Florabella International LLC v Enzymatic Pty Ltd

[2018] ATMO 148

TRADE MARKS ACT 1995

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

Re:Opposition by Florabella International LLC to registration of trade mark applications 1768808 SPEAKING ROSES (31,35) and1774132; SPEAKING ROSES AND DEVICE (31,35,40) -  in the name of Enzymatic Pty Ltd.

Delegate:

M. Cooper

Representation:

Opponent: Ike Papageorge of Herbert Smith Freehills

Applicant: Thomas O’Shannassy of the Applicant

Decision:

2018 ATMO  148

Opposition under s.52 of the Trade Marks Act 1995: ss.58, 60, and 42(b) pursued – s.58 ground established – trade mark refused registration.

Background

1. This matter concerns an opposition by Florabella International LLC (“the Opponent”), under s.52 of the Trade Marks Act 1995 (“the Act”), to registration of the trade marks detailed below in the name of Enzymatic Pty Ltd (“the Applicant”):

Application Number/s: 1768808 and 1774132

Trade Marks: SPEAKING ROSES (1768808)

and

(1774132)

(“the Trade Marks”)

Filing Dates:              4 May 2016 (1768808)

31 May 2016 (1774132)

Specification of Goods and Services:

1768808

Class 31:

Arrangements of dried flowers for decorative purposes; Arrangements of natural flowers; Bouquets of dried flowers; Bouquets of fresh flowers; Cut flowers; Dried flowers; Flowering plants; Flowers, dried, for decoration; Flowers, natural; Fresh flower arrangements; Fresh flowers; Gilded flowers; Live flowers; Natural flowers; Wreaths of natural flowers

Class 35:

Retail sale of natural and synthetic flowers and flower arrangements

1774132

Class 31:

Arrangements of dried flowers for decorative purposes; Arrangements of natural flowers; Bouquets of dried flowers; Bouquets of fresh flowers; Cut flowers; Dried flowers; Flowers, dried, for decoration; Flowers, natural; Fresh flowers; Gilded flowers; Live flowers; Natural flowers; Wreaths of natural flowers

Class 35:

Retail sale of natural and synthetic flowers and flower arrangements

Class 40:

Customised printing of images and text onto a variety of goods; Digital printing; Discharge printing; Lithographic printing; Offset printing; Pattern printing; Photo printing; Photographic film printing; Photographic printing; Printing; Printing of cinematographic film; Printing of photographic film; Printing of photographic transparencies; Screen printing on textiles and clothing; Silkscreen printing; T-shirt printing; Textile printing; Wool printing

1. The Trade Mark 1768808 was examined and on 22 September 2016 was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks. Trade Mark 1774132 was examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 20 October 2016.

2. On 2 November 2016, the Opponent filed a Notice of Intention to Oppose registration of the Trade Marks. On 29 November 2016, a Statement of Grounds and Particulars (“SGP”) was filed which cited opposition grounds for each trade mark under sections 42, 58, 60 and 62A of the Act.

3. On 4 January 2017, the Applicant filed a Notice of Intention to Defend.

Evidence

1. Evidence in Support of the opposition was filed by the Opponent on 7 April 2017. The Applicant’s Evidence in Answer was filed on 18 July 2017. The Opponent filed its Evidence in Reply on 13 October 2017.

2. The Evidence in Support consists of the declaration made by Ike Papageorge, a legal practitioner employed by the Opponent’s representative, Herbert Smith Freehills, on 6 April 2017 (“the first Papageorge declaration”). It includes a Confidential Annexure A and Exhibits 1-3.

3. The Evidence in Answer filed by the Applicant consists of a declaration by its director, Mr. Thomas O’Shannassy made on 7 August 2017 (“the O’Shannassy declaration”).

4. The Opponent’s Evidence in Reply comprises a further declaration by Ike Papageorge dated 13 October 2017 (“the second Papageorge declaration”) which includes Exhibits 1-3.

5. On 20 November 2017 the Opponent requested a hearing and the matter proceeded before me, as delegate of the Registrar, on 6 June 2018.

The Opponent’s evidence

1. In his first declaration, Mr. Papageorge outlined the Opponent’s business as “an American company which license[s] the business of producing and retailing personalised, fresh flowers and patent process to print on organic materials under the name of SPEAKING ROSES across the world. Licensees sell fresh flowers to end consumers which have personalised messages printed on their leaves. These goods are sold under the registered American trade mark SPEAKING ROSES.”[1]

   [1] USPTO records confirm the Opponent’s active US Registration No.27719917, registered on 27 May 2003 and US Registration no. 4636798 on 11 November 2014 of the word marks “SPEAKING ROSES”. Accessed at on 24 August 2018. 

