Freshcare Limited v Pt. Ultra Sakti
[2023] ATMO 78
•16 June 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Freshcare Limited to registration of trade mark application 2115355 (classes 3, 5) – FreshCare with tree device – in the name of Pt. Ultra Sakti
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: David Larish of counsel instructed by Simpsons Solicitors Applicant: Angela McDonald of counsel instructed by Moore + Moore IP |
| Decision: | 2023 ATMO 78 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 43, 44 and 60 pursued – none established – trade mark may proceed to registration |
Background
This decision concerns an opposition brought by Freshcare Limited (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: (‘Trade Mark’)
Application number: 2115355
Owner: Pt. Ultra Sakti (‘Applicant’)
Filing date: 27 August 2020
Specification:[1] Class 3: (including) cosmetic products; cleaning preparations for household purposes; perfumes, eau de cologne and aftershaves; air fresheners; none of the foregoing being for hair care
Class 5: (including) pharmaceutical preparations for health care; medicated energy food/drink; medicines; disinfectants; none of the foregoing being for hair care
(‘Applicant’s Goods’)
Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
[1] An indicative specification is provided. The full specification appears in Annexure A to this decision.
The acceptance of the Trade Mark for possible registration was advertised on 23 March 2021. The Opponent filed a notice of intention to oppose, followed by a Statement of Grounds and Particulars (‘SGP’) on 21 June 2021. The Applicant filed a notice of intention to defend on 16 September 2021.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). In turn, Evidence in Reply (‘EIR’) was filed by the Opponent and an oral hearing was requested. Submissions were filed by the Opponent on 6 March 2023 (‘Opponent’s Submissions’) and by the Applicant on 13 March 2023 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 20 March 2023. David Larish of counsel presented submissions on the Opponent’s behalf and Angela McDonald of counsel presented submissions on the Applicant’s behalf.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 43, 44, 58, 60 and 62A of the Act. However, the Opponent’s Submissions stated that the grounds under ss 58 and 62A were not pressed. As such, I treat those grounds as abandoned.
To be successful, the Opponent bears the onus of establishing at least one of the grounds.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 27 August 2020 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed:
| EIS |
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| EIA |
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| EIR |
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EIS
According to the Siebum Declaration, ‘[t]he Opponent was established in 2000 to provide a third-party verification process for the Australian fresh produce industry’[4] and it has used the brand ‘Freshcare’ continuously since 2000. The Opponent provides ‘internationally recognised assurance standards’ and its ‘Freshcare Standard is Australia’s largest and most widely adopted fresh produce assurance program’.[5] The Freshcare Standard covers produce from over 250 crops (including citrus, flowers and tea tree) and many of these crops are purportedly used as ingredients in cosmetic products. Ms Siebum declares that supply chain customers rely on the ‘Freshcare Standard to show the farms and businesses they source ingredients from, comply with safe food handling practices’.[6]
[4] Siebum Declaration, [8].
[5] Ibid [10]–[11].
[6] Ibid [12].
The Opponent assists businesses to achieve the Freshcare Standard certification through an approved network of trainers and via its online program ‘Freshcare eLearning’. It is declared that since the Opponent ‘has offered an education platform, just under 20,000 trainees have completed the course’.[7] Ms Siebum states that the ‘Freshcare Standard has successfully achieved recognition against the Global Food Safety Initiative (GFSI) benchmark which ensures the Standard is international recognised by global buyers’.[8]
[7] Ibid [19].
[8] Ibid [22].
10. The Siebum Declaration states that ‘[b]usinesses certified by the Opponent obtain a limited non-exclusive licence to use FRESHCARE’[9] as well as the following logos to demonstrate their Freshcare accreditation:
[9] Ibid [18].
| 311 Mark[10] | Opponent’s Logo |
[10] Details of this certification trade mark registration are reproduced [22] of this decision.
11. Ms Siebum declares that over 12,900 businesses have been accredited by the Opponent since 2000. These businesses ‘promote being certified under the Freshcare Standard by displaying one of the Opponent’s logos on their boxes of fresh produce’.[11] In Ms Siebum’s opinion, this use ‘greatly expands the reach of the Opponent’s brand’.[12]
[11] Siebum Declaration, [32].
[12] Ibid [30].
