Energy Beverages LLC v M.D Visage Pty Ltd
[2018] ATMO 53
•16 April 2018
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 1660034 (5, 18, 21, 25, 29, 30, 32) - PROBURN - in the name of M.D. Visage Pty Ltd.
Delegate: | Katrina Brown |
Representation: | Opponent - Opponent - Stephen Rebikoff of counsel instructed by Elizabeth Godfrey of Davies Collison Cave Applicant - Walsh & Associates |
Decision: | 2018 ATMO 53 Trade Marks Act 1995 – s 52 opposition – grounds pursued under ss 44 and 59 – s 44 established in relation to some goods – s 59 not established – amendment to goods not made – registration of trade mark refused. |
Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Energy Beverages LLC (‘the Opponent’) to the registration of the following trade mark:
Trade Mark Number: | 1660034 |
Trade Mark: | ProBurn (‘the Trade Mark’) |
Applicant: | M.D. Visage Pty Ltd (‘the Applicant’) |
Filing Date: | 21 November 2014 |
Specification: | Class 5: Dietetic substances including special dietary foods and beverages and meal replacement substances; sports nutrition products; medicated and pharmaceutical sweets; food and nutritional supplements being muscle-building food supplements; protein, vitamin and mineral supplements in powder or liquid form; dietetic preparations for muscle-building including special dietary foods and beverages; herbal supplements, preparations and extracts; herbal dietary supplements; protein, vitamin, herbal and mineral supplements in powder, liquid, tablet, capsule and gel capsule form; dietary protein supplements, preparations and extracts; carbohydrate based dietary supplements, preparations and extracts; enzyme dietary supplements; appetite suppressant pills; appetite suppressants for medical purposes; herbal-based appetite suppressants; agents for activating the metabolism; fibre supplements, preparations and extracts; non-carbohydrate dietary supplements, preparations and extracts; nutritional calcium supplements and carbohydrate supplements, preparations for use in weight loss and weight stabilisation as part of medical treatment; preparations for stimulating the metabolism; supplements, namely nutritional supplements including mineral, vitamin and dietary supplements for medical use; nutritional and health food supplements for persons with special dietary requirements; capsules of dietary, vitamin and mineral substances for medical use in weight control; foodstuffs for use in the dietary management of obesity and insulin resistance including special dietary foods, beverages and meal replacement substances; protein dietary supplements and protein enhanced foodstuffs; health and nutritional foods including appetite control snacks and beverages including food bars and shakes; stamina and energy food products and foodstuffs; protein granules and powders, energy bars; food supplements based on animal products (‘the Applicant’s Goods’) |
The trade mark application 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 30 June 2016.
The Opponent filed a Notice of Intention to Oppose on 29 August 2016 followed by a Statement of Grounds and Particulars (‘SGP’) on 27 September 2016.
The Applicant filed a Notice of Intention to Defend on 15 October 2016.
In due course the Opponent filed evidence in support of the opposition. The Applicant did not file evidence in answer.
The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 23 January 2018. The Opponent was represented by Stephen Rebikoff of counsel instructed by Elizabeth Godfrey of Davies Collison Cave. The Applicant was not represented at the hearing and written submissions were not filed on its behalf.
Grounds of opposition and onus
In the SGP the Opponent nominated grounds of opposition under ss 44 and 59 of the Act.
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].
The date at which the rights of the parties are to be determined is 21 November 2014 (‘the relevant date’), which is the filing date in this matter.
Evidence
The Opponent relies on the following declaration:
Declaration of Rodney Cyril Sacks (Chief Executive Officer of Monster Beverage Corporation and its subsidiaries including the Opponent) made on 6 January 2017 with Exhibits RCS-1 to RCS-19 (‘Sacks Declaration’).
As stated above, the Applicant did not file evidence in this matter.
The Opponent
In the Sacks Declaration it is declared that the Coca-Cola Company created and sold energy drinks under the BURN brand from 2000 to 2015. In 2015 the Monster Beverage Corporation, formerly New Laser Corporation, acquired the BURN brand from The Coca-Cola Company. The Opponent, a subsidiary of the Monster Beverage Corporation, distributes BURN energy drinks globally.