2. It was further explained that the Opponent grants the licensees rights to use the “SPEAKING ROSES” brand in nominated geographical areas and sells them equipment, including printers and templates and other materials, “required to set up and properly run a personalised flower business in Australia and around the world”.

3. He noted that the Opponent has had the three Australian licensees since 2009 and attached confidential copies of the relevant “Intellectual Property License Agreements” (“the licensing agreements”). It was acknowledged that only one of the licensees is currently operating however he asserted continuous use in Australia of the Opponent’s trade mark “SPEAKING ROSES”. The licensing agreements were noted to provide the licensees with “the right to use and reproduce the SPEAKING ROSES trade mark and logo for the purpose of marketing, promoting and sale of products.” The financial arrangements, that is, royalty payments and various fees, were outlined and copies of invoices attached.

4. In relation to reputation, Mr. Papageorge claimed that each of the Australian licensees has operated their businesses in Australia “selling to consumers personalised flowers under the SPEAKING ROSES trade mark, dating back to 2009.” Screenshots of the Australian licensees’ websites, Facebook page and the domain name ownership were exhibited which were said to demonstrate the Opponent’s reputation. It was also claimed that the Trade Marks’ designated goods and services were for “the same goods for which the Opponent has already acquired a reputation in Australia under the mark SPEAKING ROSES”. Mr. Papageorge referred to the Applicant’s previous interest in becoming a licensee and to confidential negotiations between it and the Opponent during which much of the Opponent’s business model and operating systems had been revealed. No agreement was reached and it was claimed that the Applicant has applied for the Trade Marks in bad faith and in breach of the Australian Consumer Law.

5. In its Evidence in Reply, the Opponent provided further exhibits which were said to demonstrate the Opponent’s reputation arising from its use of its US registered trade mark SPEAKING ROSES, in Australia.

Applicant’s evidence

1. The Applicant’s evidence consisted of the declaration of Mr. Thomas O’Shannassy.

2. Mr. O’Shannassy rejected the statement that the Applicant is not the owner of the Trade Marks, noting that it was the first to apply for registration in Australia and that they were neither registered in Australia nor otherwise protected in Australia.  He also rejected the Opponent’s claims of reputation in Australia on the basis that it had neither directly used nor licensed “SPEAKING ROSES” in Australia at any time before the Applicant’s filing of these applications.

3. In relation to the Opponent’s three licensees, Mr. O’Shannassy asserted that two of them did not have rights to use the Trade Mark and had ceased as licensees before the Applicant’s application for registration. On his reading of the relevant licensing agreements, he submitted that they specifically denied the licensees a right to use the Trade Marks. On this basis he labelled the claims in relation to use in Australia as “false, fabricated and intentionally misleading.” He contended that there is only one current licensee and it did not become a licensee until after the lodgment of the Trade Mark applications.

4. Mr. O’Shannassy claimed he registered the domain name “speakingroses.com.au” in February 2016 and had spent $7000 on advertising. No supporting documentation in this regard was provided.

5. He observed that the Opponent’s allegations regarding breaches of the Australian Consumer Law stated legal conclusions rather than facts and submitted that the allegations were vague and ambiguous. As the Opponent is neither registered in Australia nor has any reputation in Australia, he claimed that it is not protected by Australian consumer laws. In any event, it was further asserted, the Opponent had not established any of the elements of the tort of passing off nor of bad faith. Its allegations in this regard were claimed to be unfounded. He maintained that the Applicant’s application for registration of the Trade Marks “was made after a thorough research regarding the registration of such a trademark in Australia and any protections offered by international covenants. The Applicant therefore denies any bad faith …”

6. In relation to the Opponent’s exhibits, Mr. O’Shannassy claimed that the Facebook page and domain name exhibits showed only that “SPEAKING ROSES” was licensed after the Applicant made these applications and that the invoices provided did not demonstrate use or payment for use of the Trade Marks and were therefore irrelevant.

7. In conclusion, Mr. O’Shannassy reiterated his claim that the Opponent had never used “SPEAKING ROSES” in Australia before the Applicant filed these applications.

