Dick Smith Investments Pty Ltd v Roger Ramsey

[2006] ATMO 82

TRADE MARKS ACT 1995

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

Re:Opposition by DICK SMITH INVESTMENTS PTY LTD to registration of trade mark application 874833(30) - AUSSIE MITE - filed in the name of ROGER JOHN RAMSEY.

Delegate:	Terry Williams
Representation:	Opponent: Dick Smith Investments Pty Ltd Applicant: Roger Ramsey
Decision:	S52 opposition: s 60 not established, 44(4) invoked at acceptance but not justified, registration proceeding under s 44(3)(b)

Background

1. Trade mark number 811789 is registered in the name of Dick Smith Investments Pty Ltd (“Smith”).  It consists of the single word OZEMITE.  In class 30 the goods specified are, as relevant to the present matter “yeast extracts; spreads and snack foods in this class”.

2. The applicant in the present matter, Roger Ramsey, applied on 7 May 2001 to register his own trade mark, AUSSIE MITE.  His application was examined at the Trade Marks Office and accepted for possible registration in respect of “spreads; spreads and snack foods containing yeast and yeast extracts”.  To gain acceptance, Mr Ramsey has relied on the provisions of subsection 44(4), which, briefly, allow a later-filed trade mark to proceed in the face of an earlier-filed and deceptively similar one if the owner of the later application can show use of the relevant trade mark before the priority date of the earlier.  Relevantly, Smith’s trade mark, clearly earlier, has a priority date of 28 October 1999.  On the basis of the evidence Mr Ramsey put before the examiner his application was accepted for possible registration.

3. As is normal when the provisions of section 44(3) or (4) are applied, the owner of the earlier trade mark was informed.  Smith has duly opposed registration of Mr Ramsey’s application.

4. Both parties have filed the usual evidence in support of the opposition, in answer to it and in reply, and each party has also been granted permission to serve and rely on further evidence.  The matter was then set down for me to hear and decide, under delegation from the Registrar of Trade Marks.  At that hearing, Mr Ramsey appeared on his own behalf, presenting written submissions faxed to the Trade Marks Office by his patent attorneys, Collison & Co[1].  Smith was represented by Julia Baird of counsel, instructed by Anisimoff Lawyers. 

   [1] Some of this is an attempt to introduce, belatedly, unsworn assertions on the part of either Mr Ramsey or his attorney.  It would be procedurally very unfair to Smith to give any weight to such material, introduced so late.  I can therefore give no evidentiary weight to any unsworn assertions in what Mr Ramsey calls his  “summary of comments and arguments”

   Grounds considered:

5. Of the many initially nominated, Ms Baird abandoned a number of grounds of opposition.  Of those remaining, one (s 58) is readily disposed of and Smith’s case is strongest under only two. 

6. Firstly, she argued that s 44(4) had been wrongly applied, that 44(3), the alternative provision, was unavailable and that the relevant ground of opposition under s 44(1) therefore was established.  Secondly, she argued that Smith had established a ground under s 60.  This goes to the existence of a reputation in a deceptively similar and conflicting trade mark, such that use by the applicant would have been liable, at the date of the opposed application, to cause deception or confusion.  If I find for Smith under s 60, registration must be refused[2].

   [2] McCormick & Co Inc v McCormick [2000] AIPC ¶91-637

7. At the hearing, Mr Ramsey made a number of submissions that go to the very heart of the case that Ms Baird argued.  While the onus is on Smith to establish one or more grounds of opposition, it will be convenient to approach this matter less directly.  In doing so, I will matrix together the arguments put to me by Ms Baird and Mr Ramsey with the relevant evidence.  However, in order to get matters under way on the right footing, it is necessary to decide if, at the outset, I have before me two trade marks that are, for the purposes of s 10, deceptively similar.

