Fresh Intellectual Properties Inc v Russell Goldman

[2006] ATMO 21

TRADE MARKS ACT 1995

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

Re:Opposition by Fresh Intellectual Properties, Inc to registration of trade mark application 762635(35,39,42) - 1800-FLOWERS and flower device - filed in the name of Russell Goldman.

Delegate:

Deirdre O'Brien

Representation:

Opponent

Carmen Champion of counsel instructed by Hodgkinson McInnes Pappas, patent and trade mark attorneys

Applicant

Self represented

Decision:

S52 opposition

Grounds under ss58 and 60 not made out. Registration may proceed. Costs awarded against opponent.

Background

1. Trade mark application 762635 was filed by Mr Russell Goldman (‘the applicant’) on 20 May 1998.  Relevant details of the application are as follows:

Trade Mark     

ServicesClass 35: Retailing of flowers, balloons, gourmet food baskets and gift baskets; receiving orders for flowers, balloons, gourmet food baskets and gift baskets by telephone

Class 39: Delivery of flowers, balloons, gourmet food baskets and gift baskets

Class 42: Arranging of flowers

1. The application was examined and the examiner found there was ground for rejecting it under section 44 of the Trade Marks Act 1995 (‘the Act’).  The applicant provided evidence of trade mark use which enabled the application to be accepted under the provisions of subsection 44(4) for possible registration[1].  On 17 February 2000 Fresh Intellectual Properties, Inc (‘the opponent’) filed a notice of opposition to registration.

   [1] Subsequent to acceptance the trade mark applications cited against the present application were withdrawn (after opposition to registration) or allowed to lapse.

2. Considerable time passed while the parties attempted to settle the opposition by negotiation.  When negotiations failed both parties asked to be heard by the Registrar.  They had in the meantime filed and served evidence pursuant to the Trade Marks Regulations 1995.

3. The matter was heard by me, as the Registrar’s delegate, in Canberra on 11 November 2005. The applicant was self represented. The opponent was represented by Ms Carmen Champion of counsel, instructed by Hodgkinson McInnes Pappas, patent and trade mark attorneys. The grounds pressed by the opponent at the hearing were those pursuant to sections 58 and 60 of the Act. The onus is on the opponent to make out at least one of these grounds[2]. 

   [2] as recently confirmed in Kowa Co v NV Organon (2005) 66 IPR 131 at 153

Evidence

1. The evidence filed and served by both parties is as follows.

Declarant	Date	Exhibits	Known as
Evidence in support	Christopher McCann Christopher McCann	11.02.2003 11.04.2003	CGMcC1 to 24	McCann 1 McCann 2
Evidence in answer	Russell Goldman	13.01.2004	A to K	Goldman
Evidence in reply	Craig Douglas Christopher McCann	06.12.2004 09.12.2004	CD-1 to 5 CGMcC25 to 26	McCann 3

Section 58 ground

1. To make out this ground the opponent needs to show the applicant is not the owner of the trade mark.  It can do this by providing evidence of it (the opponent) or another party having used the identical trade mark, or a trade mark that is almost identical[3], in relation to the same kind of services as those specified by the applicant.  That use must have been public use in Australia[4] and have taken place before the date on which the applicant filed the present application, namely 20 May 1998. 

   [3] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391

   [4] Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 at 432

2. The opponent says it used what it describes as its 1-800-FLOWERS trade marks in Australia before 20 May 1998 in relation to the same class 35 and 39 services claimed by the applicant.  It submits those trade marks are substantially identical to the applicant’s trade mark.

3. The accepted test for substantial identity is that provided by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[5]:

   In considering whether marks are substantially 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.

   [5] (1961) 109 CLR 407 at 414

4. The opponent’s trade marks are depicted next to the applicant’s trade mark for a side by side comparison.  This comparison should, according to Justice Gummow in Carnival Cruise Lines Inc v Sitmar Cruises Ltd[6], give rise to ‘a total impression of similarity’. 