Submissions

1. Only the Opponent filed a written submission.

2. In relation to its s.58 ground of opposition, the Opponent claimed it acquired (presumably common law) ownership in Australia of the trade mark SPEAKING ROSES (“the Opponent’s mark”) through prior use. The evidence was said to demonstrate that the Opponent, since 2009, through its licensees, had used the trade mark SPEAKING ROSES in relation to its goods and services, namely:

• the production of personalised flowers, plants and other organic products through custom printing, marking, stamping or embossing of words and images by patent process;

• retail sale of personalised florist goods including fresh, silk and dried flowers plants and other organic products under the brand SPEAKING ROSES.

1. Relying on the various authorities[2], it was submitted that the Opponent’s mark and the Trade Marks are substantially identical. That is, on a side by side comparison, “cognisant of the essential elements of the trade marks” the words of the marks are identical. Regarding the device accompanying trade mark 1774312, it was claimed that the dominant cognitive cue, “by which people seeking out the goods and services will recognise the brand” are the words SPEAKING ROSES.

   [2] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd. (1963) CLR 407, Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] 251 FCR 379 at [52]; Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] 345 ALR 205 at [206]

2. It was further contended that the Opponent’s goods and services, that is, floristry including the production of personalised flowers, plants and other organic products through custom printing, and the supply of such goods to customers, constituted “the same kind of thing” as the goods and services for which the Applicant had applied. That is, the Applicant had applied for trade mark protection in respect of goods and services associated with floristry under classes 31 and 35, and in relation to printing onto a variety of goods under class 40, which “must be construed as to include printing onto flowers and other florist goods.”

3. In relation to s.60, it was submitted that “the Opponent has derived a direct benefit from such use by its licensees in the form of reputation and goodwill in Australia in the brand SPEAKING ROSES and royalty payments commensurate with Australian sales of the licensed goods and services”. On this basis the Opponent submitted that there is a “real, tangible danger” that consumers will be confused or deceived about the origin of the SPEAKING ROSES goods and services because the marks are substantially identical, the goods and services are the same or closely related and are likely to be purchased by the same consumers.

4. Regarding the section 42(b) ground of opposition, the Opponent alleged breaches of ss.18, 21 and 29 of the Australian Consumer Law (“the ACL”) and passing off under common law on the basis that, because of the Opponent’s reputation, it was likely that consumers would be misled into believing that the Trade Marks’ goods and services share a common trade source with the Opponent. It was also alleged that the Applicant had contravened the law in making false and misleading representations that it was producing the product with the sponsorship, approval or an affiliation with the Opponent and that the Opponent will suffer loss or damage to its goodwill by reason of that misrepresentation.

5. In relation to the section 62A opposition ground, the Opponent submitted that a person adopting proper standards would regard the Applicant’s decision to register the Trade Marks as in bad faith because in doing so it had used the knowledge it had gained in its confidential licensing negotiations with the Opponent, in which it was provided with commercially sensitive information as to the Opponent’s business model, operating systems and processes, in connection with the goods and services.

6. The Opponent sought costs.

Hearing

1. The Applicant’s representative did not appear at the hearing.

2. The Opponent’s legal representative, Mr. Papageorge, appeared by telephone and made brief submissions clarifying and responding to the Applicant’s claims. Specifically, in relation to the Applicant’s assertion that the licensing agreements prevented the Australian licensees’ use of the Opponent’s mark, he explained that, correctly interpreted, it does not prevent use of SPEAKING ROSES but only prevents its incorporation into the name of a licensee’s business entity or operation.

3. When asked how the licensing agreements demonstrated use in Australia, Mr. Papageorge responded that use was implicit in the agreements and that the amounts paid by licensees, as evidenced by the invoices, demonstrated that the Opponent’s mark was and had been relevantly used.

4. The s.62A ground was not pressed.

5. When asked how the evidence established the Opponent’s reputation in Australia, Mr. Papageorge referred to the licensing agreements, and the amounts spent in relation to purchase of equipment and royalties, as demonstrating sales and the buildup of goodwill.

6. I queried the basis on which Trade Mark 1774132, which contains a device, was said to be substantially identical to the Opponent’s word mark SPEAKING ROSES. Mr. Papageorge responded that the rose was unremarkable, that the dominant feature is the words, even though they are slightly smaller on the rose, and that it is the words which would be remembered.

