Energy Beverages LLC v Lava Coffee International Pty Ltd

[2019] ATMO 144

TRADE MARKS ACT 1995

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

Re:Opposition by Energy Beverages LLC to registration of trade mark application number 1865716 (classes 30, 35, 43) – stylised hook/flame device - in the name of Lava Coffee International Pty Ltd

DELEGATE:

Cristy Condon

REPRESENTATION:

Opponent: Siobhan Ryan of counsel and Elizabeth Godfrey of Davies Collison Cave

Applicant: Not represented

DECISION:

2019 ATMO 144

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pressed ss 44, 60, 42(b) – none established – trade mark will proceed to registration.

Background

1. This decision is in respect of an opposition under section 52 of the Trade Marks Act 1995 (‘Act’) by Energy Beverages LLC (‘Opponent’) to registration of the following trade mark:

Trade Mark No.               1865716

Trade Mark  

(‘Trade Mark’)

Applicant  Lava Coffee International Pty Ltd

Filing date  14 August 2017

Specification of goods                  Class 30: Coffee; ground and whole bean coffee; coffee

extracts; instant coffee; coffee substitutes; coffee concentrates; coffee essences; coffee flavourings; coffee mixtures; decaffeinated coffee; flavoured coffee; coffee based beverages including coffee beverages with milk; cold coffee based drinks including drinks blended with milk and ice; tea; herbal and non-herbal tea; tea extracts; tea substitutes; tea-based beverages including iced tea and chai tea; preparations with a coffee and tea base; cocoa; cocoa based beverages including cocoa beverages with

milk; aerated beverages with coffee, cocoa or

chocolate; flavourings for beverages (other than essential oils); snack bars containing grains, nuts and/or dried fruit; dessert products including tarts, cakes, trifles, crumbles, puddings, rice pudding and chocolate mousse;

pizzas; pasta products; baked goods including quiches, pies, meat pies, sausage rolls, pasties, biscuits and

cookies; bakery products including, breads, muffins, doughnuts, croissants, bagels and scones; sandwiches including open sandwiches and toasted sandwiches; pasta salads; rice salads

Class 35: Wholesaling and retailing of food and drinks including tea and coffee and related products; retail coffee and tea store services; retailing of coffee via mobile carts, trailers and vans; providing management assistance relating to coffee and tea stores; coffee and tea store franchising services

Class 43: Services for providing food and drink; cafe services; coffee bar and coffee house services; coffee shop services; snack bars; take-away food and drink

services; mobile cafe services for providing food and drink (‘Applicant’s goods and services’)

1. The Trade Mark was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 1 February 2018.

1. The Opponent filed a Notice of Intention to Oppose on 4 April 2018, followed by a Statement of Grounds and Particulars (‘SGP’) on 26 April 2018.

1. The Applicant filed a Notice of Intention to Defend on 14 May 2018.

1. The Opponent filed evidence in support of its opposition. This consists of a declaration made by Rodney Cyril Sacks (Chairman and Chief Executive Officer of Monster Beverage Corporation and its subsidiaries which include the Opponent) dated 13 August 2018 (‘Sacks’) with Exhibits RCS-1 to RCS- 6, RCS-6A. RCS-6B, RCS-6C, RCS-6D and RCS-7 to RCS-20.

1. The Applicant did not file any evidence in this matter.

1. On 14 November 2018 the Opponent requested a hearing.

1. In a letter dated 15 November 2018 the Applicant’s agent stated:

The Applicant does not wish to request, or participate in, a hearing. However, the Applicant wishes to submit, for the record, that their non-participation in the proceedings should not be construed as acceptance or recognition that the Opponent’s case has merit. In fact, the Applicant considers the opposition to have no basis and because of this, they do not wish to incur substantive and unnecessary costs in defending the proceedings.

We ask that this letter is included in the materials to be provided to the Delegate in due course for consideration in determining this matter.