12. According to the Siebum Declaration, the Opponent ‘invests heavily in the promotion and marketing of its FRESHCARE brand’.[13] Examples of this promotion include distributing monthly newsletters, attending conferences and hosting award ceremonies for its accredited customers. The ‘FRESHCARE brand’ is also promoted via a website accessible at and on social media. Ms Siebum opines that the ‘Opponent, its FRESHCARE brands and certification program also regularly appear in third party news articles and blogs’.[14]
[13] Ibid [24].
[14] Ibid [29].
13. Ms Siebum believes that ‘buyers at major supermarkets would recognise and be familiar with the FRESHCARE name and logos, including as indicating products are sourced from, or contain ingredients sourced from, farms certified by the Opponent’.[15] In her view, ‘if the Applicant were to use the Trade Mark in relation to a range of “FreshCare cosmetics” in Australia, there is a real possibility consumers will be deceived or confused as to whether those products originate from, or are certified or endorsed by the Opponent’.[16]
[15] Ibid [37].
[16] Ibid [39].
14. The Eadie Declaration annexes five articles which discuss the benefits of fruit and vegetable extracts being used as ingredients in skincare and hair care products. Screenshots of the Applicant’s website together with three pages of internet search results obtained from a search for ‘freshcare’ are also provided. A copy of the certification rules for the 311 Mark, which is the subject of Australian certification trade mark 901311, is also annexed to the Eadie Declaration.
EIA
15. According to the Pramono Declaration, the Applicant has been manufacturing and selling aromatherapy medicated oil for personal use (‘Products’) since 2010. The Products are supplied in roll-on bottles as well as via an inhaler. The Applicant does not currently sell the Products ‘into Australia either directly to consumers or via retailers for sale to Australian consumers’.[17] However, the Applicant intends to enter the Australian market and anticipates that the Products will be sold in Australia via Asian supermarkets, drug stores and pharmacies.
[17] Pramono Declaration, [13].
16. The Applicant first became aware of the Opponent when it opposed the current application. In Mr Pramono’s opinion, there is no likelihood of confusion between the Products and the Opponent’s Freshcare fresh fruits and vegetables. This is because use of the Products is topical and not oral. He further declares that the Applicant does not use fresh produce in the Products, rather the ‘efficacy of the Products is achieved by including different essential oils’.[18] Mr Pramono also rejects Ms Siebum’s claim that Australian consumers would be confused between the Trade Mark and the Opponent’s Freshcare brands.
EIR
[18] Ibid [18].
17. The BF Declaration annexes two articles discussing the term ‘essential oils’ as well as the perceived effects of such goods. Also annexed to the BF Declaration is a product recall notice for Kinder chocolate products, Macro certified coconut milk and Macro certified rice milk that was displayed in a Woolworths Metro store on 24 May 2022.
18. The Grime Declaration states that the ‘Freshcare Food Safety Standard is a voluntary industry program used by approximately 70% of the fresh produce market’.[19] Ms Grime declares that the Opponent actively monitors adherence to the Freshcare Standard because ‘any public issue with any product certified by Freshcare (or which has the appearance of certification by Freshcare) will be particularly damaging to Freshcare's reputation’.[20]
[19] Grime Declaration, [8].
[20] Ibid [11].
19. Ms Grime previously worked as a ‘Quality Specialist’ at Woolworths from 2010 to 2015. Ms Grime believes that her former Woolworths’ colleagues ‘would immediately associate a cosmetic product branded FRESHCARE with the Opponent and would assume the cosmetic product has been certified by the Opponent’.[21] The potential for confusion is allegedly exacerbated by the fact that members of the quality and sustainability teams at Woolworths ‘would not consider [the] Applicant's logo when considering whether to stock the Applicant's cosmetic products but instead have reference to the word mark FRESHCARE as this is what appears on inventory lists’.[22] On this basis, Ms Grime claims that there is a real possibility that use of the Trade Mark in relation cosmetic products would lead to consumer confusion.
Discussion
[21] Ibid [14].
[22] Ibid [15].
Section 44
20. Section 44 of the Act relevantly provides:
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.
21. To establish this ground of opposition, at least one trade mark which satisfies the following requirements must be identified:
it is in the name of a person other than the Applicant;
it has a priority date which is earlier than the Relevant Date;
it is in respect of similar goods and/or closely related services to the Applicant’s Goods; and
it is substantially identical with, or deceptively similar to, the Trade Mark.