7. In relation to the section 42(b) ground, Mr. Papageorge stated that the Applicant had demonstrated intention to use the Opponent’s mark, having created a website and spent money on advertising, and that such conduct was likely to mislead or deceive because of the nature of, and similarity between, the marks.

Grounds, onus and standard of proof

1. The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[3]

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26]

2. As noted above, the Opposition grounds pursued by the Opponent are those under 42, 58 and 60 of the Act.

3. The time at which a ground of opposition must be established is the date of filing of the application for registration.[4] In this case that date is 4 May 2016 for the word Trade Mark 1768808 and 31 May 2016 for the device Trade Mark 1774132 (“the relevant dates”).

Consideration and reasons

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595]

Section 58

1. As mentioned above, the Opponent asserted common law ownership in Australia of the trade mark “SPEAKING ROSES” on the basis of its use by its Australian licensees since 2009.

2. Section 58 of the Act provides:

   58 Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note: For applicant see section 6.

3. In relation to s.58, the Full Federal Court in Pham Global identified the relevant principles.[5] To succeed on this opposition ground, an opponent needs to establish that

• its mark or marks is/are identical or substantially identical to the opposed trade mark,

• its mark/s had been used in respect of goods and services that are “the same kind of thing” as those covered by the opposed mark and

• it has the earlier claim to ownership based on its use of its mark/s before the use of, or before the filing of an application to register, the opposed mark.

  [5] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (“Pham Global”) [2017] FCAFC 83, [50].

1. In its SGP the Opponent claimed in this regard as follows:

   The trade mark SPEAKING ROSES was first used in Australia by the Opponent in 2012[6] under a licensing agreement with a third party. The mark has been continuously used since that time under two further licenses with third parties in relation to:

   ·    flowers and other florist goods;

   ·    the retail of flowers, florist services and customized printing on florist goods.

   The Applicant did not use the trade mark SPEAKING ROSES in Australia prior to the Opponent’s first use.

   [6] The Opponent did not explain this apparent discrepancy in its claims as to the timing of the commencement of its Australian use of its mark. In the circumstances, nothing turns on this as all the claimed use occurred prior to the relevant dates.

2. The Opponent relied on the following evidence to establish its claims of prior use in Australia:             

• Intellectual Property License Agreements between the Opponent and three Australian licensees dated 1 December 2009, 9 September 2011 and 23 May 2016.

• Invoices dated in 2009, 2011, 2013 and 2016 from the Opponent, “Florabella International – Speaking Roses” to various persons in Queensland, NSW and Western Australia detailing the goods/equipment purchased to produce the personalised flowers.

• Invoices and receipts from “Florabella International – Speaking Roses” for monthly licence fees and web fees to a particular Australian licensee in Queensland dated in 2011, 2012, 2013, and from 2014 to 26 January 2016.

• Screenshots of the website (undated) demonstrating use of “SPEAKING ROSES” and the use of it on the relevant goods, being freshly cut personalised flowers.

• Screenshot of the ownership of the above domain name by one of the Opponent’s Australian licensees. (The only visible date on this document is 3 June 2016).[7]

• Screenshots of that licensee’s Facebook page advertising SPEAKING ROSES products in WA. (The only visible date on its document is 6 September 2016.)[8]

• Facebook post dated 1 October 2013 from an Australian licensee offering couture hats “with fresh orchids printed with your own personalised message for just $450.00 each” and stating further that this was “the only company in Australia who print on beautiful fresh flowers”. A further post is evident from another company offering its clients “thank you” printed roses from this licensee.

• Screenshot dated 9 February 2011 from the website of another of the Opponent’s Australian licensees, stating “Welcome to Personalised Flowers Qld (a Speaking Roses affiliate)” and also stating that it was “an official representative of Speaking Roses International”.

• Various “Speaking Roses” invoices and receipts from the Opponent to its Australian licensees from 2009 to May 2016.

  [7] In the absence of evidence (or any statement) to the contrary, this document appears to be dated from the time the evidence was prepared and does not assist the Opponent in terms of demonstrating prior use of the Trade Marks.

  [8] See previous comment.

1. As noted above, the Applicant rejected the Opponent’s claims as to first use, contending that the Trade Marks were not in use anywhere in Australia prior to its applications. Specifically, Mr. O’Shannassy claimed that the first two licensees had not had the right to use the Trade Marks and, in any event, had ceased operation prior to the relevant dates. He further claimed the third licensee did not become a licensee until after the relevant dates.

