Fodmap Pty Ltd v Monash University

[2016] ATMO 42

TRADE MARKS ACT 1995

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

Re:Opposition by Fodmap Pty Ltd to registration of trade mark application 1598426(29, 30, 31 and 32) - MONASH UNIVERSITY LOW FODMAP CERTIFIED (DEVICE) - in the name of Monash University.

Delegate:	Adrian Richards
Representation:	Opponent: DLA Piper Australia Applicant: Susan Gatford of counsel, instructed by Clayton Utz
Decision:	2016 ATMO 42 Opposition under section 52 of the Trade Marks Act 1995 (Cth) ­ grounds of opposition under sections 42(b), 43, 44, 59 and 62A pressed ­ no grounds of opposition established ­ trade mark to proceed to registration ­ costs awarded against the Opponent

Background

1. On 23 December 2013, Monash University (‘the Applicant’) filed an application for registration of the following trade mark:

   Application Number:           1598426

   Trade Mark:   (‘the Trade Mark’)

   Specification of Goods:       Class 29: Meat, fish, seafood, poultry and game, including fresh (but not live), preserved, processed, frozen, dried and cooked meat, fish, seafood, poultry and game; meat extracts, preserved, processed, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products including butter, cream and yoghurt; edible oils and fats

   Class 30: Coffee (including artificial coffee and coffee substitutes), tea, cocoa; beverages and foods made from coffee, tea or cocoa including chocolate; sugar, rice, tapioca, sago; flour and preparations made from cereals; bread, pastry, biscuits, cookies, cakes, waffles, crepes, oatmeal, quiches, pies, pastries, pasties, spring rolls; confectionery; foods made from seeds or nuts in this class; ices including ice cream and edible ices; honey, treacle; yeast; baking powder; salt, mustard, vinegar, sauces, condiments, spices; ice

   Class 31: Agricultural, horticultural, and forestry products and grains not included in other classes; fresh fruits and vegetables; seeds and nuts; natural plants and flowers; foodstuffs for animals; malt

   Class 32: Mineral and aerated waters and other non-alcoholic drinks in this class including isotonic beverages; fruit drinks and fruit juices; syrups and other preparations for making beverages

2. The Trade Mark was examined pursuant to s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’),[1] and advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 15 May 2014.

   [1] Unless otherwise specified, each reference below to a section is to that section in the Act.

3. On 9 July 2014, Fodmap Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark and followed with a Statement of Grounds and Particulars (‘SGP’) on 11 August 2014. In response, the Opponent filed a Notice of Intention to Defend on 28 August 2014. Evidence in support, answer and reply were filed from December 2014 through August 2015.

4. Both parties requested to be heard in person, and a hearing was set down for 20 April 2016. The parties then provided an outline of their submissions prior to the hearing in accordance with reg 5.17(6). The day before the hearing the Opponent indicated it would not be attending, and that it would instead rely on the submissions it had filed two weeks earlier.

5. The hearing was held on 20 April 2016 by me, as a delegate of the Registrar of Trade Marks (‘the Registrar’). The Applicant was represented by Susan Gatford of counsel instructed by Clayton Utz.

Evidence

1. The evidence filed in this opposition consists of the following declarations:

Evidence in support

Statutory Declaration of Timothy Mottin, director of the Opponent, made 5 December 2014 with exhibits TM-1 to TM-48, including confidential exhibits TM-5, TM-9, TM11, TM-13, TM17, TM-19, TM-25, TM-34, TM-41, TM-42, TM-43 and TM-48 (‘Mottin 1’)

Statutory Declaration of Robynne Lyndsay Sanders, solicitor for the Opponent, made 3 December 2014 with exhibits RLS-1 to RLS-19 (‘Sanders’)

Evidence in answer

Statutory Declaration of Peter Gibson, professor at the Applicant and director of gastroenterology at the Alfred Hospital, made 22 April 2015 with exhibits PG-1 to PG-10, including confidential exhibits PG-5 and PG-6 (‘Gibson’)

Statutory Declaration of Mark Heinrich Krenzer, legal practitioner and trade marks attorney for the Applicant, made 22 April 2015 with exhibits MHK-1 to MHK-4 (‘Krenzer’)

Evidence in reply

Statutory Declaration of Timothy Mottin, director of the Opponent, made on 3 August 2015 with exhibits TM-49 to TM-53 (‘Mottin 2’)

1. Mottin 1 begins with some background about the declarant, and moves on to information about the term FODMAP. Mr Mottin states that FODMAP is an acronym for a family of sugars. Avoiding or limiting the intake of foods containing these sugars can lessen symptoms of irritable bowel syndrome. This declaration also outlines the Opponent’s trade marks and related business activities, and the Applicant’s activities in relation to the Trade Mark.