22. The Opponent’s Submissions identified the following trade mark registrations (together ‘Opponent’s Registrations’) as underpinning this ground of opposition:
Trade Mark:
Registration number: 901311
Owner: Opponent
Priority date: 29 January 2002
Specification: Class 31: fruits, vegetables, herbs and nuts (‘311 Goods’)
Trade Mark: FRESHCARE (‘072 Mark’)
Registration number: 1682072
Owner: Opponent
Priority date: 19 March 2015
Specification: Class 35: farm management (business management); business advisory services; consultancy relating to business management
Class 41: training services; setting of training standards; arranging and conducting of workshops (training); education services
Class 42: setting of environmental standards; environmental monitoring services; environmental consultancy services; certification services relating to the application of industry standards; setting of quality standards; information services relating to quality standards; testing, analysis and evaluation services relating to the application of industry standards; accreditation services relating to the application of quality standards; Information services relating to quality standards; provision of information on food safety; setting of food safety standards; food standard monitoring services; certification services relating to food safety; provision of information on farm assurance programs; monitoring farm assurance programs and setting farm assurance standards for industries
Class 44: agriculture, horticulture and viticulture; advisory services relating to horticulture; providing information, including online, about agriculture, horticulture, and forestry services; consultancy relating to agriculture
(‘072 services’)
23. Each of the Opponent’s Registrations is registered by another person and has a priority date earlier than the Relevant Date. Requirements (i) and (ii) detailed at [21] of this decision are satisfied.
24. Turning to requirement (iii) mentioned at [21] of this decision, the Act defines goods as being similar to other goods if they are the same or are of the same description.[23] Determining if goods are similar involves a holistic consideration of various factors including:
[T]he nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (63 R.P.C. 59), Romer, J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.[24]
[23] Act s 14(1).
[24] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.
25. The Opponent asserts that the 311 Goods are similar to the Applicant’s Goods. No evidence was filed to demonstrate that these goods share any common use or trade channels. Nor was any rationale proffered as to why they should be considered similar. Instead, the high point of the Opponent’s Submissions is a bare allegation that ‘“preparations for washing fruit and vegetables” are similar to “fruits, vegetables”’.[25] It is not apparent why these claims should be considered similar. Washing preparations and fresh produce are evidently dissimilar in nature and use. Indeed, the only commonality appears to be that, at a general level, both goods are sold at supermarkets. However, this alone is insufficient to conclude that the goods are similar and, as the Applicant highlights, it disregards the fact that such goods would be sold in different sections of a supermarket. Likewise, the mere fact that some of the Applicant’s Goods may notionally contain fruit or vegetable extracts as an ingredient is plainly insufficient to establish that the goods are similar for the purposes of the Act. It is clear that the nature, use and trade channels of the respective goods are different. In the absence of any cogent evidence or submissions, there is no basis to conclude that the 311 Goods and the Applicant’s Goods are similar.
[25] Opponent’s Submissions, [44(a)].
26. The Opponent’s Submissions also include a blanket statement that the Applicant’s Goods are closely related to the 072 Services. The term ‘closely related’, which is not defined in the Act, focuses on the relationship between goods and services. In Registrar of Trade Marks v Woolworths Ltd, French J explained:
The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods.[26]
[26] [1999] FCA 1020, [38] (emphasis added).
27. Attention was drawn to the specific claims of ‘certification services relating to the application of industry standards; setting of quality standards’ contained in the 072 Services. The Opponent opined that these ‘would include certification services and the setting of quality standards in relation to all of the [Applicant’s] Goods’ because ‘cosmetic products are necessarily subject to certification and quality standards’.[27]
[27] Opponent’s Submissions, [43].
28. As I understand the argument, the Opponent’s position is that these services are closely related to the Applicant’s Goods because the services are performed on or in relation to the Applicant’s Goods (i.e., the physical goods must be inspected in order to be certified). This reasoning is not persuasive. First, the Opponent has not led any evidence or advanced any substantive argument to support its position. For example, it has not pointed to a single trader who provides both certification services as well as the actual goods. Second, as a matter of logic and due to the obvious conflict of interest that arises, it is highly improbable that consumers would expect a supplier of certification services to also provide the goods which are subject to the certification process. Instead, consumers are likely to perceive these services and goods to be unrelated given certifiers are invariably expected to be independent from the goods requiring certification. This expectation is candidly reflected in the Opponent’s self-described purpose which is ‘to provide a third-party verification process for the Australian fresh produce industry’.[28] Consequently, the claims for ‘certification services relating to the application of industry standards; setting of quality standards’ are not closely related to the Applicant’s Goods.
[28] Siebum Declaration, [8] (emphasis added).