   Deceptively similar or substantially identical

8. Mr Ramsey argued that, compared by look and by sound, the trade marks are distinguishable.  To that extent he is correct.  However, distinguishable trade marks may still be deceptively similar.  Section 10 provides:

   10. For the purposes of this Act, 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.

9. I am fully satisfied that the trade marks AUSSIE MITE and OZEMITE are deceptively similar.  I simply do not accept that, allowing for imperfect recollection, these two spellings are anything but deceptively similar when the goods are yeast spreads.  Perhaps a different conclusion might be more arguable if the goods were nuclear submarines or surgical instruments, bought under carefully controlled conditions.  The goods of interest here are a simple supermarket line, bought by ordinary consumers with ordinary, and sometimes very ordinary, attention to detail.  Importantly, both parties set out to make more than a glancing reference to VEGEMITE and the extent to which they succeeded in doing so has, coincidentally, bought them into conflict with each other.  Mr Ramsey argues that Smith’s trade mark will always be linked, on labels etc, with the trade mark DICK SMITH.  Even if that is so, it would be irrelevant to the abstract comparison of AUSSIE MITE and OZEMITE.  Section 10 requires a notional and hypothetical comparison, assuming normal and fair use of the prior trade mark, of which the words DICK SMITH form no part.

10. I reject Ms Baird’s argument that the trade marks at issue are substantially identical.  It cannot survive the appropriate evaluation, side by side, of the similarities and differences of the two trade marks.  I note her argument that the words AUSSIE and OZE are simply “egregious mis-spellings of Australian”, but cannot accept that it carries the day.  One is a colloquialism, the other is a thoroughly mis-spelled colloquialism, though doubtless one made familiar, as Ms Baird noted, by the 2000 Olympics.  In total, one mark is of two words and ten letters, considerably more familiar in spelling and structure than the other, which is one word of seven letters[3].

    [3] I note in passing that this conclusion would also dispose of Ms Baird’s argument under s 58, which requires substantial identity, not mere deceptive similarity – see Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375.

11. With that as a background, I turn to the other key elements of this conflict.

    Public use of AUSSIE MITE.

12. At the hearing, Mr Ramsey indicated that he understood that the fate of his application might well depend on the date of first public use of his trade mark, and its extent over time since that date.  The other salient points on the time-line are 8 July 1999, when Richard “Dick” Smith, the director and founder of Smith, prominently announced his intention to use the trade mark OZEMITE and 7 May 2001, the date on which Mr Ramsey applied to register his trade mark.

13. Mr Ramsey has declared to a number of actions that might be relevant to consideration.  He apparently devised his trade mark in 1998, in discussions with a Mike Thomas of Lobethal, South Australia, for “ultimate use in relation to a new product which would have similar characteristics to a well known vegemite product (sic)”.  However, as I explained to Mr Ramsey at the hearing, simply inventing a trade mark does not, without either commercial use or the making of an application for registration, give rise to any ownership rights. 

14. Commercialisation came later.  By November 1999, analysis of a product had commenced.  Mr Ramsey registered for membership with the Australian Companies Institute Limited in April 2000.  This company promotes “genuine” Australian products, and apparently operates the Ausbuy website, However, Mr Ramsey nominated three relevant products, including one under the trade mark DINKY DI-NEMITE, but did not nominate AUSSIE MITE.  There is a string of evidence on this point, and it appears that by February 2001 one of the three nominated products, TRUE BLUE DISHWASHING LIQUID, was “no longer available to the public” and there had been a “name change of DINKY DI-NEMITE to AUSSIE MITE.  This latter is asserted in an email Mr Ramsey sent to Mr Pym of Australian Companies Institute Limited, and is consistent with Mr Pym’s own evidence on the topic.

15. Be that as it may, there is third-party confirmation that, shortly beforehand, “The first dry mixes for a trial production run were prepared on 1st December 2000 and packaged into jars with the Aussie Mite label.”  Here I refer to a letter from the research company that prepared the mixes[4].

    [4] Exhibit RJR 6 of Mr Ramsey’s further evidence

16. As to other events, there is, as Ms Baird pointed out, a certain amount of internal inconsistency among the material in Mr Ramsey’s various declarations.  Mr Ramsey declares that exhibit RJR5 shows a page of the AusBuy Friends issue of “Winter 2000”.  AusBuy Friends is apparently the newsletter of Australian Companies Institute Limited, and promotes Australian-owned and produced products.  Mr Ramsey asserts, in a declaration that he made in July 2003, that this shows the “availability” of the product at that time.  It is hard to see how any reference to a date as early as “Winter 2000” can stand in the face of evidence that the name change, and indeed the first availability of product packaged under the relevant label, occurred later[5]. 