2. Mr Gibson identifies himself as having directed a research team at the Applicant in relation to FODMAPs. He offers further information on FODMAPs, clarifying that they are a family of short-chain carbohydrates which comprise Fermentable Oligosaccharides, Disaccharides, Monosaccharides and Polyols. This declaration also discusses background about the declarant, the Applicant and the Opponent, the Applicant’s research into FODMAPs, the Applicant and Opponent’s business activities around FODMAP testing and the Applicant’s use of the Trade Mark.

3. Mottin 1 includes an email which Mr Mottin says demonstrates actual confusion between the Applicant and the Opponent. In response, Gibson contains information to refute the allegation. Perhaps because of this, Mottin 2 chiefly concerns this same issue, annexing several more items of correspondence which are alleged to demonstrate actual confusion. Beyond this, Mottin 2 sets out information about a corporate restructure of the Opponent which took place after the evidence in support was filed.

10.  Sanders incorporates the results of searches for trade marks and certification rules, a copy of the certification rules associated with a certification trade mark held by the Opponent, excerpts from the Australia New Zealand Food Standards Code (‘the Code’), and the State and Territory laws adopting the Code.

11.  Krenzer discusses other trade marks held by the Applicant which include the term FODMAP, annexes the results of some online searches for the term FODMAP, and provides information and annexures in relation to other non-certification trade marks which include the term ‘certified’ or similar.

Grounds and onus

12. The Opponent has relied on all of the grounds for opposition it nominated in the SGP, namely, those under ss 42(b), 43, 44, 59 and 62A. The onus falls on the Opponent to satisfy me that it has established at least one of the grounds of opposition.[2] The standard of proof to be applied is on the balance of probabilities.[3] The rights of the parties are to be determined as at 23 December 2013, the filing date of the Trade Mark (‘the relevant date’).[4]

[2] Section 55.

[3] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

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

Reasons

1. The Opponent argues that the inclusion in the Trade Mark of the terms ‘certified’ and/or ‘low FODMAP’ result in grounds of opposition being established under ss 42(b), 43 and 62A. For brevity I have discussed all three of those grounds of opposition together under the headings ‘CERTIFIED’ and ‘LOW FODMAP’. A further argument under s 42(b), relating to the Code and use of the Trade Mark, has been discussed separately as have the grounds of opposition under ss 59 and 44.

Sections 42(b), 43 and 62A

14. Sections 42(b), 43, and 62A are set out below, along with a short explanation of how each can be made out.

42 Trade mark scandalous or its use contrary to law

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

…

(b)its use would be contrary to law.

To establish this ground the Opponent must show that use of the Trade Mark would be (i.e. not merely could be) contrary to law.[5]

[5] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

43 Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The Opponent must demonstrate that there is secondary meaning inherent within the Trade Mark which is likely to deceive or cause confusion.[6]

62A Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

The test applied under this ground of opposition combines subjective and objective elements. That is, taking into account the Applicant’s knowledge at the relevant date, in the circumstances, would the decision to make this application ‘be regarded as in bad faith by persons adopting proper standards’?[7]

[6] Pfizer Products Inc v Karam (2006) 219 FCR 585, 599 [53].

[7] Fry Consulting Pty Ltd v Sports Warehouse (No 2) (2012) 201 FCR 565, 598 [167].

‘CERTIFIED’

15. The Opponent observes that the Trade Mark includes the word ‘certified’ as an element, and that the present application was not filed under the certification trade mark provisions in Part 16 of the Act. It asserts that the inclusion of this word conveys to a consumer either that the Trade Mark is a certification trade mark, and is therefore subject to a set of certification rules which have met the requirements of Part 16 of the Act, or alternatively that goods bearing the Trade Mark have been ‘certified to an objective, known and publicly available standard’.