29. In relation to the remainder of the 072 Services, no submissions have been provided as to why these services are closely related to the Applicant’s Goods. It is not apparent how any of the services in classes 35, 41, 42 and 44 would be closely related to the Applicant’s Goods. It has been observed that the ‘consideration of whether particular kinds of goods and services are “closely related” is an evaluative exercise whose outcome is likely to depend on the evidence presented’.[29] Here, no specific evidence has been presented and it is not appropriate for the Registrar to undertake supplementary research. The onus falls squarely on the Opponent. In these circumstances, the Opponent has not discharged its burden. It follows that the remaining 072 Services are not closely related to the Applicant’s Goods.
[29] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [48] (Kennett J) (emphasis added).
30. Requirement (iii) is not satisfied in relation to either of the Opponent’s Registrations. Given all four requirements identified at [21] of this decision must be satisfied to establish this ground of opposition, it is not necessary to consider requirement (iv).
31. The s 44 ground of opposition has not been established.
Section 60
32. Section 60 of the Act relevantly provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
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.
33. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
34. The Opponent’s Logo and the 072 Mark (together ‘Nominated Marks’) were identified as underpinning this ground of opposition.[30] The SGP characterised the reputation acquired by the Nominated Marks as having a dual nature – namely, a ‘reputation as a symbol that goods have been certified by the Opponent’ together with a reputation ‘for services of the Opponent in operating as a certification program provider’. The SGP also states that the Nominated Marks have a ‘reputation in relation to goods the subject of the opposed application and related goods and services’.
[30] Opponent’s Submissions, [7].
As a preliminary observation, I note that each trade mark must be considered separately for the purposes of s 60 of the Act.[31] As such, evidence of use which establishes that a reputation exists for a trade mark comprised of a word and logo will not automatically establish that a reputation also exists for the word or logo independently.
[31] See, eg, Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [89] (O'Bryan J); Qantas Airways Limited v Edwards [2016] FCA 729, [160] (Yates J).
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[32] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...[33]
[32] [2000] FCA 1335, [81] (‘McCormick’).
[33] [1992] FCA 159, [118] (‘ConAgra’).
37. Further, Kenny J explained in McCormick that:
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 … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[34]
[34] McCormick (n 32) [86].
38. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[35] Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[36]
[35] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[36] ConAgra (n 33) [77].
39. To support the alleged reputation, the Opponent’s Submissions emphasised that the 072 Mark has been continuously used since 2000 and the Opponent has certified over 12,900 businesses since its fresh produce assurance program was established.[37] Reliance was also placed on the total revenue generated under the Nominated Marks between July 2014 to June 2020 together with the training provided by the Opponent to numerous businesses to achieve certification.[38] In the Opponent’s view, the evidence shows that the Nominated Marks enjoyed a substantial reputation as at the Relevant Date.
[37] Opponent’s Submissions, [11]–[13].
[38] Ibid [14].
40. The Applicant’s Submissions concede that the Nominated Marks had acquired a reputation in Australia before the Relevant Date.[39] However, this concession was made with two qualifications. First, the Applicant claimed that the reputation only exists amongst ‘producers and retailers of fresh produce’ and does not extend to consumers at large.[40] Second, the Applicant asserted that the reputation is limited to specific services – namely the certification of food safety for fresh produce.[41]
[39] Applicant’s Submissions, [49].
[40] Ibid[49(a)].
[41] Ibid [49(b)].
41. In my assessment, the evidence fails to establish that either of the Nominated Marks had acquired a reputation in Australia before the Relevant Date. The Opponent’s evidence contains notable deficiencies. For example, the Opponent contends that it has used the 072 Mark since 2000. However, there is no dated evidence to substantiate this contention. Indeed, the earliest dated evidence consists of a single Facebook post made on 29 March 2011 which simply displays the domain name of the Opponent’s website. Meanwhile, most of the examples relied on by the Opponent are either undated[42] or dated after the Relevant Date.[43] The problematic nature of the Opponent’s evidence is further compounded by the fact that some parts demonstrate use of the 311 Mark and not the Nominated Marks.[44] Naturally, the aforementioned material does not advance the Opponent’s case.
[42] See, eg, Siebum Declaration, Annexures FF-1, FF-7 and FF-12.
[43] See, eg, Siebum Declaration, Annexures FF-2, FF-3 and FF-10.
[44] See, eg, Siebum Declaration, Annexures FF-8, FF-13 and FF-14.