1. A hearing was scheduled for 9 May 2019. Prior to the hearing, the Opponent filed written submissions.

1. The matter came before me, a delegate of the Registrar of Trade Marks in Canberra on the nominated date. The Opponent was represented at the hearing by Siobhan Ryan of counsel who was assisted by Elizabeth Godfrey of Davies Collison Cave. The Applicant was not represented at the hearing.

Grounds, Relevant Date and Onus

1. In the SGP the Opponent nominates the grounds of opposition under ss 42(b), 44 and 60 of the Act. All of these grounds were pressed at the hearing.

1. The Opponent bears the onus of establishing at least one of the grounds of opposition.1 The standard of proof is the ordinary civil standard of the balance of probabilities.2

1 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

2 Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

1. The rights of the parties are to be determined as at the date of the application3 which is generally, but not always, the filing date4. For the purposes of ss 44 and 60 which speak of the priority date, the relevant date is 14 August 2017 which, in this case, is the same as the filing date of the application. Section 42, however, does not refer to a filing date or a priority date. However, I will proceed on the basis that the filing date of 14 August 2017 is the ‘Relevant date’ at which to assess all of the grounds in this proceeding.5

Evidence

1. The Sacks declaration claims the Coca-Cola Company created and sold the so called ‘BURN’ energy drinks featuring a flame device. In 2015, the Coca-Cola Company transferred ownership of the BURN brand to Monster Beverage Corporation, and through its subsidiary the Opponent, continues to distribute the energy drinks under the BURN brand globally.

1. The Opponent brands/trade marks include BURN, BURN ENERGY DRINK, BURN INTENSE ENERGY brands and the following Flame Device Marks which are used on, and in relation to, energy beverages.

16.

MARK	NUMBER	OWNER	FILING DATE	CLASSES	STATUS
1547231	Energy	20/03/13	32: Beverages,	Registered
Beverages LLC	including,
drinking
waters,
flavored
waters, mineral
and aerated
waters; and other non-
alcoholic
beverages,
including, soft
drinks, energy
drinks and
liquid energy

3 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

4 See sections 6, 12, and 72 of the Act.

5 Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [45] per Yates J.

supplement beverages; concentrates and powders for making beverages
1797885	Energy Beverages LLC	21/09/16	32: non- alcoholic beverages; beer	Registered

1. The Flame Device Marks have been filed or registered in over 125 countries/territories.

1. The Opponent claims that in recent years the revenue generated by the BURN brand (which includes the Flame Device Marks) is in the multi millions of dollars worldwide. However, the Opponent has not provided revenue figures for the Australian market. Indeed, the Opponent sells its BURN energy drink featuring the Flame Device Marks to approximately 60 nations and territories throughout the world and none of these are Australia.6

1. The Opponent’s marketing strategy focuses on the sponsorship of major sporting events, athletes, athletic competitions, music festivals and artists which appeal to the primary target demographic aged 18 to 34 years. These events include televised events with a global audience reaching millions of Australians and include prestigious events such as the Lotus F1 Racing Team and the Sochi Olympic Games.

1. The evidence also shows that the Opponent maintains social media pages, including Facebook®, Twitter® and Instagram®.

1. Mr Sacks claims that because the Opponent ‘has been sponsoring (and continues to sponsor) athletes and events which have received (and continue to receive) significant exposure in Australia

6 Sacks, [15] – [19].

since approximately 2002, there has been public exposure and awareness of the Flame Device Marks, the BURN energy drinks and the BURN Marks in Australia.’7

1. Mr Sacks states:

In almost all, of the examples of use exhibited to this declaration, the Flame Device is prominently featured. It follows that the Flame Device Mark has received prolific exposure through all aspects of Energy Beverages advertising and promotion of the BURN energy drinks, and extensive sponsorship arrangements spill over to Australia from overseas. As a result, the Flame Device Marks have an identity of their own, have become known in Australia and are easily recognisable as an indicator of origin of the Energy Beverages products.’