2. Having regard to the licensing agreements, I accept the Opponent’s submissions that, contrary to the Applicant’s claims, their terms only prevented the Australian licensees’ use of the Opponent’s mark as part of the name of their business or operation. Licensees, as well as purchasing various specialised templates and equipment to enable them to produce the goods, were granted the right to use the trade mark SPEAKING ROSES for product identification, marketing and sales. While two of the licensees may have ceased trading in Australia, and a third commenced operation after the relevant dates, I am satisfied that the documentation annexed to the declarations demonstrated use of the SPEAKING ROSES trade mark and activity during the period 2011-2016.

Prior use

1. To satisfy this element of the s.58 grounds, an opponent must establish that the Australian use on which it relies occurred before the applicant’s use of the Trade Mark/s or before their filing date, whichever is the earlier. It must be use as a trade mark by a person other than the applicant or the applicant’s predecessor in title.[9]

   [9] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414.

2. The use relied on in this opposition is the use in Australia by the Opponent’s licensees. Section 7(3) of the Act provides that a person’s authorised use of a trade mark is taken to be use by the trade mark owner. “Authorised use” is defined in section 8 to mean use of the trade mark to the extent only that it is used under the trade mark owner’s control. Subparagraphs (3) and (4) expressly provide for two types of control. These are where the owner exercises quality control over the goods and services and where the owner exercises financial control over the other person’s trading activities in relation to the subject goods and services. I note that these types of control are specifically expressed not to limit the meaning of the expression under the control of in subsections (1) and (2).

3. An examination of the confidential licensing agreements indicates that the Opponent, as licensor, imposed significant financial accountability and reporting requirements on its licensees. I also note that it retained sole ownership of all the rights in respect of the trade mark and its use and enforcement, including the goodwill. While the licensees maintained a degree of control over their own marketing and business plans, the Opponent maintained quality control rights and, at least in two of the agreements, licensees were specifically prevented from interfering with the Opponent’s rights in the trade marks. On this basis, I am satisfied that the licensees were “authorised users” for the purposes, and within the meaning of, s.7(3) of the Act and consequently their use of “SPEAKING ROSES” is properly regarded as use by the Opponent.

4. In addition, as noted above, the use relied on by the Opponent must be use as a trade mark. The Opponent claimed that its trade mark “SPEAKING ROSES” had been used by its licensees in Australia since 2009 in relation to flowers and other florist goods, and their retail sale, as well as customised printing on florist goods, and that this use constituted use as a trade mark.

5. As Deane J said in  Moorgate Tobacco Co Ltd v Philip Morris Ltd (No.2) (“Moorgate”):

   The prior use of a trade mark which may suffice… is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person.[10]

   [10] Moorgate Tobacco Co. Ltd. v Philip Morris Ltd (No.2) [1984] HCA 73; 156 CLR 414, [432]

6. And after examining the various authorities, the Court in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd. (“Anchorage”) stated:

   ..Whether or not the use of a mark constitutes trade mark use depends on the context in which such use occurs; secondly a mark may be used as a trade mark even though it simultaneously performs a number of functions only one of which is to act as a badge of trade origin.[11]

   [11] Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd. [2018] FCAFC 6, [54]

7. In this opposition the Opponent’s use of “SPEAKING ROSES” in Australia was evidenced by several documents which indicated a number of functions. The bulk of the evidence demonstrated its use in the licensing agreements with its Australian licensees and the associated financial documentation. In this context, although this material served additional functions, it demonstrated commitment to use the trade mark in trade, specifically dealing with (among other things) how the licensees could use the mark in the operation of their business. It was also evidenced in use of “SPEAKING ROSES” on websites and Facebook by the Opponent’s licensees in 2011 and 2013[12], which clearly demonstrated use of the Opponent’s mark, in advertising and offering the related goods and services to consumers, so as to distinguish the goods and services provided in the course of trade. I am therefore satisfied that the use of the Opponent’s mark in Australia (through its licensees, or “authorised users”), constituted use as a trade mark.

   [12] Second Papageorge declaration exhibits 2 and 3.

8. While I acknowledge this latter evidence of use is quite limited, it is nonetheless sufficient. In Moorgate Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed) said:

   The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act. In such a case, the court “seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia”: see Seven Up Co. v. 0. T. Ltd. [(1947) [1947] HCA 59; 75 CLR 203 at p 211]; Aston v. Harlee Manufacturing Co. [(1960) [1960] HCA 47; 103 CLR 391 at p 400].[13]

   [13] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73; (1984) 156 CLR 414, [432-434]

9. Similarly in Anchorage, the Court stated that “[i]t has been held that slight use of a mark in relation to the relevant goods or services may be sufficient to establish ownership for the purposes of s 58”.[14]

   [14] Anchorage, [50].