   [6] supra note 3

Applicant’s trade mark	Opponent’s trade marks
	First	Second	Third	Fourth
1-800-FLOWERS	800-FLOWERS

1. I find there is no such impression between the applicant’s trade mark and the first and second of the opponent’s trade marks.  It is true all three trade marks contain the same (or similar) alphanumeric telephone number.  But whereas the phone number(s) are the sole constituents of the opponent’s trade marks, the applicant’s trade mark contains other material of greater prominence and impact.  The feature in the applicant’s trade mark which immediately strikes the eye is the representation of the half flower atop a rectangular box.  I consider the flower device to be the essential feature of the applicant’s trade mark and it relegates the other material in the trade mark, being the telephone number and the words FREECALL and AUSTRALIA WIDE, to mere descriptions.  On these bases I find there is no total impression of similarity. 

2. The opponent has referred me to the decision of the Assistant Registrar in Sundream Pty Ltd v Hartland Investments Pty Ltd[7].  The trade marks compared in that case were the word SHAPES on the one hand and a composite trade mark consisting of a simple representation of the letter S with the word SHAPE on the other.  The Assistant Registrar said at 304:

   The principal element in the applicant’s trade mark is the word “Shape”.  It is surmounted by a simple letter “S” device set within a circle.  The device however does not detract from the impact of the word “Shape”.  The opponent’s trade mark registrations are for the word “Shapes” simpliciter.  The principal elements of the two marks is the word “Shape”, and it is held in common.  While the device in the applicant’s mark is clearly an additional element, both it and the opponent’s mark present themselves to members of the purchasing public as the mark SHAPE or SHAPES and, if the presence of the device were noted, it would be viewed as nothing more than a variation in the presentation of the mark.  I consider that these marks are substantially identical.

   [7] (1988) 13 IPR 302

3. I am satisfied that case can be distinguished from the present.  The most prominent feature of the composite trade mark considered by the Assistant Registrar was the word SHAPE and that word did not lose its trade mark identity when combined with the letter “S” device.  Furthermore the Assistant Registrar’s decision pre-dates Justice Gummow’s direction[8] that nothing less than a ‘total impression of similarity’ of the relevant trade marks is sufficient.  I am satisfied there is no such impression with respect to the first and second of the opponent’s trade marks in this case.  Although the applicant’s trade mark contains an alphanumeric telephone number, it has little ‘impact’ compared with that created by the flower device.

   [8] supra note 3

4. The opponent’s third trade mark consists of a domain name which has been embellished with a single flower. I find there is no total impression of similarity between it and the applicant’s trade mark.

5. I find the opponent’s fourth trade mark, however, to be substantially identical to the applicant’s trade mark.  The essential feature of both is a flower device.  In the applicant’s trade mark the device consists of a flower emerging from a rectangular shaped box.  Only half of the flower is visible.  In the opponent’s trade mark there are four flowers (plus stems) atop the box.  Nonetheless, these differences do not detract from the total impression of similarity. 

6. Having established the existence of a substantially identical trade mark, the opponent now needs to show there was public use of that trade mark in Australia before 20 May 1998.  I find it has not met that onus.

7. The evidence shows the trade mark was displayed on the cover of the October 1996 edition of a magazine called Flora Culture International[9].  The opponent says that magazine is circulated throughout Australia but provides no circulation details to substantiate this.  However, even if that issue of the magazine had been circulated here, use of a trade mark in connection with a cover article describing the opponent’s American business is not use in the course of trade, that is, the offering of goods or services for sale.  There is nothing in the opponent’s evidence to indicate that prior to 20 May 1998 the trade mark was used in material promoting the opponent’s services to Australian customers.

   [9] Exhibit CGMcC-19 to McCann 1

8. The evidence also shows the trade mark was displayed at the opponent’s web site ( from 1995 (when the web site was opened) to 1998[10].   I find that use was not public use in Australia.  As Justice Merkel said in Ward Group Pty Ltd v Brodie & Stone PLC[11]:

   The website proprietors’ advertising on the internet of products for sale was a marketing of those products to the world at large and I am not satisfied that it was a marketing that was specifically targeted or directed at, or was specifically intended to be acted upon by, consumers in Australia.  It is correct that Australia was listed in a “drop down” country box, together with numerous other countries, as a destination to which products may be shipped.  Also, on the Westons website, an Australian dollar price was quoted together with other currencies as an indicative conversation price of a number of products.  However, I am not satisfied that those circumstances indicated a specific intention that the particular goods in question were being marketed to consumers in Australia in a manner that would differ from the way in which those, and other goods were being offered to consumers around the world.  Rather the circumstances indicate no more than that the website proprietors expected that there may be potential consumers in Australia, in the same way as they expected that there may be potential customers elsewhere in the world, that might be interested in purchasing any of the products advertised on their websites.