16. In relying on grounds of opposition under s 42(b) in relation to the appearance of the word ‘certified’ in the Trade Mark, the law which the Opponent submits use of the Trade Mark would be contrary to is s 18 of the Australian Consumer Law, which requires that ‘[a] person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive’. The Opponent further submits that pursuant to s 43 the word ‘certified’ is likely to deceive or cause confusion. As for s 62A, the Opponent takes the argument a step further, asserting that by filing the trade mark application the Applicant intends to mislead, deceive or cause confusion among consumers.

17. The Applicant submits that consumers are not misled deceived or confused in two ways. It first points out that it is not the view of the Registrar that the inclusion of the word ‘certified’ as an element in a standard trade mark provides either of the connotations set out in paragraph [15] above. In support of this the Applicant has drawn attention to the hundreds of registered standard (i.e. non-certification) trade marks that include the word ‘certified’ as an element, none of which have drawn an objection at examination under either ss 42(b) or 43. The Applicant then points to evidence that consumers are in fact not misled, deceived or confused when the word ‘certified’ is included as an element in a standard trade mark. The Applicant also notes that standard trade marks AUSTRALIAN CERTIFIED ORGANIC and CERTIFIED AUSTRALIAN ANGUS BEEF are supported by certification programs that are not subject to the requirement to be certified and endorsed by the Australian Competition and Consumer Commission pursuant to part 16 of the Act. Given this, I am not satisfied that the appearance of the word ‘certified’ in the Trade Mark would mislead, deceive or confuse the relevant consumer to think that it is a certification trade mark.

18.  It is unclear where the Opponent draws authority for its alternative reading of the word ‘certified’. The pair of dictionary excerpts for ‘certified’ annexed to Mottin 1 offer the following relevant definitions:

·Made certain; assured; certainly informed; attested by a certificate; furnished with a certificate

·Having, or proved by, a certificate; guaranteed; reliably endorsed

19.  Both of these definitions relate either to the provision of a certificate or to some degree of assurance, but do not rise to the level of assessment against an ‘objective, known and publicly available standard’. I am not convinced that the word ‘certified’ appearing in the Trade Mark implies anything more its ordinary dictionary definitions.

20. The Opponent has not satisfied me that the inclusion of the word ‘certified’ in the Trade Mark is likely to mislead, deceive or cause confusion amongst consumers. Having made this finding, and absent any evidence to support its assertion, it follows that the Opponent has failed to demonstrate an intent on the part of the Applicant to cause consumers to be misled, deceived or confused. Accordingly, I find that the presence of the word ‘certified’ in the Trade Mark does not establish grounds of opposition under ss 42(b), 43 or 62A.

‘Low FODMAP’

21.  The Opponent submits that the existence of the term ‘low FODMAP’ in the Trade Mark conveys the representation that goods bearing the Trade Mark have a low FODMAP content. The Opponent’s submissions state that:

The Applicant's specification of goods, however, includes goods which are high in FODMAPs. Examples of high FODMAP foods which appear in the Application's specification of goods include milk, yoghurt, ice cream, dried fruits, and honey. These have been identified as high FODMAP content foods, for example in a table in an article by a member of the Applicant's Department of Gastroenterology.

22. The Opponent’s application of these assertions to ss 42(b), 43 and 62A and the appearance of the term ‘low FODMAP’ in the Trade Mark are virtually the same as were discussed above at paragraph [16] in relation to the word ‘certified’. The sole difference is in its reference under s 42(b) to the Australian Consumer Law, which again invokes s 18 but also para 29(1)(a). The latter provision refers to false or misleading representations about goods, but there is no material difference between the Australian Consumer Law concepts of ‘misleading or deceptive’ and ‘false or misleading’.[8]

[8] Australian Competition and Consumer Commission v Dukemaster Pty Ltd [2009] FCA 682, [14].

23.  The Applicant’s response first states that the representation being conveyed is that the Applicant ‘has considered samples of the goods in question and is satisfied they are low in FODMAPs’. The parties are therefore essentially in agreement as to the nature of the representation conveyed by the element LOW FODMAP.

