Drool by Dr Chris Brown Pty Ltd v Vetalogica Pty Ltd

[2023] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by Drool by Dr Chris Brown Pty Ltd to registration of trade mark application no. 2155852 –DROOLIES (class 31)- in the name of Vetalogica Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Macpherson + Kelley Applicant: Pizzeys Patent and Trade Mark Attorneys Pty Ltd
Decision:	2023 ATMO 25 Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 42(b), 44, 58, 60 and 62A pressed – ground of opposition established under section 60 registration of trade mark refused.

Background

1. Vetalogica Pty Ltd (‘the applicant’) filed trade mark application number 2155852 on 15 February 2021 in class 31 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  DROOLIES (‘the Trade Mark’)

   Trade mark application no: 2155852            

   Filing Date:  15 February 2021

   Specification:  Class 31: Pet food

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks on 16 July 2021. Subsequently Drool by Dr Chris Brown Pty Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).            

4. This matter was delegated to me to decide on 25 January 2023. The applicant is represented Pizzeyas Patent and Trade Mark Attorneys Pty Ltd. The opponent is represented by Macpherson + Kelly.

   Grounds of Opposition

5. The Notice nominated five grounds of opposition under the Trade Marks Act 1995 (‘the Act’) being sections 42(b), 44, 58, 60 and 62A. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

   [2] [2015] FCAFC 156, [133] Besanko, Jagot and Edelman JJ

   [3] [2006] FCA 1663, [26]

   Evidence

6. The evidence in this matter consists of the following declarations:

   Evidence in Support

   ·Declaration of Chris Brown (‘Brown 1’) dated 18 February 2022 accompanied by exhibits CB-1 to CB-16

   Evidence in Answer

   ·Declaration of Scott Shahidi dated 18 June 2022 accompanied by exhibits SS-1 to SS-11

   Evidence in Reply

   ·Declaration of Chris Brown dated 25 August 2022 accompanied by exhibits CB1 and CB2  

   Discussion

   Section 60 - Reputation in Australia

7. 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.

8. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in the trade mark below:

   (“opponent’s trade mark”)

9. The opponent’s trade mark has also obtained registration. Trade Mark Registration no. 2006085 is registered in classes 3, 5, 6, 16, 18, 20, 21, 27, 28, 31, 36, 43, 44 and 45. The priority date is 10 May 2019. Unlike section 44 of the Act, section 60 does not require that the goods and services upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that the goods for which the opponent’s trade mark is registered are the same as those of the Trade Mark and that the services are similar to those goods of the Trade Mark.

10. It is for me to determine whether the opponent has established that before 15 February 2021 the opponent’s trade mark was recognized by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of its Trade Mark would be likely to cause the public confusion.

11. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: [4]

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[5]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [4] [1999] FCA 1020 [50]

    [5] [1973] HCA 43; (1973) 129 CLR 353, 362

12. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J:

    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”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [6] [2000] FCA 1335 [81]

13. Brown 1 states that the opponent’s trade mark was used on its branded services since at least 27 February 2019 and offers of sale of its branded goods commenced in 2020 to major Australian retailers. This is supported by exhibit CB-6 accompanying Brown 1 which contains a copy of a Facebook post from Dr Brown’s social media account dated 27 February 2019 detailing that advice and information on pets would be available through his new initiative “Drool By Dr Chris Brown”. However, I note that Dr Brown and his followers immediately shorten the opponent’s trade mark and refer to it as “DROOL” solus[7].

    [7] Exhibit CB-9 accompanying Brown 1

14. Exhibit CB-2 accompanying Brown 1 contains copies of printouts from the opponent’s website which the opponent registered and commenced using in 2019. The opponent’s trade mark is prominently displayed on all the pages of the website and on the articles and videos written by the Dr. Brown. In exhibit CB-3 there is a break down of the opponent’s Profit and Loss from the years 2019 until 2022. I note that the profit for the first two years of trading is relatively modest with considerable expenditure on services which would commonly be associated with starting a business. Interestingly, the opponent’s webpage, blog and articles are all services which bear the opponent’s trade mark and are provided for free to the Australian public but have still generated profit for the opponent. This profit grew for the opponent over the years 2019 and 2020 despite the challenging economic conditions present in 2020.

15. Indeed, in assessing the opponent’s social media pages along with the website, it is clear that while the evidence focusses on the opponent’s use of the Trade Mark on its pet food which commenced being sold after the priority date of the Trade Mark, most of the opponent’s online traffic is from Australian consumers accessing the opponent’s articles and pet advice. Given the numbers of individual ‘hits’ on the opponent’s webpage per week in the end of 2021 and beginning of 2022, it is clear that the opponent had a very significant and well-established following of Australian consumers prior to the launch of its dog food. This is keeping in mind that the vast majority of the traffic was accessing the articles and advice rather than the ‘shop’ pages where the dog treats were available for purchase.[8] While the exact number of webpage hits or social media followers that the opponent had prior to the priority date of the Trade Mark is not clear, what is clear from the totality of the evidence before me is an established pattern of marketing and growth in popularity within the Australian marketplace since the opponent commenced business.