    [5] Sample labels were not printed any earlier than September 2000 – Exhibit 2 to the Ramsey declaration of February 2005, and see previous footnote.

17. Exhibit RJR3 consists of a bundle of copies of Tax Invoices and “Invoice/Delivery” forms.  Of these, number 156 and others with similar numbers are Invoice Delivery forms, dated in April of 2001.  I note Ms Baird’s criticism of this evidence, to the effect that Tax Invoice 0000128 and similar documents bear, arithmetically speaking, a lower number, are not dated until November 2002 or later.  However, since the latter documents have a different format and different headings, they appear to be the products of different accounting software or in some other way parts of different series.  Therefore, there is no apparent conflict of numbers and dates.  The earliest unambiguous transaction is a shipment to a grocery store in Nhill, Victoria, in February 2001[6].  By April 2001 Mr Ramsey was regularly invoicing Woolworths for small shipments of product. 

    [6] This Invoice/delivery document is dated “06-02-’01”.  There is a similar document dated “22-02-’01”, which would appear to rule out the use of “American style” dates, a possibility to which Ms Baird referred.

18. It would be unsafe for me to proceed on the basis that Mr Ramsey had made any commercial offer to trade in goods under the trade mark AUSSIE MITE any earlier than (at very best) December 2000.  I have no evidence of the size or history of the December 2000 “trial production run”, and it may be that this was a small quantity, perhaps tested and consumed entirely within the Ramsey household, which clearly would not be a commercial use.  Therefore, I think it would be unsafe to say, on the present evidence, that Mr Ramsey commenced trade mark use any earlier than February 2001.

    Reputation and the s 60 and 42 grounds of opposition

19. Mr Ramsey has strong feelings about the respective reputations in the competing trade marks.  As he put it at the hearing, how can Smith assert a reputation in a trade mark, as at 7 May 2001, which was apparently unused, then or since, while denying that Mr Ramsey also has a significant one in his own trade mark?

20. My present purpose is to quantify Smith’s reputation at that date, not Mr Ramsey’s.  If Smith can establish this to the degree necessary to bring s 60 into effect, and the other necessary elements of that provision are established, Mr Ramsey’s application must come to a dead end and I must[7] refuse to register it.

    [7] McCormick & Co Inc v McCormick [2000] AIPC ¶91-637

21. Ms Baird, at the hearing, made much of Mr Smith’s talent for gaining media attention.  Mr Smith announced with great public fanfare in July 1999 that he intended to commence operating Dick Smith Foods, an Australian-owned company aiming to sell Australian-made products.  Mr Smith has a talent for promotion and made appearances on the Small Business Show on TCN Channel 9 in March 2000, on Today Tonight on ATN Channel 7, and Landline on the ABC in April that year, all just before Mr Ramsey filed his application.  As Ms Baird noted, these are not paid advertisements so much as public information programs.  I believe that they would have had, at the time, a significant effect on the public mind.

22. Again, Mr Smith made a hot-air balloon flight from New Zealand to Australia in February 2000 and the evidence (exhibits DS3 and DS5) contains a plethora of print media references to his plans for OZEMITE, either with or separately from the balloon flight publicity.  Some of the rest of his evidence, however, is given over to self-serving assertions which I set aside.  These assertions go to matters that are for my decision, not that of Mr Smith. 

23. It appears also that by April 2004, Smith had not been able to bring to the market a single jar of OZEMITE.  The reasons for this are unclear but according to the schedule in evidence given by the proposed authorized user, Southern Sky Foods Pty Ltd, the product was due for release no earlier than July 2004.  I note this schedule is dated May 2003.  I am not prepared to speculate about why a more up-to-date schedule was not put into evidence by Southern Sky nearly a year later.  Other than the development of a “prototype” label, it is not at all clear which (if any) parts of the schedule had been successfully completed.

24. I set out now the terms of s 60. 

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

    (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

    (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

    Note 1:  For deceptively similar see section 10.

    Note 2:  For priority date see section 12.