24.  The point of contention lies in whether certain foods in the specification are in fact high FODMAP and if they are, whether this would cause consumers to be misled, deceived or confused. In this regard, the Applicant submits that some types of milk, yoghurt or ice cream may be high FODMAP while others may not. This is corroborated by the table referenced by the Opponent, which lists lactose-free milk and yoghurt variants as low FODMAP. I infer from this that lactose free ice cream would also be low FODMAP. As for the other goods mentioned by the Opponent, neither honey nor dried fruits appear on the table it references in its submission, so the assertion that they are high FODMAP stands uncorroborated. At any rate, even if these foods have been found to normally be high in FODMAPs, this does not preclude variants of these foods from existing which are low in FODMAPs, as has been shown with certain dairy products discussed above.

25. The Opponent has not satisfied me that the inclusion of the term ‘low FODMAP’ in the Trade Mark is likely to mislead, deceive or cause confusion amongst consumers. Having made this finding, and absent any evidence to support its assertion, it follows that the Opponent has failed to demonstrate an intent on the part of the Applicant to cause consumers to be misled, deceived or confused. Accordingly, I find that the presence of the term ‘low FODMAP’ in the Trade Mark does not establish grounds of opposition under ss 42(b), 43 or 62A.

Section 42(b) and the Code

26.  The Opponent submits that use of the Trade Mark would be in contravention of the Code. The Code comprises a series of standards issued by Food Standards Australia New Zealand,[9] a statutory corporation created by Commonwealth legislation.[10] These standards are legislative instruments under the Legislation Act 2003 (Cth).[11] These Commonwealth legislative instruments have been picked up and applied by reference into the legislation of each of the States and Territories.[12] Given this, I consider that the Code has the necessary force of law for the purposes of s 42(b), and the Applicant has indicated in its submissions that it agrees.

[9] Food Standards Australia New Zealand Act 1991 (Cth) para 13(1)(a).

[10] Ibid s 12.

[11] Ibid s 94.

[12] Food Act 2001 (ACT) s 27; Food Act 2004 (NT) s 20; Food Act 2003 (NSW) s 21; Food Act 2006 (Qld) s 39; Food Act 2001 (SA) s 21; Food Act 2003 (Tas) s 21; Food Act 1984 (Vic) s 16; Food Act 2008 (WA) s 22.

27.  A preliminary question concerns which particular standard within the Code is at issue. The Opponent has alleged contravention of two standards ­ 1.2.7 and 1.1A.2. Standard 1.1A.2 is a transitional standard which relates to health claims, cl 1A of which reads:

For the matters regulated in this Standard, food must comply with this Standard or Standard 1.2.7, but not a combination of both.

28.  In order to make out this ground of opposition the Opponent must therefore show that use of the Trade Mark would not be in compliance with both of the standards. It follows that a sufficient answer to the Opponent’s allegation here would be to demonstrate compliance with either of the standards. The Applicant submits that it meets the requirements of standard 1.2.7, so this is the focus of my discussion below. The version of standard 1.2.7 in evidence was current as at 30 October 2014.

29.  The Opponent suggests that use of the expression LOW FODMAP would be in contravention of either cl 12 (nutrition content claims) or 18 (health claims) of standard 1.2.7 of the Code. Given the straightforward (albeit technical) reasons that follow, it is unnecessary to set out the basis for either of these allegations in more detail.

30.  The Applicant offers two independent responses: neither clause would apply to use of the Trade Mark, and in any event the expression LOW FODMAP complies with both clauses. To find that the Opponent has not discharged its onus of establishing this ground, it is necessary for me to be reasonably satisfied of only one of the Applicant’s responses. I accept the first response for the reasons that follow.

31.  Sub-clause 23(4) of standard 1.2.7 states that:

Part 2 (other than clause 7) and Part 3 Divisions 1, 2 and 4 do not apply to an endorsement.

Clauses 12 and 18 are, respectively, in Divisions 1 and 2 of Part 3 of Standard 1.2.7. Therefore, if the Trade Mark is an endorsement, neither clause applies.

32.  ‘Endorsement’ is defined in cl 2 as ‘a nutrition content claim or a health claim that is made with the permission of an endorsing body’. It is common ground between the parties that LOW FODMAP amounts to a nutrition content claim. The evidence shows that the Applicant issues licenses to bodies for use of the Trade Mark in relation to goods which pass its FODMAP testing regime, so the remaining question is whether the Applicant meets the definition of ‘endorsing body’.