42. While the confidential annual revenue figures disclosed are sizeable, they lack adequate contextualisation. No breakdown of the revenue figures has been provided. As such, it is unclear whether the disclosed revenue predominantly derives from, for example, the education and training services the Opponent provides via its ‘Freshcare eLearning’, or simply pertains to fees associated with the use and regulation of the Opponent’s certification mark. That is, the goods and services for which the reputation is said to exist in the Nominated Marks is not discernible. Furthermore, the Siebum Declaration acknowledges that the disclosed figures relate to revenue generated under the Nominated Marks as well as the 311 Mark.
43. It is also declared that the ‘Opponent invests heavily in the promotion and marketing of its FRESHCARE brand’.[45] However, no advertising expenditure figures have been supplied and there is minimal, if any, relevantly dated examples of what trade marks were promoted at the various conferences, trade shows and workshops that the Opponent either hosted or attended. I acknowledge that the evidence contains dated examples of the monthly newsletter distributed by the Opponent which demonstrate use of the Nominated Marks (or iterations thereof). However, these examples span the two months immediately prior to the Relevant Date. As such, it is unclear if these examples accurately reflect how the newsletter appeared when it was first released in January 2019 or whether such use has been consistent with the passage of time.
[45] Siebum Declaration, [24].
44. Overall, there is an insufficient amount of dated evidence before me to establish the alleged reputation of either of the Nominated Marks. It may be the case that the ‘Freshcare Food Safety Standard’ is ‘used by approximately 70% of the fresh produce market’ as Ms Grime contends. But the Grime Declaration offers no evidence to provide any foundation to this contention. Likewise, it is declared that just under 20,000 trainees have completed the ‘Freshcare eLearning’ program. However, there is no relevantly dated evidence which illustrates the material used in this program and it is not even clear when the Opponent’s education platform was first launched. Similar limitations apply with respect to the alleged use of the Nominated Marks by businesses accredited by the Opponent. Despite the claim that over 12,900 businesses have been accredited, no evidence has been filed which demonstrates how these businesses have used the Nominated Marks before the Relevant Date.
45. Accordingly, I am not satisfied that either of the Nominated Marks had acquired a reputation in Australia as at the Relevant Date amongst a significant or substantial number of Australian consumers. It follows that the consideration of s 60(b) is not required.
46. The s 60 ground of opposition has not been established.
Section 42
47. Section 42(b) of the Act relevantly provides:
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.
48. To succeed under this ground, the Opponent must establish that use of the Trade Mark would be, rather than might be, contrary to law.[46] The Opponent’s Submissions assert that use of the Trade Mark would be contrary to, presumably, ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth) and/or constitute the tort of passing off.[47] Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.
[46] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
[47] Opponent’s Submissions, [35].
The test for ‘misleading or deceptive conduct’ under s 18 of the ACL imposes a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[48] Due to the earlier discussed reasons, the Opponent has failed to establish the s 60 ground of opposition. It follows that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL. I reach the same finding regarding the contention that use of the Trade Mark would be contrary to s 29 of the ACL.[49]
[48] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
[49] Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22, [58].
50. As regards to the tort of passing off, the observations of Hill J addressing the relationship between s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation are relevant:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[50]
[50] [1989] FCA 506, [40].
51. Section 18 of the ACL is the equivalent of s 52 of the TPA.[51] As such, I am not satisfied that use of the Trade Mark would amount to passing off at common law because I have found that s 18 of the ACL would not be contravened.
[51] See Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] wherein Rangiah J observed that ‘s 18 of the ACL replaced s 52 of the TPA and the provisions are in identical terms’.
52. The s 42(b) ground of opposition has not been established.
Section 43
53. Section 43 of the Act provides:
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.
54. This ground of opposition is concerned with a connotation arising from the Trade Mark itself, not from a likelihood of deception or confusion arising as a result of similarities between the Trade Mark and another trade mark.[52] To establish this ground, the Opponent must show that there is a connotation within the Trade Mark and, because of this connotation, the use of the Trade Mark would be likely to deceive or cause confusion.
[52] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).
55. The SGP relevantly particularised this ground of opposition as follows:
The [Trade Mark] is similar to the Opponent Marks. The Opponent has a reputation in relation to the Opponent Marks in Australia. Due to the Opponent’s reputation in those marks, the opposed mark connotes and suggests a connection, sponsorship, approval or affiliation with the Opponent and the Opponent Marks.