25. I have already found that the trade marks are deceptively similar. 

26. Normally, one would expect a trade mark with a reputation to have been used extensively.  “Commonplace”[8] measures of reputation are the extent of sales and advertising over time.  It is hard to see how an enduring reputation could arise without such things.  However, s 60 does not trigger on “enduring reputation”.  It triggers on “reputation”.  Moreover, it must be remembered that a trade mark is (s 17) one “used, or intended to be used”.  I would adapt s 60 to the present situation such that it would be for Smith to show that, at 7 May 2001, a significant number of consumers, on seeing a product bearing the trade mark AUSSIE MITE, would expect it to be the product of Smith or at least have a “reasonable doubt” on that score.

    [8] McCormick & Co Inc v McCormick [2000] AIPC ¶91-637 at 38,215

27. Mr Ramsey, at the hearing, argued that all of Smith’s promotion of OZEMITE has come to nought.  He may well be right but the focus of this opposition must be on the situation as at May 2001, when Mr Ramsey filed his own application.  At that time, Dick Smith, and through him Smith the opponent, had successfully caught the public eye and assailed it with many, many indications that a new trade mark was in the public arena and that goods would be for sale under it shortly. 

28. In deference to Mr Ramsey’s strong views on this question, I will put the matter simply.  The object of my consideration must be an average member of the public, in May 2001, and knowing as much as such shoppers did of Smith and its trade marks at that date, and seeing in the supermarket a jar of yeast-extract spread bearing Mr Ramsey’s trade mark.  It matters not that such a shopper would not have seen a product of Smith under the OZEMITE trade mark - that product did not exist.  Even so, would there have been a real and tangible risk that such a person would assume something like “ah, yes, that must be the Dick Smith thing”, or be caused to wonder if that was the case, and have entertained a reasonable doubt about that question? 

29. Mr Ramsey argued that the reputation of Smith is inseparable from the words DICK SMITH.  He also argued that the absence of those words from his own trade mark, together with the noticeable difference in spelling, make it impossible for Smith to succeed.  He claimed that, had there been any such confusion, his own sales would have been much greater than in fact they were.  Again, I appreciate the correctness of his observation that, now that the public is familiar with the sale of DICK SMITH products, there is considerably less risk that the public would think the AUSSIE MITE label shown in the evidence was indication of a connection with Smith[9]. 

    [9] Perhaps this explains why Smith has not sought to restrain Mr Ramsey from passing off his goods as those of Smith.

30. Such knowledge could come about only with the advent of a body of such DICK SMITH products.  Apparently the first product under the DICK SMITH label, peanut butter, arrived on the market in (from an exhibit in DS3) February 2000, followed over the next twelve months by jams, biscuits, canola oil, cordial, cheese, jelly crystals, gravy, ice cream topping, matches, breakfast cereal, canned asparagus, table sauces and ice cream.  In other words, the likely view of a typical member of the public, in a hypothetical supermarket, in May of 2001, would have been coloured by not just the extent but by the character of Smith’s reputation.  Clearly, by the date in question, Smith had an extensive stable of products.  The AUSSIE MITE trade mark would not have appeared to be one of them, despite the fact that it and Smith’s much-touted OZEMITE are deceptively similar.  Such a shopper would have had a fair knowledge, not just of Smith’s 1999 plans, but of its actual 2001 products.  I think that, in the thought processes of such shoppers, real products would have considerably more weight that past proselytizing.  Ms Baird argued that consumers would simply expect, because of this, Mr Ramsey’s AUSSIE MITE to be the long awaited product of which they had heard so much.  I do not agree. Perhaps their recollection of OZEMITE would have dimmed with time but, more strikingly, such shoppers would be immunized against confusion by their clear and current knowledge of what a “real” DICK SMITH product looked like.  Ms Baird argued that some sort of disclaimer, as “this is not a DICK SMITH product” would be necessary to prevent confusion.  However, I do not think consumers would have had quite so simplistic a view of the matter.  The reputation of Mr Smith could not, by May 2001, be separated from the products he had chosen to market, nor could the reputation of the (unused) OZEMITE trade mark be considered in a vacuum, in isolation from that of Smith’s actual products.  AUSSIE MITE, used fairly, as apparently it has been, would simply not have appeared to be of the DICK SMITH stable.  I do not accept that such shoppers would have been confused by Mr Ramsey’s trade mark in May 2001.

