FoodPLUS GmbH v George Sokol

[2013] ATMO 54

TRADE MARKS ACT 1995

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

Re:Opposition by FoodPLUS GmbH to registration of trade mark application 1310816(42) - GLOBALGAS - filed in the name of George Sokol.

Delegate:

Jock McDonagh

Representation:

Opponent: Vineetha Veerakumar of King & Wood Mallesons Lawyers

Applicant: No appearance, nor submissions

Decision:

2013 ATMO 54

Section 52 opposition: sections 42(b), 44 and 60 pressed –ground of opposition under s 60 established - no requirement to consider other grounds – registration refused

Background

1. This is an opposition brought by FoodPLUS GmbH (“the Opponent”) pursuant to s 52 of the TradeMarks Act 1995 (“the Act”) to registration of an application filed in the name of George Sokol  (“the Applicant”) as follows:

Appn No.

1310816

Priority Date

22 July 2009

Trade Mark

GLOBAL GAS

(“the Trade Mark”)

Services

Class 33:  Certification services (“the designated services”)

1. The parties filed and served evidence as follows:

Evidence in Support

• Statutory Declaration by Sarah Margaret Elliott Murray, solicitor of [ten] Mallesons Stephen Jaques instructed by Opponent, made 15 August 2011 with Exhibits SMEM‑1 to SMEM-9 (“Murray”).

Evidence in Answer

• Statutory Declaration by George Sokol, Applicant, made 9 November 2011 (“Sokol 1”)

• Statutory Declaration by George Sokol, Applicant, made 9 November 2011 , with Attachments A to C  (“Sokol 2”)

1. I heard the matter as delegate of the Registrar of Trade Marks on 16 April 2013 in Sydney. Vineetha Veerakumar of King & Wood Mallesons Lawyers, appeared for the Opponent. The Applicant neither filed submissions nor appeared at the hearing.

Standard of Proof

1. The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Grounds of Opposition

1. The notice of opposition (“the Notice”) nominated a number of grounds of opposition available under the Act. In her submissions, Ms Veerakumar advised that only the sections 44, 42 and 60 grounds were pressed by the Opponent.

2. To succeed in its opposition the Opponent bears the onus of establishing at least one of these three grounds. As will become apparent, I have only found it necessary to address the section 60 ground in this decision and this is discussed below. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considers relevant in proceedings before the Court.

3. None of the evidence served and filed by the Opponent appears to go to the remaining grounds in the Notice that were not pressed and for the sake of completeness I find that these grounds have not been established.

Discussion - Section 60 ground of opposition

1. Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

1. To satisfy section 60 the Opponent must establish:

• That another trade mark(s) had, before the priority date of the Applicant’s trade mark, acquired a reputation in Australia in respect of particular goods/services; and

• Because of the reputation of that other trade mark(s), the use of the Applicant’s trade mark would be likely to deceive or cause confusion.

1. The Opponent is the proprietor of International Registration 979781 to which protection has been extended as Australian registration 1271052 as follows:

Regn No.

1271052 (IR 979781)

Priority Date

11 January 2008

Trade Mark

(“the Opponent’s Mark”)

Services

Class 35: Advertising; business management; business administration; office tasks, drafting of documents and certificates (office tasks); preparation of reports by efficiency experts; preparation of expert reports in the field of business management; organisation and personnel management consultancy; representation of others with regard to economic interests towards policy makers and other persons, organisation of trade fairs and exhibitions for commercial or advertising purposes; all of the aforesaid services in connection with products and services directly related to agriculture, aquaculture, forestry, animal feed, and farming

Class 41: Education; providing of training; entertainment; sporting and cultural activities; arranging of seminars for training and further training; arranging of congresses and conferences for commercial purposes, organisation of exhibitions for cultural and educational purposes; all of the aforesaid services in connection with products and services directly related to agriculture, aquaculture, forestry, animal feed, and farming

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; certification of quality management systems; preparation of technological and scientific expert reports; all of the aforesaid services in connection with products and services directly related to agriculture, aquaculture, forestry, animal feed, and farming

Endorsements: Trade Mark Description: Colour Claimed: GREEN.

1. Murray contains evidence of the following:

• GLOBALG.A.P. is a private sector body that sets voluntary standards for the certification of production processes agricultural (including aquaculture) products around the world.

• It commenced in 1997 as a European initiative to set common standards for “Good Agricultural Practice (GAP)” and was called EUREPG.A.P.

• Over the next ten years EUREPG.A.P. certification gained global significance and in 2007 it rebranded as GLOBALG.A.P.

• GLOBALG.A.P. certification is carried out by more than 100 independent and accredited certification bodies in more than 100 countries. It is open to all producers worldwide.

• As at February 2008, GLOBALG.A.P. certificates were readily available in Australia.

• Since October 2008, the Joint Accreditation System for Australia and New Zealand (JAS-ANZ) has been one of the two independent organisations charged with reviewing applications by entities wanting to have their schemes GLOBALG.A.P. certified.

• As of December 2007, there were at least 205 GLOBALG.A.P. certified producers in Australia alone.

• As at August 2011, the following GLOBALG.A.P. associate members operating in Australia were certified to audit GLOBALG.A.P. standards:

  oNCS International Pty Ltd;

  oSci-Qual International Pty Ltd; and

  oSAI Global Assurance Services (Asia Pacific/Australian Region)

1. When considering reputation in Australia, I refer now to the passage of Kenny J in McCormick & Company Inc v McCormick (2000) 51 IPR 102 at [86], which states:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

2. While the Opponent did not provide evidence of sales and expenditure, there was evidence of substantial use of the Opponent’s Mark in relation to the designated services, with significant use by corporations (such as ALDI, McCain’s and McDonalds) in Australia and worldwide.

3. I am satisfied that the Opponent’s evidence demonstrates a reputation in services similar to the designated services as at the priority date.

4. In considering the likelihood of deception or confusion, I was reminded of the test set out by French J in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IP 411 at 426:

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

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

5. The Trade Mark and the Opponent’s Mark both specify the same services: the Applicant for “certification services” and the Opponent has demonstrated its implementation of mechanisms, policies and standards for the certification of agricultural policies around the world. The Applicant’s designated services are not limited to any specific industry or use.

6. Although deceptive similarity is not required under section 60 of the Act, the two marks differ only in punctuation marks and the last letter: GLOBAL GAS and GLOBALG.A.P. There is considerable visual similarity and an element of aural similarity.

7. The similarity gives rise to an appearance of a family of trade marks: John Fitton & Co Ltd's Appn (1949) 66 RPC 110, at 113, (the trade mark EASYJEST considered in face of the registered trade mark JEST). The second element of the Opponent’s mark is an acronym for “Good Agricultural Practices”, the second element of the Trade Mark might be mistakenly considered to be a related acronym.

8. There is also a risk that consumers would consider that the Opponent who has established its reputation in certification services in the agricultural market is extending its certification services specifically to gas products or services.

9. I am satisfied that the Opponent has provided sufficient evidence and submissions to demonstrate that there is a real likelihood consumers  will wonder or be left in doubt about whether the two sets of certification  services in question come from the same source.

Decision

1. Section 55(1) of the Act provides:

   Unless the proceedings are discontinued or dismissed, 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. I have found the opposition to be successful on the ground raised pursuant to section 60 of the Act. I accordingly refuse to register trade mark application number 1310816.

Costs

1. In the event that the Opponent prevailed, Ms Veerakumar sought an award of costs in the Opponent’s favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

9 July 2013