The Opponent is the registered owner of the following trade marks in Australia:
| Trade Mark No. | Trade Mark | Registration Date | Specification |
| 843738 | BURN | 25 July 2000 | Class 32: Beverages in class 32 excluding beers but including non- alcoholic drinks and beverages, mineral and aerated waters; soda water, dry ginger ale, tonic water, lemon squash, bitter lemon, lemonade, orangeade; fruit juices, fruit juice drinks and beverages containing fruit juice and fruit juice flavouring, including mineral and aerated water containing fruit juice or fruit juice flavouring; sports drinks including electrolyte replacement beverages for sports; energy drinks including double-caffeine drinks; dietetic and low calorie forms of all the foregoing goods; carbonated and non-carbonated soft drinks and concentrates for making same including beverages in containers; concentrates, syrups, powders and other preparations and substances for making all the foregoing goods |
| 1526464 | BURN | 19 Nov 2012 | Class 32: Beers; beverages, including, drinking waters, flavoured waters, mineral and aerated waters; and other non-alcoholic beverages, including, soft drinks, energy drinks and sports drinks; fruit drinks and juices; syrups, concentrates and powders for making beverages, including flavoured waters, mineral and aerated waters, soft drinks, energy drinks, sports drinks, fruit drinks and juices |
| 1563602 | 19 June 2013 | Class 32: Beverages, including, drinking waters, flavoured waters, mineral and aerated waters; and other non-alcoholic beverages, including, soft drinks, energy drinks and liquid energy supplement beverages; concentrates and powders for making beverages | |
| 1547231 | 20 Mar 2013 | Class 32: Beverages, including, drinking waters, flavoured waters, mineral and aerated waters; and other non-alcoholic beverages, including, soft drinks, energy drinks and liquid energy supplement beverages; concentrates and powders for making beverages |
The Applicant
The Applicant did not file any evidence or submissions in this matter and the Opponent’s evidence does not provide any insight into the Applicant.
Section 44
Section 44 of the Act relevantly provides:
(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.
In the SGP, the Opponent nominated the following trade marks in support of this ground of opposition: 843738, 1526464, 1563602 and 15447231. The details of these trade marks are set out at [13] of this decision. At the hearing, counsel focused their submissions on trade mark numbers 843738 and 1526464 (‘Opponent’s Trade Marks’). I will do likewise in this decision.
To establish this ground of opposition the Opponent must show, in respect of at least one of the Opponent’s Trade Marks, that:
the Opponent’s Trade Marks have an earlier priority date than the Trade Mark;
the Opponent’s Trade Marks are held in the name of a person other than the Applicant;
the Opponent’s Trade Marks are registered in respect of goods which are similar to the Applicant’s Goods; and
the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Trade Marks.
From the information set out at [13] of this decision, it is evident that the Opponent’s Trade Marks are held in a name other than that of the Applicant and each has a priority date earlier than that of the Trade Mark.
In the Registrar of Trade Marks v Woolworths French J said:
The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.[3]
[3] [1999] FCA 1020 [39].
Applying this logic, my next consideration is whether the Applicant’s Goods are similar to the goods for which the Opponent’s Trade Marks are registered.
Similar goods
Pursuant to s 14(1) of the Act, similar goods are goods that are the same or of the same description. The concept of ‘goods of the same description’ is:
generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception.[4]
[4] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 [72].
To determine if goods are similar there are a number of factors to take into account including:
the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.[5]
[5] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.
In respect of the similarity between the Applicant’s Goods and those for which the Opponent’s Trade Marks are registered, the Opponent submits:
The Opposed Mark is sought to be registered in respect of a wide range of beverages, nutritional supplements and associated goods….
The Opponent’s BURN Marks are also registered in respect of a wide range of beverages, nutritional supplements and associated goods, including energy drinks, sports drinks, fruit drinks and juices, dietetic and low-calorie forms of drinks, and syrups, powders and preparations for making such drinks.
There can be no question that insofar as the goods included in the specification for the Opposed Mark are beverages or goods to be consumed in liquid form, they are the same as the goods in respect of which the BURN Marks are registered. Further, insofar as they are associated products such as nutritional supplements or energy products, they are clearly goods of the same description.
To the extent that there are goods that might be said to fall outside that description, it is for the Applicant, not the decision-maker, to establish a principled basis to differentiate between them: see Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited(2014) 106 IPR 281 at [231]. Indeed, where (as here) the Applicant has made no attempt to defend the application, any attempt by the decision-maker to do so would be quite arbitrary: see Bayerische Motoren Werke AG v Home Focus Development Limited [2016] ATMO 110 at [37] – [38].[6]
[6] Opponent’s Hearing Submissions, 9[25].
As a starting point, I note that the Opponent’s Trade Marks are registered in respect of class 32 only. Each of the Opponent’s Trade Marks has a broad claim for beverages. The combined effect of the two registrations is that they cover all beverages in that class, and also concentrates, syrups, powders and other preparations and substances for making beverages.
The Trade Mark claims a variety of beverages and beverage preparations in class 32. Applying the authorities, it is clear that all of the Applicant’s Goods in class 32 are the same and or of the same description as the goods for which the Opponent’s Trade Marks are registered.
Considering the factors set out at [22] of this decision, which can be summarised as the nature, use and trade channels of the goods, it is also evident that:
There are beverages in class 32, in respect of which the Opponent’s Trade Marks are registered, which are of the same description as some of the Applicant’s goods in class 5. For example, the scope of the Opponent’s Trade Marks in class 32 extends to dietetic beverages not adapted for medical purposes which I consider to be of the same description as the claims of the Trade Mark in class 5 which amount to a variety of dietetic beverages adapted for medical purposes.