33. ‘Endorsing body’ is defined in cl 2 as ‘a not-for-profit entity which has a nutrition or health-related purpose or function that permits a supplier to make an endorsement’. The Applicant’s evidence demonstrates that it is a statutory not-for-profit entity,[13] and that one of its stated objects is:

to undertake scholarship, pure and applied research, invention, innovation, education and consultancy of international standing and to apply those matters to the advancement of knowledge and to the benefit of the well-being of the Victorian, Australian and international communities[14]

[13] Monash University Act 2009 (Vic) s 44.

[14] Ibid sub-s 5(c).

34.  Pursuant to its objects, the Applicant has led evidence of its research, education and consultancy activities in relation to FODMAPs, as well as creation and promotion of a specialised diet for sufferers of irritable bowel syndrome. I consider that this is a nutrition and health-related purpose as anticipated by the Code, and therefore that the Applicant is an endorsing body. It is therefore unnecessary to consider further the application of cls 12 and 18.

35. Use of the Trade Mark is likely to fall within the meaning of ‘endorsement’ found in sub-cl 23(4) of standard 1.2.7 of the Code. An implication of this finding is that the clauses the Opponent nominated as being breached by use of the Trade Mark do not apply. The Opponent has therefore failed to make out any grounds of opposition under s 42(b).

Section 59

36. Section 59 is reproduced below:

59 Applicant not intending to use trade mark

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.

Note:           For applicant see section 6.

37.  The act of applying for registration of a trade mark brings with it a presumption of an intention to use it.[15] If the Opponent makes out a prima facie case of a lack of intention, the evidentiary onus may shift onto the Applicant to show its intention to use the Trade Mark at the relevant date.[16]

[15] Suyen Corp v Americana International Ltd (2010) 187 FCR 169, 199 [197].

[16] Ibid 198 [190]

38.  The Opponent submits that ‘the Applicant intends to use and in fact has used the Trade Mark’. Given such an admission, the Opponent has apparently failed to make out a prima facie case under this ground. The Opponent goes on to submit that a certification trade mark and a standard trade mark ‘have different purposes’ and that the Applicant’s intention to use the Trade Mark extends to activities that are the domain of certification trade marks. The factual basis for this argument resides in the Applicant’s evidence (namely, Gibson) which outlines the Applicant’s regime for the testing of third parties’ foodstuffs and subsequent licensing to those third parties.

39. As I already observed in my discussion of the appearance of the word ‘certified’ in the Trade Mark, it is both unremarkable and common for standard trade marks to be used in the way the Opponent describes. Since it has not made out a prima facie case for a lack of intention to use the Trade Mark, the Opponent’s case under s 59 fails at the first hurdle. Even if this was not the case, the Applicant has led evidence of actual use of the Trade Mark by its authorised users.

40.  The Applicant’s evidence shows that it requires licensees to resubmit samples of their foodstuffs for testing at regular intervals. This indicates that the Applicant exercises quality control over the goods, which is enough to conclude that its licensees are authorised users of the Trade Mark within the meaning of s 8.

41. The ground of opposition under s 59 has not been established.

Section 44

42.  The relevant parts of s 44 are reproduced below:

44  Identical etc. trade marks

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

(a)   the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

(ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)   the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

43.  In order to establish this ground, the Opponent must demonstrate that there is: an earlier trade mark application or registration, in the name of another person, for similar goods or closely related services, which is substantially identical or deceptively similar to the Trade Mark. The Opponent has nominated two identical registered trade marks with identical specifications of goods both filed before the relevant date. Details of those trade marks are set out below:

Trade Mark Numbers:        1490965 and 1528684

Trade Mark:  

(‘the Opponent’s Trade Marks’)

Specification of Goods:       Class 5: Dietetic food and substances adapted for medical or veterinary use; food for babies; dietary supplements for humans and animals

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; biscuits; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; fresh fruits and vegetables; seeds; natural plants and flowers; malt

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages

44.  Reading through the specifications of goods in classes 29, 30, 31 and 32 for the Trade Mark and the Opponent’s Trade Marks, the similarity is striking. Almost all of the goods claimed are not only the same, but they are also described in near identical terms. They are therefore ‘similar goods’ as defined by s 14(1). The remaining question is therefore whether the trade marks in comparison are substantially identical or at least deceptively similar.