56. The Opponent’s Submissions expand on the above by stating:
The Applicant’s [Trade] Mark connotes that the [Applicant’s] Goods are certified by the Opponent. This is because goods that are certified by the Opponent are sold or advertised using the FRESHCARE designation. However, the [Applicant’s] Goods are not certified by the Opponent. It follows that the secondary meaning implied by the Applicant’s [Trade] Mark is likely to give rise to confusion.[53]
[53] Opponent’s Submissions, [37].
57. In response, the Applicant’s Submissions assert ‘that the [Applicant’s] Goods are certified by the Opponent’ is not a connotation inherent in the Trade Mark. The Applicant submits that the Opponent’s argument ‘impermissibly seeks to rely on the Opponent’s reputation in its FRESHCARE marks’.[54]
[54] Applicant’s Submissions, [66].
58. In my view, the Applicant’s position is preferable. The Opponent’s argument evidently relies on the alleged reputation of its trade marks rather than a connotation arising from the Trade Mark itself. For completeness, there is no evidence before me to establish that the Trade Mark contains a connotation that is likely to deceive or cause confusion. It is true that an implication of sponsorship or association might qualify as a secondary meaning and thus a connotation for the purposes of s 43 of the Act.[55] However, in the current matter, the evidence filed simply does not establish that the Opponent’s use of any of its trade marks is so well known that use of a trade mark containing the term ‘freshcare’ in relation to the Applicant’s Goods connotes an association, be it certification or otherwise, with the Opponent.
[55] Pfizer Products Inc v Karam [2006] FCA 1663, [55] (Gyles J).
59. The s 43 ground of opposition has not been established.
Decision
60. Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
61. The Opponent has not established a ground of opposition. Trade mark application 2115355 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 and the disposition of the application should be in accordance with the court’s order or direction.
Costs
62. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
16 June 2023
Annexure A
Application number: 2115355
Specification: Class 3: age retardant gels for cosmetic purposes; air fragrancing preparations; all-purpose cleaning preparations for smokers' articles; aloe vera preparations for cosmetic purposes; anti-ageing skin care preparations; anti-cavity mouth rinses, not for medical purposes; aromatherapy creams; aromatic oils; aromatic oils for the bath; astringents for cosmetic purposes; baby bubble bath; baby lotions (toiletries); baby wipes for cosmetic purposes; balms, other than for medical purposes; body creams for cosmetic purposes; body deodorants (perfumery); body lotions; body mask creams for cosmetic purposes; body masks for cosmetic purposes; body moisturizers; body sprays for cosmetic purposes; breath freshening preparations for personal hygiene; bubble bath preparations for cosmetic purposes; bath soap; non-medicated cosmetic preparations; non-medicated dentifrices and mouthwashes; non-medicated massage preparations; non-medicated mouthwashes and gargles; cleaning preparations for household purposes; liquid perfumes; liquid soaps for hands, face and body; lotions for face and body care for cosmetic purposes; make-up removing preparations; massage oils; moisturizing creams, lotions and gels; natural essential oils; bath oils for cosmetic purposes; bath soaps in liquid, solid or gel form; perfumes, eau de cologne and aftershaves; preparations for cleaning teeth; preparations for washing fruit and vegetables; preparations for washing laundry; preparations, including creams, gels and mousses, for use before, during and after shaving; scented room sprays; oils for toilet purposes; laundry perfumes; air fresheners; wet scented tissues; dishwashing detergents; lotions and creams for use on the skin; deodorants; ironing liquids; skin care oils; body massage oils; cosmetic products; room fragrances; face powder for cosmetic purposes; none of the foregoing being for hair care
Class 5: balms for pharmaceutical purposes; eucalyptus for pharmaceutical purposes; iodine for pharmaceutical purposes; lotions for pharmaceutical purposes; menthol for pharmaceutical purposes; oils for pharmaceutical purposes; ointments for pharmaceutical purposes; pharmaceutical preparations for health care; pharmaceutical preparations for inhalers; medicated health supplements; medicated energy food/drink; eucalyptus oil; menthol oil; gandapura oil; medicated oil; medicated massage oil; balms; ointments; medicated creams/lotions preparations; medicines; traditional medicines; antiseptic; disinfectants; effervescent, soft capsule; none of the foregoing being for hair care
and Edelman JJ).
Key Legal Topics
Areas of Law
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Intellectual Property
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Commercial Law
Legal Concepts
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Statutory Construction
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Remedies
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