1. Mr Sacks also claims that each of the Flame Device Marks predates the priority date of the Trade Mark. In Exhibit RCS-20 there are screenshots from dated 9 July 2018. I have reproduced two of the images below:

Section 44

1. Section 44 of the Act relevantly provides:

7 Sacks, [58].

(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.

…

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

1. The Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods, similar services and or closely related goods or services.

1. In the SGP the Opponent has nominated the Flame Device Marks as the basis for this ground of opposition. I have set out the details of these trade marks at [17] of this decision. It is clear that the Flame Device Marks are in the name of the Opponent and each of their priority dates is earlier than the Relevant date.

1. The pertinent and most immediate observation in this matter is that there are obvious differences between the relevant trade marks, however the Opponent has pressed that the marks in question are substantially identical.

1. Accordingly, pursuant to s 44 I will proceed to consider whether the Flame Device Marks are substantially identical to the Trade Mark.

Substantially Identical Trade Marks

1. The side by side test in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’)8 is the accepted test for assessing whether a trade mark is substantially identical to another mark. With this in mind, I have compared the Trade Mark with each Flame Device Mark side by side, noted their similarities and differences and the importance of these having regard to the essential features of each mark and the total impression of resemblance or dissimilarity that emerges from the comparisons.

1. The Opponent submits that the essential feature of each mark is the device of a flame and ‘the fact that the trade marks are not exactly identical does not mean they are not ‘substantially identical’. The Opponent cites a number of office decisions9 and the High Court’s decision in E & J Gallo Winery v Lion Nathan10 in support of this proposition.

1. In the interest of brevity, it is my observation that the ultimate finding in each of these earlier decisions was that the differences in the respective marks do not detract from the total impression of similarity and/or the essential feature of the marks in question was the same and the differences between them minor or inconsequential. This is not the case here.

1. In my opinion the Trade Mark is not obviously identifiable as a flame. This is due to its shape and because it is rendered in one solid block colour. The Trade Mark could just as easily be recognised as a stylised hook. In contrast, each of the Flame Device Marks are far more realistic pictures of flames. The Trade Mark, at best, is a heavily stylised cartoon-like flame in one solid colour, not a realistic flame depicted in colour variations or graded shading variations as shown in each of the Flame Device Marks depicted below.

8 Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 (‘Shell’).

9 Fresh Intellectual Properties Inc v Russell Goldman [2006] ATMO 21 at [14]; Ferrari Spa v for Wicara Enterprises [2010] ATMO 96; University of Sydney v Cameron Jenkinson and Bim Ricketson [2002] ATMO 106

10 E & J Gallo Winery v Lion Nathan (2010) 241 CLR 144 (Gallo) at 170 [69] per French CJ, Gummow, Crennan and Bell JJ, Heydon J agreeing at 175 [87].

1547231  Trade Mark  1797885

1. For the reasons described above, I am satisfied that the trade marks do not share the same essential feature. Taking into account the differences between each of the Flame Device Marks and the Trade Mark, there is not a total impression of similarity. I am satisfied the Trade Mark is not substantially identical to either of the Flame Device Marks. Accordingly, I turn now to consider whether the Trade Mark is deceptively similar to either of the Flame Device Marks.

Deceptively Similar Trade Marks

1. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

[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.

1. The concepts of ‘deceive’ and ‘cause confusion’ were clarified in the New Zealand case of Pioneer Hi- Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.11

1. In terms of applying the concept of deceptive similarity ‘the marks are to be compared both visually and aurally’12 and all of the surrounding circumstances are relevant to the consideration:

   You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely

11 [1979] RPC 410, 423.

12 Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2010] FCA 1380, 89 IPR 457, [111]; see also Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [173] per Katszmann J.

to happen if each of those trade marks is used in a normal way as a trade mark for the goods.13

1. In Shell Windeyer J provided the further comments about assessing deceptive similarity:

The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

Therefore, the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].14

1. Following on from the Shell case, the Full Federal Court has said that to correctly apply the test for deceptive similarity, first determine the ‘dominant cognitive cue’15 of each of the trade marks under comparison or, in other words, the essential feature of the trade marks under comparison. The substance of the test itself has not changed.