45.  In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[17] the court held that trade marks are substantially identical if there is a ‘total impression of resemblance’ arising from a side by side comparison.[18] Accordingly, I have set out the trade marks side by side below:

[17] (1961) 109 CLR 407.

[18] Ibid 415.

46.  At first impression the only identical element is the descriptive acronym FODMAP. The Opponent’s submissions fail to mention this point of similarity, instead focusing on the curved line and shape of the background:

The essential feature of both device marks is the vertical curved line representing the human intestine, within a simple curved shape background. The slightly different rendering of the devices is immaterial in the context of the totality of the marks and the overall impression.

47.  The curved line the Opponent’s Trade Marks is less pronounced. It appears at the centre as a dividing line between the uneven halves of the circle in which it appears. In the Trade Mark it is in the top right hand side, it appears more tightly bunched, includes more bends, is thicker, includes an arrow at the lower end, and is rendered with an outline. On a side by side comparison these elements are similar only at a broad conceptual level, in that both might be characterised as curved lines, but they are visually markedly dissimilar. As to the background, the Applicant’s suggestion that the rounded square in the Trade Mark and the geometric circle of the Opponent’s Trade Marks amounts to only a ‘slightly different rendering’, and that both are ‘simple curved shape[s]’ is not a credible characterisation. Even with rounded corners the square gives an impression of a square, not a circle.

48.  Aside from the descriptive acronym FODMAP, all of the words differ between the trade marks. The words are also set out differently, with the Trade Mark presenting them in a series of five lines, and the Opponent’s Trade Marks present them in a circular format within an annulus. Given significant degree of dissimilarity overall I find that the trade marks are not substantially identical.

49.  Turning to deceptive similarity, s 10 provides that ‘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 test for deceptive similarity is one of imperfect recollection, and has been expressed in the following way:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 [earlier trade mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [opposed trade mark].  To quote Lord Radcliffe again [de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106; 1B IPR 496 at 499]:

The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.[19]

[19] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 415 (Windeyer J).

50.  Deception ‘implies the creation of an incorrect belief or mental impression’,[20] while confusion has been described in the following terms:

A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[21]

[20] Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410, 423

[21] Registrar of Trade Marks v Woolworths Limited (1999) 93 FCR 365, 382 [50] (French J).

51.  In my earlier discussion of this ground of opposition, I found that the trade marks in comparison share only one feature, that is, the descriptive acronym FODMAP. The Opponent submits that both of the trade marks contain a shape which is evocative of a human intestine. The Trade Mark might, with some imagination, evoke the idea of an intestine, but the likeness to that organ is far reduced in the Opponent’s Trade Marks. At best these features might all be remembered as curved lines. The points of dissimilarity are all of the other words and shapes.

52.  The Opponent submits that since the trade marks ‘are intended to operate as an easily identifiable symbol’, ‘customers are less likely to pay attention to the wording in the marks’. The Applicant points out that purchasers of goods bearing any of the trade marks in comparison are likely to be careful, since the consequence of consuming foods not bearing the correct trade mark could negatively impact the person’s health. The Applicant’s argument is the more likely characterisation of the behaviour of prospective purchasers.

53.  The Applicant submits that the Trade Mark is more likely to be remembered for its words than its symbols, and that it is:

…likely to be recalled by reference to the words MONASH UNIVERSITY and LOW FODMAP. This is because the words MONASH UNIVERSITY are the first to appear, are distinctive and very well known. And these words are central to and dominate the graphic aspects of the mark, which act as a text box background.

By contrast the Opponent’s mark will be recalled as a circular mark with words around the edge. The words FODMAP FRIENDLY may or may not be recalled.

54.  In sum, the Opponent says symbols not words will be remembered, and the Applicant says words not symbols. Both positions are somewhat at odds with the requirement that the general effect of the entirety of both trade marks is what must be compared.[22] That said when comparing trade marks that combine a device with words, such as these, customers will more naturally refer to the words.[23] The significance of the words therefore cannot be ignored.

[22] Clark v Sharp (1898) 15 RPC 141, 146.