31. The same finding would resolve Smith’s ground of opposition under section 42.  Here, Smith would need to satisfy me that use of Mr Ramsey’s mark would be contrary to law, specifically the Fair Trading laws of the various States and Territories.  I am not satisfied that the use in question would cause confusion, let alone actually be likely to mislead or deceive, the test under the relevant laws.  Ms Baird argued at the hearing that Smith would win at the higher threshold under such laws.  Perhaps (if I am wrong on the s 60 issue) it could, but I am not satisfied that it “would”, and the latter is the language of s 42.

    Opposition under s 44

1. It will be recalled that this application was accepted for possible registration on the basis of prior continuous use by Mr Ramsey since before the date of Smith’s own reputation.  This is allowed under s 44(4), which I need not set out in full.  Smith’s registration has a priority date of 8 July 1999, where Mr Ramsey’s commercial use of his own trade mark can have been no earlier than December 2000, with clear evidence of use before April 2001 lacking.  Accordingly, this application is not able to proceed to registration under the terms of s 44(4)

2. Now would be an opportune time to set out the terms of the relevant remaining provisions of s 44, subsections (1) and (3).  Mr Ramsey’s application will stand or fall on them alone.

   Identical etc. trade marks

   44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a) 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.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   Note 3:  For priority date see section 12.

3. Relevantly, I have already found that the goods set out in the conflicting application and registration are the same or at least similar for the purposes of s 14(1), that the trade marks are deceptively similar for the purposes of s 10, and that Smith’s registration has the earlier priority date.  Section 44(1), as the examiner concluded, is fully enlivened.

4. The only relevant avenue by which this application may now avoid refusal is subsection 3, which allows:

   (3) If the Registrar … is satisfied:

   (a) that there has been honest concurrent use of the 2 trade marks; or
   (b) that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:  For limitations see section 6.

5. Now, of these provisions I am satisfied that Mr Ramsey’s coining of the trade mark in 1998 was honest.  However, Mr Ramsey was perhaps reckless in 2001 in bringing goods to market in the face of Smith and its storm of publicity.  It may be that, as his submissions suggest, Mr Ramsey was outraged that Smith would propose to do just what he himself was proposing to do, but it is also very arguable that there was a trace of sharp business practice about Mr R’s decision to shelve DINKI DI-NEMITE and proceed with AUSSIE MITE at the time he did.  In his final written submissions, Mr Ramsey gives unsworn evidence refuting this.  Such unsworn evidence made in this way can only be categorised as “too little, too late” when the onus has at all times been on him to establish, positively, the honesty of his use.  It is perhaps understandable that Mr Ramsey did not mention the change of trade mark when putting his evidence to the examiner to gain acceptance.  His focus at that time appears to have been on the honesty of his adoption of the trade mark, which he coined in 1998.  However, he has relied on further evidence in this matter, responsive to Smith’s evidence disclosing his own change of trade marks.  He did not give specific evidence, even at that late point, about his motivations.  It is not for me to speculate about them and I stress that I do not make a finding of dishonesty.  However, the matter of honesty not being positively established, I am not prepared to apply the relevant provision.

6. Be that as it may, Mr Ramsey has persevered and his product remains on the market[10] without, so far as I can see, causing any confusion.  Here Smith is probably caught by one of Mr Smith’s assertions.  If I take him at his word and there had been any confusion in the time since May 2001, he would probably have become aware of it.  I think this, plus Smith’s apparent failure to use its trade mark – thereby perhaps rendering it vulnerable to the removal provisions of s 92 – would make registration of Mr Ramsey’s trade mark proper.  Section 44(3)(b) is therefore applicable.

   [10] Mr Ramsey’s annual spending on advertising is not large but his sales are stated in his evidence to just over a hundred thousand dollars per annum.

   Conclusion

7. My decision is that no ground of opposition has been established.  I accept Ms Baird’s submission that this would need to be done only on the balance of probabilities: CliniqueLaboratories Inc v Luxury Skin Care Brands Pty Ltd [2003] FCA 1517 at 12-13, but Smith has not met such an onus.

8. This application may proceed to registration under the provisions of s 44(3)(b) 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.

9. I direct that Smith pay Mr Ramsey’s costs in terms of the official scale.

   T. E. Williams
   Hearing Officer
   Trade Marks Hearings
   27 September 2006