FreshFood Holdings Pte Limited v Pablo Enterprise Pte. Ltd

[2024] ATMO 94

TRADE MARKS ACT 1995

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

Re:Oppositions by FreshFood Holdings Pte Limited to registration of trade mark applications 1909774 (30, 43) – B PABLO (Figurative) and 1909777 (30, 43) – THE CHEESE TART B PABLO MINI (Figurative) – in the name of Pablo Enterprise Pte. Ltd.

Delegate:	Nicholas Smith
Representation:	Opponent: Julian Cooke, Senior Counsel, instructed by Davies Collison Cave Pty Ltd Applicant: Written Submissions in respect of 1909774 filed by Julie Simpson of Pizzeys Patent and Trade Mark Attorneys Pty Ltd
Decision:	2024 ATMO 94 Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 43, 44, 59, 60 and 62 considered – s 59 established for some of the Goods and Services – Amendment of marks made – trade marks (as amended) to proceed to registration

Background

1. This decision concerns oppositions brought by FreshFood Holdings Pte Limited (‘Opponent’) to the registration of the trade marks (collectively ‘Trade Marks’) which are the subject of the applications detailed below in the name of Pablo Enterprise Pte. Ltd. (‘Applicant’): 

Application Number:

1909774

Priority Date[1]:

12 November 2016

Goods and Services:

Class 30: Biscuits; Cookies; Buns; Cakes; Chocolate and chocolates; Bakery desserts; Ice cream; Pancakes; Waffles; Gingerbread; Flour and flour preparations for culinary purposes; Cake mixes; Cake batter; Starch-based binding agents for ice cream; Ice for refreshment; Macaroons (pastry); Bread; Golden syrup; Pies; Sandwiches; Puddings (Dessert); Sorbets (ices); Tarts; Pastries, namely, pasties; Candy (not medicated); Custard; Frozen yogurt confections; Frozen yogurt; Iced tea; Tea-based iced beverages; Chocolate mousse; Dessert mousse; Pastries
Class 43: Cafes; Cafeteria services; Self-service restaurant services; Restaurant and cafe services; Snack-bar services; Restaurant services, namely, providing of food and beverages for consumption on and off the premises; Food and drink catering

(‘Applicant’s Goods and Services’)

Trade Mark:

(‘74 Mark’)

[1] Also known in this decision as the ‘relevant date’.   The application is a divisional application of earlier trade mark application 1808823 and therefore claims the priority date of the earlier trade mark application.

Application Number:	1909777
Priority Date[2]:	12 November 2016
Goods and Services:	Applicant’s Goods and Services
Trade Mark:	(‘77 Mark’)

[2] Also known in this decision as the ‘relevant date’.   The application is a divisional application of earlier trade mark application 1808823 and therefore claims the priority date of the earlier trade mark application.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the applications’ acceptance for possible registration, the Opponent filed Notices of Intention to Oppose the registration followed by Statements of Grounds and Particulars on 6 June 2022 (‘SGP’)[3]. The SGP raised grounds of opposition under ss 42(b), 44, 58A, 59, 60 and 62(b) and in the case of the 77 Mark, the ground under s 43. The Applicant filed Notices of Intention to Defend on 24 July 2022.

   [3] The Applicant filed separate SGPs in respect of each of the applications however other than the reference to the applications themselves, and the ss 43 and 44 ground (addressed later in the decision) the SGPs are identical and whenever possible will be referred to in the singular.

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support (in respect of both oppositions)
John Michael Elliott, Chief Executive Officer of Freshfood Management Services Pty Ltd (‘Elliott declaration’)	27 October 2022	JME-1 to JME- 49
Nicholas Patrick Butera, Trade Mark Attorney at Davies Collison Cave Pty Ltd, the Opponent’s representatives (‘Butera declaration’)	27 October 2022	NPB-1 to NPB-35
Evidence in answer (in respect of the 74 Mark)
Julie Maree Simpson, Trade Mark Attorney at Pizzeys Patent and Trade Mark Attorneys Pty Ltd, the Applicant’s representatives (‘Simpson 1’)	1 February 2023	JMS-1 to JMS-8
Evidence in answer (in respect of the 77 Mark)
Julie Simpson (‘Simpson 2’)	1 February 2023	JMS-1 to JMS-8
Evidence in reply
N/A

1. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 28 March 2023 the Opponent requested an oral hearing.  The matter was set down for a hearing by video conference on 12 March 2024 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 15 January 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 27 February 2024 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 6 March 2024 in connection with the 74 Mark (‘Applicant’s Submissions’) but indicated that they did not want to attend the oral hearing nor did they wish to file submissions in respect of the 77 Mark.  At the hearing Julian Cooke SC of Counsel instructed by Ian Drew and Nicholas Butera represented the Opponent, appearing by video-conference.

2. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

3. The Opponent is a Singaporean company that through a series of subsidiaries in Australia, is involved in the manufacture and importation of coffee under various marks featuring the word PABLO.   All use by its subsidiaries of the trade marks owned by the Opponent is under the control of the Opponent.  

4. The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods or Services
170010	PABLO (‘Pablo Mark’)	25 Oct 1961	Class 30: Coffee
823100	PABLO TACCATA	10 Feb 2000	Class 30: Coffee and coffee products and substitutes; tea and tea products and substitutes; cocoa; coffee essence and chicory products; sugar; beverages in this class including coffee-based beverages
823101	PABLO PICCOLO	10 Feb 2000	Class 30: Coffee and coffee products and substitutes; tea and tea products and substitutes; cocoa; coffee essence and chicory products; sugar; beverages in this class including coffee-based beverages

1. The relevant claims/statements in the Elliott declaration can be summarised as follows:

   ·     A predecessor in title to the Opponent registered the Pablo Mark in 1961.  In 1998 the Opponent acquired the Pablo Mark and all goodwill in the mark, which at the time was widely used in respect of coffee available for sale in Australia.

   ·     In 2019 the Applicant applied to remove the Pablo Mark from the Register.  This application was successful before the Registrar however the decision was appealed to the Federal Court.  The Applicant did not appear in the Federal Court decision and the Federal Court ordered that the decision of the delegate of the Registrar be set aside and the mark be retained on the Register on the basis of an exercise of discretion.

   ·      The Opponent ceased Australian sales of coffee bearing the Opponent’s Trade Marks in 2006 but continued to sell and export the product overseas from that date to the present. It has the continued capacity to produce coffee bearing the Opponent’s Trade Marks and displays its brands on its manufacturing premises in Concord NSW.

   ·     The Opponent is considering relaunching its coffee business in Australia under the Pablo Mark and in 2021 entered into an Agreement with a third party to sell freeze dried coffee under the Pablo Mark.  It has commenced production of the coffee goods under the Pablo Mark.   

   ·     The Opponent has a considerable reputation in the Pablo Mark as a result of its longtime historical use and general nostalgia amongst the public in Australia.  There are certain products featuring the Pablo Mark offered by collectors in Gumtree and references to the Pablo Mark in books, newspaper articles and on Twitter (now X).   

2. The exhibits to the Elliott Declaration display various marketing materials that use the Opponent’s Trade Marks between 1963 and 2006 as well as evidence of sales of instant coffee under the Pablo Mark in the period of 1999 to 2006.   The exhibits also show examples of third party use in the last 15 years as well as evidence of sales of Pablo freeze dried coffee in 2021.  Given the market for coffee in Australia, I note that the sales figures are very low, such as to be almost negligible.   

3. The relevant claims/statements in the Butera declaration can be summarised as follows:

   ·     The Applicant is associated with a chain of bakeries selling cheesecakes in the form of cheese tarts.  It initially marketed itself through various online activities through its social media articles.

   ·     As of 2022 the Applicant appears to have no ongoing activities in Australia.  Its Australian website has ceased to operate and its physical site in Sydney has closed.  

   · As part of the examination process each of the 74 and 77 Marks were the subject of a s44 objection issued by IP Australia raising the Pablo Mark. On 8 March 2022 the Applicant filed a response to the Examination reports including declarations from Masamitsu Sakimoto dated 21 February 2022 in which the declarant stated that it had used the related marks 1577526 and 1656617 continuously for goods in class 30 (iced tea; tea based iced beverages) and services in class 43 up to the filing date of the respective applications. The trade mark registered as 1577526 and 1656617 is depicted below. Following the declarations the Examiner withdrew the citations in respect of each of the marks on the basis of s 44 (3)(b) of the Act

4. The exhibits to the Butera Declaration include evidence of the limited use of the Trade Marks by the Applicant between 2017 and 2020, evidence that the Applicant has ceased to operate in Australia as well as material relating to the examination process of each of the marks, including the Sakimoto declarations.  