There are beverages in class 32 in respect of which the Opponent’s Trade Marks are registered, which are of the same description as some of the Applicant’s goods in class 29. For example, the scope of the Opponent’s Trade Marks in class 32 extends to soya based beverages and whey beverages which I consider to be of the same description as the claims of the Trade Mark in class 29 for a variety of milk beverages and milk products including soya milk beverages.
I can also see merit in the Opponent’s point of view that its claims for energy drinks including double-caffeine drinks in class 32 are of the same description as the Applicant’s claims in class 30 for beverages containing caffeine. I am also mindful that the Opponent’s Trade Marks have broad claims in class 32 for concentrates, syrups, powders and other preparations and substances for making beverages which may be of the same description as some of the preparations claimed by the Applicant in classes 5, 29 and 30.
The Opponent has pointed me toward authorities suggesting that it is up to an applicant and not the decision maker to establish a basis on which to differentiate the goods and also that where an applicant has not defended its application it would be arbitrary for the decision maker to do so (see [23] of this decision).
In the matter before me I do think it would be arbitrary, in respect of some of the Applicant’s Goods in classes 5, 29 and 30, for me to differentiate which goods fall on the side of being similar and which goods fall on the side of not being similar to the goods for which the Opponent’s Trade Marks are registered. However, I do not consider it arbitrary to state that the following goods claimed by the Applicant are not similar to goods for which the Opponent’s Trade Marks are registered:
Class 5: Medicated and pharmaceutical sweets; appetite suppressant pills; appetite suppressants for medical purposes; herbal-based appetite suppressants; fibre supplements, preparations and extracts.
Class 30: Preparations having a base of cocoa or chocolate, chocolate products, confectionery, sweets; sugar; natural sweeteners; yeast; biscuits, cakes, desserts; breakfast cereals; royal jelly for human consumption; food bars based on confectionary.
I also consider the determination in respect of the similarity between the Applicant’s Goods in classes 18, 21 and 25 and the goods for which the Opponent’s Trade Marks are registered to be very straightforward. The variety of bags and accessories in class 18, household items in class 21 and clothing and accessories in class 25 claimed by the Trade Mark are not of the same nature, use or trade channels as the beverages and preparations for which the Opponent’s Trade Marks are registered. My view is that the Applicant’s Goods in classes 18, 21 and 25 are not similar to the goods for which the Opponent’s Trade Marks are registered.
The remaining question to be answered under s 44(1) of the Act is whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Trade Marks.
In this matter, the Opponent is not seeking to establish that the Trade Mark is substantially identical to the Opponent’s Trade Marks. I agree that the Trade Mark is not substantially identical to the Opponent’s Trade Marks.
Deceptively similar
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.
The concepts of ‘deceive’ and ‘cause confusion’ were explained 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.[7]
[7] [1979] RPC 410, 423.
In determining the question of deceptive similarity all of the surrounding circumstances must be considered:
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 to happen if each of those trade marks is used in a normal way as a trade mark for the goods…[8]
[8] Pianotist Co.’s Application (1906) 23 RPC 774, 777.
In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J provided the following insights on 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].[9]
[9] [1963] HCA 66 [13].
The word ‘burn’ is the only element in the Opponent’s Trade Marks and therefore it is plain that it is the impression that a person of ordinary intelligence would have of the Opponent’s Trade Marks. The Trade Mark also contains the word ‘burn’ but in combination with ‘pro’. As such, what I have before me is a ‘mark within a mark situation’; that is the Opponent’s Trade Marks are wholly contained within the Trade Mark.
There are a multitude of authorities and decided cases that involve ‘marks within marks’. Some of those cases line up on the side of deceptively similar and others on the side of sufficiently different. In this matter, the Opponent submits that:
There can be no question that the word “Burn” is the essential and distinguishing feature of both the BURN Marks [Opponent’s Trade Marks] and the Oppose Mark presented as a separate element within the Opposed Mark (as indicated by the use of the capital “B”) and is an unusual and inherently distinctive word in the context of beverages, nutritional supplements and associated goods. As such, it is clearly likely to be regarded by consumers as the dominant element of the Opposed Mark.
The second element of the Opposed Mark, the prefix “Pro”, is a well-known abbreviation for the word “professional” (especially in sport). When used at the start of the Opposed Mark, it is a descriptive term that qualifies the distinctive word “Burn” and suggests a variant of the “Burn” product produced for, or aimed at, professionals (such as professional athletes). Such a connotation is particularly likely to be conveyed in the context of energy drinks, nutritional supplements and sports drinks, where the goods are frequently promoted by, and associated with, such athletes.[10]
[10] Opponent’s Hearing Submissions, 5 [19].