1. In terms of the Trade Mark and the Flame Device Marks, the visual impact of the marks is so completely different that, in my opinion, it seems quite unlikely that the trade marks would be mistaken for each other or denote a common trade source.

1. Conceptually the Opponent’s trade mark number 1547231 is quite angular and has three or four flames. The Opponent’s trade mark number 1790885 has more flames and a campfire shape. The Trade Mark could be described as having one or two ‘flames’.

1. On an aggregate level all three trade marks can be described as flames but this is not akin to them being deceptively similar trade marks. It is about how the trade marks will be remembered by a potential purchaser.

1. In the present case, I have already articulated that the Trade Mark would be no more likely to leave an impression of a flame than it would a stylised hook. I appreciate the Opponent’s concern in regard to the Applicant’s use of a far more realistic flame device on its takeaway coffee cups as depicted in the Sacks declaration and reproduced in this decision at [23]. However, that is not the

13 Pianotist Co.’s Application (1906) 23 RPC 774, [777].

14 Shell, n8; at 414-415.

15 Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; see also Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83.

trade mark under opposition. The Trade Mark does not, in my opinion, connote a realistic flame. It is more likely to be remembered as being a cartoon hook or cartoon flame mark. The Flame Device Marks, on the other hand, are likely to be remembered as realistic flame devices - one looking much more like a campfire.

1. For the reasons above, I am satisfied there is not a ‘real and tangible danger’ that the Trade Mark would be imperfectly recollected as being any of the Flame Device Marks so as to cause deception or confusion.16

Comparison of Goods and Services

1. The Opponent’s evidence has not been controverted and I have not found either of the Flame Device Marks substantially identical or deceptively similar to the Trade Mark. Therefore, I am not required to undertake a detailed look at the potential similarity of the goods and services in question.

1. The section 44 ground is not established.

Section 60

1. Section 60 of the Act 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.

1. To succeed under this ground of opposition, the Opponent must show that a reputation existed in another trade mark in Australia amongst a significant or substantial number of people17 at the Relevant date. The Opponent then needs to establish that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.

16 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, (1954) 91 CLR 592 per Kitto J.

17 Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd (‘Conagra’) [1992] FCA 159.

1. In the SGP the Opponent has particularised this ground of opposition as follows:

Reference is made to the details of the Opponent’s reputation set out in the Particulars in 2. above. As a result of the Opponent’s extensive reputation in Australia (as a result of exposure and/or use of one or more of the BURN trade marks in Australia since as early as 2001) and internationally, in the BURN trade marks, consumers are likely to be deceived or confused into believing that the goods and services offered and provided under the Opposed Mark are the Opponent’s goods or services, somehow associated or affiliated with the Opponent or endorsed by or sponsored by the Opponent, when that is not the case.

1. I turn to consider the first consideration under s 60, that is, whether the Opponent, at the Relevant date had acquired the requisite reputation in the Flame Device Marks.

1. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (‘McCormick’)18 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?

1. The Opponent has filed evidence that the Flame Device Marks had, before the Relevant date, acquired a reputation outside Australia and by virtue of marketing activities such as the sponsorship of international sporting events, athletes and artists that the Opponent has acquired a spillover reputation in Australia with respect to its Flame Device Marks as applied to energy beverages. The evidence before me establishes that as a matter of fact the Flame Device Marks had, prior to the

18McCormick & Company Inc v McCormick [2000] FCA 1335 [81] (‘McCormick’).

Relevant date acquired a reputation in Australia amongst a significant or substantial number of people in relation to energy drinks. As such the first part of the test for s 60 has been met.

