Fresh Venture Group Pty Ltd v Box Corporate Food Services Pty Ltd

[2018] ATMO 4

TRADE MARKS ACT 1995

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

Re:Opposition by Fresh Venture Group Pty Ltd to registration of trade mark application no. 1637357 – THE FRUIT BOX - in the name of Box Corporate Food Services Pty Ltd

Delegate:	Bianca Irgang
Representation:	Opponent: Chris Burgess of Counsel instructed by MacMillan Trade Mark Attorneys Applicant: Ben Gardiner of Counsel instructed by KLC Law
Decision:	2018 ATMO 4 Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 41 and 44 – Section 41 established for all services – evidence insufficient - trade mark registration refused.

Background

1. Box Corporate Food Services Pty Ltd (‘the applicant’), filed trade mark application number 1637357 on 28 July 2014 in class 35 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  THE FRUIT BOX (‘the Trade Mark’)

   Trade mark application no: 1637357            

   Filing Date:  28 July 2014

   Specification:  Class 35: Retailing, wholesaling, direct selling and on-line selling of goods, including fruit and vegetables (‘the designated services’)

   Endorsements:  Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks on 17 December 2015. Subsequently Fresh Venture Group Pty Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).        

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 21 August 2017. The applicant was represented by Ben Gardiner of Counsel instructed by KLC Law. The opponent was represented by Chris Burgess of Counsel instructed by MacMillan Trade Mark Attorneys.

   Grounds of Opposition

5. The Notice nominated two grounds of opposition under the Trade Marks Act 1995 (‘the Act’) being section 41 and 44, which were both pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach of Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of  Garry Stephen Visontay (‘Visontay’) Director of Fresh Venture Group Pty Ltd, dated 1 July 2016

   ·Declaration of  Thomas Forster Ryrie Rutledge (‘Rutledge’) CEO of Grocery Delivery eServices Australia Pty Ltd, dated 2 March 2016

   ·Declaration of  Tony Castaldo (‘Castaldo’) Managing Director of Fruit Smart Pty Ltd, dated 25 February 2016

   ·Declaration of  Guy Redgrave (‘Redgrave’) Director of Wooden Box Factory Pty Ltd, dated 18 April 2016

   ·Declaration of  Duc Hua (‘Hua’) General Manager of Freshcorp Farms, dated 5 May 2016

   Evidence in Answer

   ·Declaration of Martin Halphen (‘Halphen’) Managing Director of Box Corporate Food Services Pty Ltd,  dated 26 September 2016

   ·Declaration of  Christine Fish (‘Fish’) Global Lead, Facilities Management of CB Richard Ellis, dated 22 September 2016

   ·Declaration of  Irene Siniakis (‘Siniakis’) Corporate Health Manager of Healthwise, dated 22 September 2016

   ·Declaration of  Jonathan Brett Isaacs (‘Isaacs’) CFO of Clemenger Group Limited, dated 22 September 2016

   ·Declaration of  Chaise Salvatore Ronald Pensini (‘Pensini’) CEO of Nutrano Produce Group, dated 5 October 2016

   ·Declaration of  Shanon Williams (‘Williams’) General Manager of Costa Farms & Logistics, dated 6 October 2016

   ·Declaration of  Simon Brett Goodwin (‘Goodwin’) CEO of Fifteenth Lamdina Pty Ltd, dated 12 October 2016

   ·Declaration of  Mark Maskiell (‘Maskiell’) CEO of The Melbourne Market Authority, dated 12 October 2016

   Evidence in Reply

   ·Declaration of  Garry Stephen Visontay (‘Visontay 2’) Director of Fresh Venture Group Pty Ltd, dated 20 December 2016

   Discussion

   Section 41 - Trade mark not distinguishing applicant’s goods or services

7. Section 41 provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:          For goods of a person and services of a person see section 6.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)  This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   iii)  any other circumstances.

   Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)    the time of production of goods or of the rendering of services.

   Note 2:       For goods of a person and services of a person see section 6.

   Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a  mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:       For applicant and predecessor in title see section 6.

   Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

8. Section 41 of the Act provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods and services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition the onus is on the opponent to make its case under section 41. Therefore, the opponent must establish that the applicant’s trade mark is not capable of distinguishing the services in question.

9. Turning to the relevant consideration of whether a trade mark is inherently adapted to distinguish, in the case of Clark Equipment Co v Registrar of Trade Marks Kitto J found:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

   …

   [T]he question [is] whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. [4]

   [4] (1964) 111 CLR 511 [513–14].

10. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[5](‘Cantarella’) noted the following part of Kitto J’s test:

    in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess

    [5] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.

11. Considering this passage the High Court explained that the inherent adaptation of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods (or, as here, the designated services)[6].

    [6] Cantarella at [28], [30] per French CJ, Grennan and Kiefel JJ

12. Chris Burgess, counsel for the opponent, has submitted the opponent’s case on the section 41 ground is based upon:

    ·The term THE FRUIT BOX is not to any extent inherently adapted to distinguish the designated class 35 services;

    ·The applicant has not, on the evidence, used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact distinguish the designated class 35 services as being those of the applicant;

    ·Section 41(3) of the Act required the opposed application to be refused in these circumstances.

13. Mr Burgess argues that the ordinary signification of the words THE FRUIT BOX is straightforward: a box that contains fruit or is used to package fruit. He goes on to state that there can be no question that consumers and persons trading in fruit will understand THE FRUIT BOX by its ordinary, plain English meaning: Thus, THE FRUIT BOX is directly descriptive of a characteristic of the designated services because it directly describes the fruit box that is offered for retail, wholesale or online sale and/or the box itself that the fruit will be packaged in.