   [10] Exhibit CGMcC-14 to McCann 1 and exhibit CGMcC-26 to McCann 3.

   [11] (2005) 64 IPR 1 at 10-11

9. His Honour continues (at 12):

   In summary, the use of a trade mark on the internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. [emphasis added]

10. The opponent has not provided ‘more’.  Its evidence lists the number of ‘user visits’ to its web site according to domain and shows a number of ‘visits’ from users in the .au domain in 1998[12].  It also provides a list of customers in Australia who had placed orders with it from 1994 onwards for ‘floral products and flowers for delivery in the USA’[13].  However it does not say, nor does the evidence demonstrate, that those orders were placed via the web site.  If they had, it should have been relatively easy to substantiate.  In his second declaration Mr McCann says (at paragraph 8):

    Once a customer has made contact regular advertising material, special offers and promotional offers and promotional material are sent to the customer by e-mail or by direct mail shots.  Examples of such direct e-mail are produced and shown to me marked Exhibit CGMcC-2. 

    [12] Exhibit CGMcC-15 to McCann 1

    [13] Exhibit CGMcC-20 to McCann 1

11. Exhibit CGMcC-2 consists of a series of emails sent to a customer in the UK between 2000 and 2002.  There are no emails in evidence to Australian customers following up orders placed at the web site.  

12. Mr McCann also says (at paragraphs 6 and 7):

    1-800-FLOWERS is a worldwide florist which sells flowers and floral products online, by telephone, catalogue and at retail stores.  The advent of the Internet has very substantially changed the way in which many companies do business and this has certainly been the case with 1-800-FLOWERS’ operations. …

    Although over 40% of our sales now take place on-line, the Trade Mark 800-FLOWERS has its origin in the 1970’s as an alpha-numeric trade mark.  Simply by dialing the telephone combination 800-FLOWERS and, more recently, 1-800-FLOWERS in virtually any part of the world, twenty-four hours a day, seven days a week, customers are able to place orders for delivery in their country or in another country around the world.  For most customers outside the United States it would of course be necessary to prefix the telephone combination 1-800-FLOWERS with the relevant country code and in the case of some of those countries it may also be necessary for customers to use the numeric telephone number (1-800-356-9377) which corresponds to 1-800-FLOWERS.  By way of example, in 2001, customers from over 170 different countries around the world, including Australia, placed orders with my Company.

13. I am satisfied it is more likely that not that the orders documented in Exhibit CGMcC-20 were placed by telephone, not online. That is a finding fatal to the opponent’s case under section 58. As Justice Merkel in Ward Group Pty Ltd v Brodie & Stone PLC[14] explains:

    Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.

    [14] supra note 11

14. If the opponent had been able to demonstrate that even one of the orders from Australian customers placed in the period 1995 to 20 May 1998 had been made online, it would have been sufficient to establish public use of the substantially identical trade mark in Australia.  In the absence of such evidence, I am satisfied it is the applicant, not the opponent, who is the owner of the present trade mark.

Section 60 ground

1. The threshold test for a section 60 ground is that the applicant’s trade mark and one or more of the opponent’s trade marks are deceptively similar[15].  I find the applicant’s trade mark and all four of the opponent’s trade marks to be deceptively similar. 

   [15] Section 10 of the Act provides:

   For the purposes of this Act, 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.

2. The second leg of section 60 is that one or more of the opponent’s trade marks had a reputation in Australia at 20 May 1998. The opponent claims to be the world’s largest florist[16] and I am satisfied from its evidence that at 20 May 1998 1-800-FLOWERS was a very big player indeed in the North American market.  I am not satisfied, however, that its reputation in North America had ‘spilled over’ into the Australian marketplace. 

   [16] Paragraph 12 of McCann 2

3. The opponent points to Conagra Inc v McCain Foods (Australia) Pty Ltd[17] and the words of Justice Lockhart at 233-4 that:

   It is no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on. … Goods and services are often preceded by their reputation abroad.  They may not be physically present in the market of a particular country, but are well known there because of the sophistication of communications which are increasingly less limited by national boundaries, and the frequent travel of residents of many countries for reasons of business, pleasure or study.