1. Accordingly, I find myself left to consider what I deem to be the most troublesome part of the Opponent’s opposition under s 60. That is, whether the registration of the Trade Mark would deceive or cause confusion because of the prior reputation of either of the Flame Device Marks.

1. It is well known that the concepts of deceive or cause confusion are inexplicably linked to how similar the respective trade marks are. In Roger Seller & Myhill Pty Ltd v Reece Pty Ltd19 the delegate said:

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

   What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.

1. In Coca Cola Company v All-Fect Distributors Ltd20 Kitto J explained that there is no limit on the nature of the confusion and it is enough that the minds of the public are mixed up or perplexed about the relationship between the trade marks.

1. It is also important to recognise that reputation can be a double-edged sword which either reinforces or mitigates difference between the trade marks under comparison.21

1. I have already found that the Trade Mark is not substantially identical with, or deceptively similar to, any of the Flame Device Marks

19 [2010] ATMO 5, [39] – [40].

20 (1999) 96 FCR 107, [39], citing Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, 423.

21 Flight Centre v World Flight Centre [2003] ATMO 60, [22].

1. On the basis of the dissimilarity between the Trade Mark and each of the Flame Device Marks I am satisfied, on the balance of probabilities, that no such deception or confusion would eventuate if the Trade Mark was registered in respect of the Applicant’s goods and services.

1. The s 60 ground of opposition has not been established.

Section 42(b)

1. Section 42(b) of the Act relevantly provides:

An application for the registration of a trade mark must be rejected if:

…

(b) its use would be contrary to law.

1. Under this ground of opposition the Opponent must demonstrate that use of the Trade Mark would

   not could be contrary to law.22

1. In the SGP the Opponent has particularised this ground of opposition as follows:

The Opponent is the owner of the BURN device trade marks set out in the Particulars to Ground 1. above. The Opponent has an extensive international reputation in the BURN device trade marks, including Australia. The Opponent has been sponsoring (and continues to sponsor) athletes and events which have received (and continue to receive) significant exposure in Australia since approximately 2002. The Opponent’s predecessor in title commenced selling energy drinks with one or more of the BURN device trade marks as early as 2001. Based on the reputation in the BURN device trade marks in Australia in relation to energy beverages, consumers are likely to be misled or deceived into believing that the goods and services offered provided under the Opposed Mark are those of the Opponent or somehow associated or affiliated with the Opponent in breach of section 18 of the Australian Consumer Law 2010 (Cth). Offering and providing goods and services claimed in the Opposed Mark, under the Opposed Mark, also suggests that the trade mark Applicant and its goods and services are associated or affiliated with the Opponent or that the Applicant has obtained the Opponent’s sponsorship or approval to use the Opposed Mark, when that is not the case. This conduct is in breach of section 29 of the Australian Consumer Law 2010 (Cth) that the Opponent relies on ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010. The Opponent also asserts that use of the Trade Mark would amount to passing off.

22 Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].

1. The Opponent has failed to establish a ground of opposition under s 60 of the Act. This has a direct consequence in terms of the s 42(b) ground of opposition because the test for misleading or deceptive conduct under ss 18 and 29 of the Australian Consumer Law is a more stringent test than that for deception or confusion under s 60.²³

1. In the words of the hearing office in Monster Energy v USA Nutraceuticals Inc24:

Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.25 Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.26

1. Accordingly, the s 42(b) ground of opposition has not been established.

Decision

1. Section 55 of the Act relevantly provides:

(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.

23 Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

24 [2017] ATMO 22, [58].

25 [2003] FCA 104, [107].

26 [1989] FCA 506, [40] (citations omitted).

1. The Opponent has not established a ground of opposition.

1. Accordingly trade mark number 1865716 may proceed to registration one month from the date of this decision.

1. If the Registrar is 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(s) should otherwise be in accordance with the Court’s order or direction.

Costs

1. The parties have sought costs. I award costs against the Opponent in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

Cristy Condon Hearing Officer

Oppositions and Hearings Trade Marks and Designs 3 October 2019