[23] See, eg, American Trading & Shipping Co Ltd’s Appn (1936) 6 AOJP 78.

55.   The Opponent submits that the words around the edge of the Opponent’s Trade Marks APPROVED FOOD PRODUCT and FODMAP FRIENDLY, and the words MONASH UNIVERSITY LOW FODMAP CERTIFIED in the Trade Mark ‘convey an identical message that the product has been assessed as favourable to persons who require a low FODMAP diet’. This proposition is at best arguable. Even if they did convey the same message, the trade marks neither look nor sound alike:

[T]he fact that two marks convey a common idea becomes relevant only if the marks themselves look and sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.[24]

[24] Sports Cafe Ltd v Registrar of Trade Marks (1998) 42 IPR 552, 557.

56.  Instances of actual deception or confusion will be given great weight in determining deceptive similarity.[25] The onus is on the Opponent to demonstrate that the confusion or deception was a result of the use and similarity of the trade marks in comparison, and not some other circumstance. The Opponent has provided three emails which it says are examples of actual confusion.

[25] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658.

57.  The first email is from a potential licensee sent to the Opponent who apologises for some unspecified confusion which apparently involved emailing the Applicant. The writers state that they did not know there was more than one body offering FODMAP certification. Given this, the confusion does not relate to use of the trade marks, but instead to the state of the Australian market for FODMAP testing. The email does go on to ask about the Opponent’s relationship with the Applicant. Insofar as this might be considered confusion, it is not linked to the use of any trade mark.

58.  The second email is from Mr Mottin to a potential licensee. It refers to a conversation with the addressee and laments ‘the confusion that has arisen’. It is again unclear what the confusion was and whether the confusion was caused by use of the trade marks. In his declaration Mr Mottin has not set out the conversation with the addressee or what confusion actually occurred.

59.  The final email relates to the correction of an article appearing in the Border Mail newspaper which stated that the goods of one of the Opponent’s licensees ‘had been tested by the food science team at Monash University’. The journalist’s apology to the Opponent’s licensee refers to a mistake being made in the editing process, and a ‘mix up between Monash Medical and Monash University’. Use of the Trade Mark is not implicated in this explanation.

60.  The Applicant has put forward a number of circumstances which could explain any actual confusion, such as historical links between the Applicant and a former director of the Opponent. The most potent factor among these appears to be the fact the Opponent’s approved testing laboratory is located on premises which were once owned by and remain affiliated with the Applicant (the Monash Institute of Medical Research – Prince Henry Institute).

The possibility of identity or similarity of names of owners of trade marks - and also of proximity of businesses - is present in every case. Confusion arising from such circumstances does not constitute deception arising from the use of a trade mark. The actuality of such identity of names and proximity of businesses does no more than demonstrate beyond question that such a possibility is real and not merely imaginary. Such circumstances as these, which are present in every case, cannot be evidence of the likelihood of deception.[26]

[26] Sym Choon & Co Ltd v Gordon Choons Nuts Ltd (1949) 80 CLR 65, 72 (Latham CJ).

61.  The alleged instances of actual confusion have not been shown by the Opponent to have resulted from the use of the Trade Mark and Opponent’s Trade Marks. Having considered their respective elements and the concepts that they convey, taken as a whole, I believe the Trade Mark and the Opponent’s Trade Marks are likely to be recalled differently, notwithstanding the fact they both claim nearly identical goods. It follows that the Trade Mark is not deceptively similar to the Opponent’s Trade Marks, and I find that the ground of opposition under s 44 has not been made out.

Decision

62.  Section 55 provides:

55 Decision

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

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

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

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

Note:           For limitations see section 6.

(2) Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

Note:           For examine and this Act see section 6.

(3)   This subsection applies to the proceedings if:

(a)the proceedings are discontinued; or

(b)the proceedings are dismissed; or

(c)the application lapses because of the operation of section 54A (about lapsing of applications if a notice to defend the application is not filed).

63.  The Opponent has failed to make out a ground of opposition, so I have decided to register the Trade Mark. The trade mark application may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Costs

64.  The Applicant has requested an award of costs. The ordinary rule is that costs follow the event.[27] I award costs against the Opponent in the applicable amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

[27] Milne v Attorney-General (Tas) (1956) 95 CLR 460.

Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
29 June 2016