14. Mr Burgess referred me to a number of examples in the opponent’s evidence which supported the opponent’s claims that other traders in the marketplace were using THE FRUIT BOX in a purely descriptive fashion when offering retail services, namely selling goods.

15. Ben Gardiner, counsel for the applicant, has argued the opposite view. He states that THE FRUIT BOX is, at least to some extent, inherently adapted to distinguish the applicant’s services from those of other traders because:

    ·“fruit box” is not “directly descriptive” of the designated services; AND

    ·The use of the definite article as the first word in the Trade Mark adds further distinctiveness by changing the ordinary signification of the phrase “fruit box” from the general to the particular.

16. In considering the Trade Mark it is clear to me that the ordinary signification which may be applied to the expression “The Fruit Box” by the general consumer is likely to be that of a ‘box of fruit’. The applicant has argued that the word “THE” changes the phrase “fruit box” from the general to the particular, however, I am not persuaded by this reasoning. The word “THE” is at the beginning of the Trade Mark but it is about as commonly used as a word can be. It has limited value when it comes to distinguishing the services of one trader from another. The terms “FRUIT” and “BOX” are likely to be more memorable than “THE”. On top of this, the expression THE FRUIT BOX is descriptive of a box of fruit. The imagery and recall of the consumer faced with the Trade Mark would likely be fruit boxes. That the word ‘THE’ changes the ordinary signification of the phrase from the general to the particular has little to no impact on that imagery and recall.

17. Turning to the designated services of the applicant, the application claims Retailing, wholesaling, direct selling and on-line selling of goods including fruit and vegetables. As an aside I note from the applicant’s evidence that the applicant’s service of interest is the selling of goods, namely fruit and vegetables, most often in boxes.

18. When considering whether or not the Trade Mark is capable of distinguishing the applicant’s services from those of another trader, I am influenced by the fact that the expression “THE FRUIT BOX” refers to an item rather than a service. However, it is clear from the evidence[7] provided by the opponent that ‘THE FRUIT BOX” or “FRUIT BOX” are commonly understood and used terms within the fruit and vegetable retail and wholesale markets within Australia. It is also clear from the evidence that a consumer would not be wrong in assuming that a retailer promoting its retail services under the Trade Mark was in the business of selling fruit. 

    [7] Visontay 1, Exhibits GSV-6 to GSV-38,  GSV-45 to GSV-49, GSV-51 and GSV-52 accompanying Visontay 1, Castaldo.

19. Given all of the above, I am satisfied that the section 41(4) ground of opposition has been established. However, establishing a section 41 ground of opposition need not be fatal to the application. Section 41(4) provides for the registration of trade marks that have some inherent adaptation to distinguish where it can be shown that the Trade Mark does or will distinguish the designated services as being those of the applicant. Therefore, I must consider the applicant’s evidence of use of the Trade Mark.

    Application of section 41(4)

20. The applicant’s Trade Mark is the expression THE FRUIT BOX and this matter is ultimately one of whether or not the applicant’s evidence establishes that the Trade Mark is either currently acting or will act, in its own right, as a badge of origin for the applicant when applied to its retailing and wholesaling services.

21. Mr Halpen is the Managing Director of the applicant and he avers that the applicant owns a number of trade marks which incorporate the word BOX and I note that all of the trade marks listed in the Halpen declaration are composite trade marks which include stylization and graphic devices. Mr Halpen’s declaration is most concerned with providing a critique of the opponent’s Visontay 1 declaration rather than providing evidence to substantiate the applicant’s use of the Trade Mark. The applicant’s evidence of use is limited to the Isaacs, Pensini, Williams, Goodwin, Fish and Siniakis declarations which are provided by customers of the applicant. These customers aver in similar fashion that upon seeing ‘the trade mark The Fruit Box’ they automatically associate this mark with the applicant’s services of delivering a range of fruit on a regular basis. These declarations are of limited use in establishing if the Trade Mark does or will distinguish the retailing of fruit as being the services of the applicant as it is unclear whether the declarants are referring to the applied for Trade Mark or the applicant’s stylized composite trade mark incorporating the words THE FRUIT BOX with device as can be seen below:

22. Further to the above, the retail and wholesale fruit and vegetable markets within Australia are a substantial industry. The Australian retail and wholesale markets involve 2,690 and 1,540 businesses respectively which a combined revenue of $15 billion annually[8]. The fact that the applicant has chosen to provide only seven declarations and no evidence of sales, adverting expenditure or extent and duration of its sales in Australia under the Trade Mark does not assist the applicant in this case.

    [8] GSV-43 and GSV-44 accompanying Visontay 1.

23. The opponent has correctly pointed out that given the size of the retail and wholesale fruit and vegetable markets in Australia that seven declarations containing assertions unsupported by accompanying evidence are not sufficient to establish that the Trade Mark distinguishes or will distinguish the applicant’s services from those of other traders. The applicant’s evidence does not satisfy me that the Trade Mark distinguishes the services of the applicant from the similar goods and services of other traders. The applicant has also offered very little in the way of its intended use of the Trade Mark, so I am unable to be satisfied that it will be capable of distinguishing the applicant’s services in fact at some point. I therefore take the Trade Mark to be not capable of distinguishing the services of the applicant. The opponent has established the section 41 ground of opposition.

    Decision

24. Section 55 of the Act 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:          Forlimitationssee section 6.

25. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 41. Accordingly I refuse to register trade mark application no. 1637357.

    Costs

26. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Oppositions and Hearings

    12 January 2018