In my opinion, the word ‘burn’ is an essential and distinguishing feature of the Trade Mark. The mere addition of the prefix ‘pro’ does not dilute the prominence of the word ‘burn’. Prefixes are put before a word or word element to add to or qualify its meaning. By its very construction, the Trade Mark gives rise to the word ‘pro’ acting as a qualifier of the word ‘burn’. This is further assisted by the capitalisation of the letters ‘P’ and ‘B’ in the Trade Mark.
The insight of Burnett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd is useful in this context:
“Polo” is also a quite distinctive word, and the taking of it is bound to cause confusion which the mere addition of the word “Club” will not dissolve. Bearing in mind that the test requires consideration of the customer with an imperfect recollection of the mark, it is important that the distinctive impact of the word “Polo” is likely to affect the mind although the presence or absence of the blander word “Club” may escape notice. At the same time, some persons may be quite aware that one mark contains the added word, and the other does not, but may yet think of “Polo Club” bed linen as a particular style of “Polo” bed linen (my emphasis added).
In my view, the common element in all of the trade marks, namely the word ‘burn’, may induce traders and the public into believing the Trade Mark and the Opponent’s Trade Marks emanate from the same trade source. As such, I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Trade Marks.
Prior use, honest concurrent use or other circumstances
Sections 44(3) and 44(4) of the Act enable a trade mark to be registered, which would otherwise be rejected under s 44(1), on the basis of honest concurrent use, other circumstances or prior use.
In this matter, there is nothing before me to support the application of s 44(3) or s 44(4).
Conclusion in respect of s 44
I am satisfied that the s 44 ground of opposition has been established in relation to the Applicant’s goods with the exception of the goods claimed in classes 18, 21, 25 and the goods in classes 5 and 30 as set out at [29] of this decision.
Section 59
Section 59 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
In Health World Ltd v Shin-Sun Australia Pty Ltd, Jacobson J described the nature of the intention under s 59 as:
A ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[11]
[11] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 [160].
The real and definite intention must exist at the date of filing the trade mark application.[12] However use or non-use after that date, may be relevant in drawing inferences as to an applicant’s intention at the filing date.[13]
[12] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58.
[13] Ibid [74].
It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use that trade mark.[14] The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[15] If an opponent makes out a prima facie case, the evidentiary onus shifts to the applicant to show its intention to use the trade mark at the filing date.[16]
[14] Suyen Corp v Americana International Ltd [2010] FCA 638 [197].
[15] Aston v Harlee Manufacturing Co [1980] HCA 47.
[16] Suyen Corp v Americana International Ltd [2010] FCA 638 [190].
In support of its prima facie case, the Opponent submits that:
a Google® search restricted to Australia for ‘Proburn’ conducted on 7 September 2016 did not show any results for the Trade Mark in connection with the Applicant;
an unrestricted Google® search for ‘Proburn’ conducted on 9 July 2016 did not show any results for the Trade Mark in connection with the Applicant;
a search of the Australian White Pages for ‘Proburn’ conducted on 19 December 2016 did not return any results;
a search of the Australian Yellow Pages for ‘Proburn’ conducted on 19 December 2016 did not show any results for the Trade Mark; and
a search on the Australian Security and Investment Commission’s website for ‘Proburn’ conducted on 19 December 2016 did not return any results related to the Applicant.
This information goes toward establishing that the Applicant has not used the Trade Mark in Australia. However, mere non-use on the part of the Applicant does not, of itself, imply a lack of intention to use the Trade Mark. In Suyen Corp v Americana International Ltd Jacobsen J pointed out that:
There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[17]
[17] Ibid [207].
Given that the evidence provided by the Opponent only goes towards non-use, I am not satisfied that the onus has shifted to the Applicant. The Opponent has not made out the ground of opposition under s 59 of the Act.
Decision
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.
The ground under s 44 of the Act has been established in respect of the Applicant’s Goods with the exception of the goods claimed in classes 18, 21, 25 and the goods claimed in classes 5 and 29 as set out at [29] of this decision.
On 13 March 2018 I informed the Applicant’s representative that it was my intention to refuse to register the Trade Mark unless the specification was amended so as to remove the goods that the s 44 ground of opposition had been established in respect of.
The Applicant did not avail itself of the opportunity to amend the specification. In Apple Inc. v Registrar of Trade Marks Yates J stated:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole.[18]
[18] [2014] FCA 1304 [232].
Accordingly, I refuse the Trade Mark.
Costs
The parties sought costs. I award costs against the Applicant in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.
Katrina Brown
Hearing Officer
Trade Mark Oppositions & Hearings
16 April 2018
Key Legal Topics
Areas of Law
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Commercial Law
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Intellectual Property
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