10. On the basis of the above evidence therefore, I am satisfied that the Opponent had the earlier claim to ownership based on its use of the Opponent’s mark before the filing of the Trade Marks, or any use of them as trade marks, by the Applicant.

Substantially identical

1. In addition, to establish ownership under s.58, the Opponent must also establish that its mark and the Trade Marks are identical, or substantially identical. In considering the meaning of “substantially identical”, the term is not defined in the Act but the accepted test was stated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, as follows:

   In considering whether marks aresubstantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[15]

   [15] (1963) 109 CLR 405 [414].

2. If a total impression of similarity emerges from a side by side comparison between them, the marks may be regarded as “substantially identical”[16].

   [16] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936; (1994) 120 ALR 495, [62].

3. The Applicant’s Trade Mark 1768808 and the Opponent’s claimed common law word mark “SPEAKING ROSES” are self-evidently identical.

4. In relation to the Trade Mark 1774132, it uses the same words “Speaking Roses” but they appear printed on a device, that is, on the leaf of a long-stemmed rose.

5. When discussing this issue of “substantially identical” trade marks in Anchorage, the court commented as follows:

   We have already referred to the facts in E&J Gallo. As we have mentioned, one of the issues that was considered by the High Court in that case was whether the word and device used by the registered owner was substantially identical to the registered mark BAREFOOT. The plurality referred at [20] to s 7(1) of the Act which provides as follows:

   If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   The plurality later said at [69]:

   [69] ... The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which “do not substantially affect the identity of the trade mark”. Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).

6. By way of analogy, in the circumstances of this application, the addition of the rose device to the words “Speaking Roses” in Trade Mark 1774132 is not one which constitutes an alteration or addition which substantially affects its identity as a trade mark. The rose device is simply an illustration of the expression “Speaking Roses” affirming the meaning of the second word and, at the same time, the nature of the goods/services. It is not a feature which “separately distinguishes” the goods or services because consumers are likely to identify the products sold under the device mark by reference to “Speaking Roses”. In this context, given the words used in both marks are identical, I am satisfied that the Opponent’s mark is substantially identical to the Trade Mark 1774132.

Same kind of thing

1. As noted above, and as Anchorage confirmed, in order to establish ownership, it is necessary to establish not only first use in Australia of the trade mark, or a substantially identical trade mark, but also that the prior use was “in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration”.[17]

   [17] Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6, [49].

2. What constitutes goods or services “of the same kind” was explained by Kenny J in Colorado Group Ltd v Strandbags Group Pty Ltd (“Colorado”):

   Ownership by first use is therefore ownership (or proprietorship) in relation to the goods or classes of goods on which the mark has first been used. The owner’s right to registration in this circumstance is not limited to the identical goods or classes of goods but extends to goods or classes of goods “of the same kind”: see Jackson & Company v Napper (1886) 35 Ch D 162 at 178 and Re Hick’s Trade Mark; Ex parte Metters Bros [1897] VicLawRp 118; (1897) 22 VLR 636 at 640.[18]

   [18] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [6].

1. In a separate judgment in that case, Allsop J also observed:

   In Carnival Cruises v Sitmar Cruises 120 ALR at 514, Gummow J referred to there being no differences of "character or quality" of the services in that case to gainsay that they were the "same kind of thing".

   ……

   The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or "goods essentially the same... though they pass under a different name owing to slight variations in shape and size" (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.[19]

   [19] Colorado, [88-9]

2. As the court commented in this regard in Anchorage:

   As Allsop J also observed in Colorado at [89], there is a difficulty involved in fixing upon the proper frame of reference for the purpose of determining whether goods or services are of the same kind. Nevertheless, as his Honour also suggested at [89], the question whether goods or services are of the same kind must be addressed in a practical and common sense way and by asking whether the relevant goods or services are essentially the same.[20]

   [20] Anchorage, [64]

3. As noted above, Trade Mark 1768808, designates goods in Class 31: “[a]rrangements of dried flowers for decorative purposes; Arrangements of natural flowers; Bouquets of dried flowers; Bouquets of fresh flowers; Cut flowers; Dried flowers; Flowering plants; Flowers, dried, for decoration; Flowers, natural; Fresh flower arrangements; Fresh flowers; Gilded flowers; Live flowers; Natural flowers; Wreaths of natural flowers”; and services in class 35 as the “retail sale of natural and synthetic flowers and flower arrangements”. Trade Mark 1774132 also designates these classes and the same content, as well as printing services in Class 40.

