As to the second assertion, the Opponent has not established that it has a TASTE [OF] THE TWEED trade mark upon which to rely nor is this a proper basis upon which to found this ground.  In Winton Shire Council v Lomas Spender J stated:6

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.

1. The Opponent has not established its ground under section 43 of the Act.

Section 62A

1. Section 62A of the Act provides:

62A Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

6 [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72 at [19].

1. In its Statement of Grounds and Particulars the Opponent asserts a course of dealings between itself and Ms Henry. This assertion is not corroborated by the supporting materials within the Opponent’s Evidence in Support and in her Evidence in Answer Ms Henry provides alternative explanations for what the Opponent asserts and states that her perception was that the Opponent operated under the name ‘Tweed Fresh’.

1. Section 62A was considered in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) where Dodds-Streeton J said:7

It is clear that bad faith for the purposes of s 62A must be at the time of the application in this case (22 December 2006) and must relate to the making of the subject of that application, which in this case is the composite word and device mark, rather than the mark TENNIS WAREHOUSE or TENNIS WAREHOUSE AUSTRALIA. Further, the onus of proving bad faith rests on the opponent. While the seriousness of an allegation of bad faith that “impugns the character of an individual or collective character of a business...” requires correspondingly cogent evidence (statement of the Hearing Officer in Maslyukov v Diageo Distilling Ltd [2010] EWHC 443 (“Maslyukov”), quoted with approval by Arnold J at [36] and [37]), the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.

1. And after examining the various UK and Australian authorities Dodds-Streeton J concluded at [165]-[167]:

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character....

The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.

1. There is no evidence before me except uncorroborated assertions as to what the Applicant’s knowledge was at the time of the making of the application for registration and, further, the

7 Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 at [145].

Applicant gainsays these assertions. In these circumstances I am not satisfied that Opponent has established its ground under section 62A of the Act.

Decision

1. Section 55 of the Act provides:

55  Decision

(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.

Note:       For limitations see section 6.

1. The Opponent has not established its opposition the registration of the Trade Mark.

1. The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the court’s order or direction.

Costs

1. The Opponent in the matter has sought its costs. As the Applicant has been the successful party it is appropriate that I award costs against the Opponent at the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.

Iain Thompson Hearing Officer

Trade Marks Hearings 17 January 2019