   [17] (1992) 23 IPR 193

4. I note, however, that His Honour continues (at 234):

   The real question is whether the owner of the goods has established a sufficient reputation with respect to his goods within the particular country in order to acquire a sufficient level of consumer knowledge of the product and attraction for it to provide custom which, if lost, would likely result in damage to him. This is essentially a question of fact.

and at 237:

The reason for the requirement of a substantial number of persons is in my opinion that the reputation of a plaintiff in the forum is the source of his potential business there; his goods are known to people there who are his potential customers. For him to have in a practical and business sense a sufficient reputation in the forum requires something more than a reputation among a small number of persons, although the size and extent of the class may vary according to the circumstances of the case. Also, the law seeks to promote local competition and innovation and does not extend its protection to persons whose goods are not sufficiently known in the forum.

1. The evidence as to reputation in Australia in the aforementioned case essentially consisted of evidence of trade mark reputation in the US market, advertising in US magazines and journals which were available in Australia, statistics showing the number of Australian visitors to the US and statements from persons resident in Australia who were aware of the US product.  Justice Lockhart confirmed (at 241) the finding of the primary judge that this was not sufficient to establish reputation among a substantial number of persons in Australia. 

2. The opponent in the present opposition has the additional burden of having chosen a trade mark with very little, if any, inherent trade mark identity[18].  1-800-FLOWERS is at first sight an alphanumeric telephone number.  The Australian public is familiar with such telephone numbers and is also aware they are available to telephone subscribers in many English-speaking countries including the USA and UK.  There will be an expectation among consumers that alphanumeric telephone numbers, like country specific domain names, will be allocated to a local subscriber. 

   [18] Paragraph 38 of McCann 2 indicates the opponent would not agree with this.  Mr McCann considers ‘1-800-FLOWERS and 800-FLOWERS have a highly distinctive character.’

3. This case, therefore, is not an example of a local trader ‘pirating’ the intellectual property of an overseas trader.  The opponent has not devised a unique trade mark that no other trader would be likely to think of and want to use[19].  1-800-FLOWERS is not in the same category as KODAK or OXO, trade marks which were newly coined and inherently adapted to distinguish.  The opponent is using an inherently non-distinctive trade mark, one which consumers would expect to be owned and used by different entities in different countries, but is claiming it is a trade mark that is recognized worldwide as distinguishing its services.

   [19] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514

4. I do not dismiss this argument out of hand but it requires much more evidence in support than the opponent has provided.  At the very least the opponent needed to show a significant presence in the Australian marketplace at the relevant date.  This could have been through marketing directed to Australian consumers which invited them to ring the American 1-800 number or to place an order via the web site.  It may have been persuasive if a significant number of Australian traders had confirmed the reputation of 1-800-FLOWERS and indicated they would be confused as to trade origin if a similar trade mark were to be used in Australia.  But the only trade declarations as to reputation are those filed and served by the applicant[20]. Those declarants all say they associate 1800 FLOWERS with the applicant.

   [20] Exhibits B to F, H of Goldman

5. Accordingly I am not satisfied the opponent has established the requisite reputation in Australia for any of its trade marks. I find the section 60 ground fails on that basis.

1. I draw no adverse inference from the applicant’s statement that it was prompted to start its business after a January 1996 visit to the US where it observed the opponent’s successful use of the alphanumeric telephone number in relation to its business[21].  There is nothing untoward in a local trader learning from the success of an overseas trader with such a number and applying to the relevant Australian telephone company for an appropriate number to be allocated to it.  There is also nothing untoward in the applicant using that telephone number as part of its trade mark. 

   [21] Paragraph 2 in exhibit A to Goldman

2. I do not consider the applicant’s motives in applying for registration were prompted by anything other than a genuine intention to use the trade mark in the course of trade.  The evidence shows that at the filing date it was already using the present mark[22] and it continues to do so[23].  The opponent has been aware of the applicant’s use of the 1800 number since 1996 when it expressed an interest in buying it[24].  There is nothing in evidence to show that the opponent at any stage warned the applicant about such use.

   [22] Exhibit RG-3 to exhibit A to Goldman

   [23] Paragraphs 10 to 12 of Goldman

   [24] Paragraph 19 in exhibit A to Goldman

Decision

1. As neither of the grounds of opposition has been made out, my decision is that trade mark application 762635 may proceed to registration one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. I award costs against the opponent according to the official scale.

Deirdre O'Brien

Hearing Officer

Trade Marks Hearings

28 February 2006