4. The licensing agreements reflect the Opponent’s licensing of its intellectual property rights in relation to the “printing, marking, stamping or embossing of words and/or images on flowers (fresh, dried or silk) and on plants and other organic products.” Specifically in relation to trade marks, the agreements refer to the Opponent’s registered US trade marks “SPEAKING ROSES”[21] and permit, among other things, use of the mark for product identification and to market and sell the stamped products in the relevant Australian territory or territories. Websites and social media posts provided in evidence confirmed the licensees are/were retail florists who have used “SPEAKING ROSES” in the production and retail sale to consumers of flowers with imprinted messages.[22]

   [21] USPTO records confirm active registrations 27719917, on 27 May 2003 in respect of “cut flowers” and registration 4636798 on 11 November 2014 in respect of “custom printing of cut flowers with messages, company logos and decorative designs”.

   [22] Second Papageorge declaration, Exhibits 2 and 3

5. Overall therefore, on the basis of the above evidence, I am satisfied that the Opponent’s prior use of the mark “SPEAKING ROSES”, through its Australian licensees, was use in relation to essentially the same goods (flowers) and services (retail sale of flowers) as designated in classes 31 and 35 in both Trade Marks. For these reasons I am satisfied that the Opponent’s mark has been applied in relation to goods and services of “the same kind” as those designated by the Trade Marks and in classes 31 and 35.

6. With regard to the class 40 services designated in Trade Mark 1773142, among other things, it designates “customised printing of images and text onto a variety of goods…”. As noted above and demonstrated by the evidence exhibited to the second Papageorge declaration, the services delivered by the Opponent, through its Australian licensees, included “procedures and processes to accomplish the printing, marking, stamping or embossing of words and/or images on flowers (fresh, dried or silk) and on plants and other organic products”.[23] While the services designated by the Applicant in class 40 have broader application than those evidenced by the Opponent’s use of its mark “SPEAKING ROSES”, printing services clearly include flower printing services.

   [23] Second Papageorge declaration, Exhibit  1

7. In the circumstances of this opposition, notwithstanding the several types of printing services designated by the Applicant in class 40 for Trade Mark 1774132, it seems uncontroversial that the Opponent’s demonstrated use of its trade mark in relation to customised printing onto flowers or plants is clearly embraced by the designated class 40 services of “customised printing of images and text onto a variety of goods” in Trade Mark 1774132. It is also pertinent to note that the Trade Mark itself depicts a rose with the trade mark words “SPEAKING ROSES” imprinted on its petals, thereby clearly indicating the nature and type of the printing proposed by the Applicant. Therefore, having regard to the nature and scope of the parties’ activities, I consider it is not necessary or appropriate to further dissect the Applicant’s specification of services. I am satisfied there is no material difference in “the character or quality of the services”[24] provided by the Opponent, described as the printing of images and text on to flowers, plants and other organic material, and those designated by the Applicant in the Trade Mark 1774132 as “the customised printing of images and text onto a variety of goods.”

   [24] Colorado, op.cit.

8. Having regard to all the evidence and taking a “practical and common sense view”[25], I am satisfied that the Opponent’s customised printing services are essentially the same kind of thing, as those proposed by the Applicant in its class 40 designated services for Trade Mark 1774132.

   [25] Ibid.

9. For all the above reasons, I am satisfied that the Opponent has established the ground of opposition under section 58 of the Act.

10. Given that the Opponent has established one ground of opposition in relation to the Trade Mark, there is no requirement for me to consider the remaining grounds. In the event of an appeal to this decision, it will be open to the Opponent to additionally pursue those grounds and the others available under the Act.

Decision

1. Section 55 of the Act relevantly provides:

   Decision

   (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note: For limitations see section 6.

1. As the Opponent has established the s.58 ground of opposition, and subsection (3) does not apply to these proceedings, I accordingly I refuse to register trade mark applications 1768808 and 1774132.

2. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

Costs

1. The Opponent has sought its costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

Mary-Ann Cooper

Hearing Officer

Oppositions and Hearings

18 September 2018