    [8] Exhibit CB-3 accompanying Brown 1

16. According to Brown 1 the opponent began developing its range of pet food bearing the opponent’s trade mark in June 2019 and goods bearing the opponent’s trade mark were provided for sale in retail stores and directly from the opponent from November 2021, according to Exhibit CB-6 which demonstrates a successful and growing launch of the pet food.

17. The evidence supports the opponent’s assertions that before the Priority Date of the Trade Mark, the opponent used its trade mark in relation to the registered services and had an extensive plans in train for the development and sale of its goods. The opponent engaged with major retailers for the sale of goods bearing the opponent’s trade mark in 2020 which is before the priority date of the Trade Mark[9]. As mentioned earlier, the evidence establishes that the opponent’s trade mark is often shortened and referred to as “DROOL” by the opponent and its followers from at least February 2019[10].

    [9] Exhibits CB-3 to CB-6, CB-8, CB-10, CB-11 accompanying Brown 1

    [10] Exhibit CB-6 accompanying Brown 1

18. The opponent advertised its trade mark through various mediums including the opponent’s website,[11] Facebook, Instagram, Twitter as well as third party influencer social pages,[12] major third party retailers including Petstock and their websites[13] and on the goods themselves[14] along with television appearances[15] and newspaper articles[16]. The followings on the social media pages runs to the hundreds of thousands. While these pages are dated after the priority date, it is unlikely that such a following occurred only after the opponent commenced selling its pet food in late 2021. It is much more likely that the following of the opponent commenced when the opponent commenced its business and grew over time.

    [11] Exhibit CB-3 accompanying Brown 1

    [12] Exhibit CB-6 accompanying Brown 1

    [13] Exhibits CB-4 and CB-5 accompanying Brown 1

    [14] Exhibits CB-5, CB-6, CB-8, CB-10, CB-11 accompanying Brown 1

    [15] Exhibit CB-11 accompanying Brown 1

    [16] Exhibit CB-8 accompanying Brown 1

19. Brown 1 outlines the total unit sales for the opponent’s sales starting from the initial presentations to potential third party retailers in 2020 as detailed in confidential exhibits CB-4 and CB-8 accompanying Brown 1. The growth and the total sales are significant given that much of the business development took place during the pandemic. The same can be said for the media and marketing expenses which are provided from the years 2019 to 2022 respectively. The growth in the figures is impressive given the short period of time the opponent had been operating.

20. I am satisfied that the opponent’s trade mark had acquired a significant reputation in Australia before the priority date of the Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark by the applicant would be likely to deceive or cause confusion.

21. Overall I consider that, given the reputation acquired by the opponent’s trade mark, a significant number of consumers would at the very least experience a reasonable doubt[17] as to the existence of some sort of connection between the opponent’s trade mark and the Trade Mark if it were used on the pet food goods specified in the application. In considering the similarities between opponent’s trade mark and the Trade Mark it becomes clear that the respective trade marks share some striking similarities.

    [17] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [594-5]

Opponent’s trade mark	Trade Mark
DROOLIES

1. Both trade marks contain the striking and main word DROOL. While the opponent’s trade mark does contain the additional words BY DR CHRIS BROWN, these words are in a small font beneath the main and striking element of the trade mark. The evidence demonstrates numerous usages of the opponent’s trade mark being shortened and used as the single word DROOL by the opponent, Mr Brown and the opponent’s followers and customers. While the Trade Mark does contain the suffix “-ies”, the Trade Mark remains a diminutive of the opponent’s trade mark with the root of the Trade Mark being the word DROOL. I believe that these are striking similarities between the respective trade marks which add to the potential of confusion taking place between them in the marketplace. The applicant has pointed out that the opponent’s trade mark is often accompanied by the additional word elements “BY DR. CHRIS BROWN”. I agree that there are numerous instances when the word DROOL is used with the additional word elements, however, it is also clear to me that the opponent also has a strong reputation in its DROOL trade mark as well as the words DR CHRIS BROWN. To suggest, in light of the opponent’s evidence that because the words DR CHRIS BROWN are often used in conjunction with the word DROOL means that the opponent does not have a reputation in DROOL sufficient to cause confusion is a fallacy.

2. Trade marks are commercially often used in conjunction with each other and while some may be ‘limping’ trade marks which rely heavily on the presence of another element or trade marks in order to denote trade origin that is not the case with the opponent’s trade mark. The opponent’s trade mark is prominent and striking in its use on goods and services with advertising which precludes any finding of its being a ‘limping’ trade mark.

3. The opponent has clearly invested money and time in promoting its trade mark whose main and striking element is the word DROOL. The opponent has been consistent and methodical in growing its business through investing in well-planned and executed brand extension. While section 60 does not require a finding that the trade mark are substantially identical or deceptively similar, I find that the similarities between the respective trade marks taken together with the opponent’s demonstrated reputation in Australia adds to the likelihood of confusion taking place in the marketplace.

4. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all of the applicant’s goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

   Decision

5. 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:          Forlimitationssee section 6.

6. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly I refuse to register trade mark application no. 2155852.

   Costs

7. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Oppositions and Hearings

   28 February 2023