   The Applicant

5. The Applicant is a Singaporean company that operates a series of stores around the world that produce and retail Japanese cheese tarts under the Pablo brand.  

6. The relevant claims/statements in the Simpson declarations can be summarised as follows:

   ·     The Applicant operated a store in Goulburn Street, Sydney promoting its cheese tarts.  It is the declarant’s understanding that the store was closed in March 2019 due to Covid-19 interruptions[4].  The Applicant continues to market its products internationally and maintains an active Instagram account.

   ·     The Applicant is currently planning to re-open stores in Sydney and Melbourne in 2023.  To the best of the Applicant’s knowledge there have been no instances of confusion with the Opponent’s Trade Marks.

   [4] Since the Covid-19 outbreak commenced in Wuhan in November 2019, the Delegate is skeptical that the reason for the store’s closure was in respect of a disease that did not exist at the time of closure.

7. The exhibits to the Simpson Declaration display evidence of the Opponent’s presence in Australia, which appears to be related to the operation of a single store (albeit a store with significant turnover) between November 2017 and March 2019.  The store prominently displayed the 74 Mark on signage and products but more limited evidence of use of the 77 Mark is show.   

   Grounds of Opposition, Onus and Standard of Proof

8. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58A, 59, 60 and 62(b) (and with respect to the 77 Mark s 43) however in its written submissions the Opponent indicated that it did not press the ground under s 58A. To successfully oppose the applications the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 59 for a portion of the Goods and Services. Consequently, it became unnecessary for me to consider the remaining grounds with respect to the portion of the Goods and Services for which the s 59 ground was established. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

9. The onus of proof in an opposition rests upon the Opponent.[5]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[6] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[7]

   [5] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [6] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

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

   Discussion

   Section 59

10. Section 59 is reproduced below:

    Section 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.

11. The relevant date for assessing the Applicant’s intention to use the Trade Marks is the priority date of each of the marks being 12 November 2016.[8]

    [8] See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31] (Hearing Officer Kirov). The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638; (Dodds-Streeton J) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (Keane CJ, Stone and Jagot JJ).

12. The nature of the intention in s 59 was considered by Jacobson J in Health World Ltd v Shin-Sun Australia Pty Ltd where he stated:

    In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[9]

    [9] [2008] 75 IPR 478, [160].

13. There is a presumption that where an application has been filed the applicant, has the requisite intention.  However:

    There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.

    The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[10]

    [10] Ibid [162]-[163] (citations omitted).

14. Jacobson J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

    The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[11]

    [11] Ibid [161] (citations omitted).

15. In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention.  If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal.

16. Having considered the decisions of Dodds-Streeton J in Suyen, the Full Court in Food Channel, and Jacobson J in Health World the Delegate in Foxtel Management Pty Ltd v 111Pix.com Ltd stated:

    I note that [the authorities] all appear to agree that lack of intention might be inferred ‘where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence’. It is nevertheless clear from all three judgments that such an inference will not be drawn lightly. Jacobson J, for example, cited two such cases, being Phillip Morris Products SA v Sean Ngu (‘Phillip Morris’) and Tommy Hilfiger Licensing Inc v Tan (‘Phillip Morris’), both involving somewhat particular circumstances. In Phillip Morris the opponent had sought production of documentation substantiating various claims regarding its proposed use made by the applicant in a letter to the opponent’s attorneys, but the applicant neither responded to the Notice to Produce … nor did it file any written submissions or appear at the hearing. Tommy Hilfiger, for its part, was decided by the Hearing Officer concerned on the basis that the applicant’s intention had to persist beyond the filing date and thus that the investigations attested to in the opponent’s evidence suggesting that there had been no actual use in the 20 or so months since the opposed application was filed required some formal ‘rebuttal, denial or answer’ from the applicant. As already noted, however, it is now clear that the relevant date for assessing the applicant’s intention is the date of application. Moreover, Dodds-Streeton J stressed in Suyen at [207] that:

    There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.

    In Suyen at [212] to [214] her Honour provided some further examples of cases where lack of the requisite intention had been inferred, all of which again involve quite particular circumstances going beyond mere non‑use:

    Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. Opposition has nevertheless succeeded in a number of cases. The intention has been held to be contra-indicated where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint: see Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129. In other cases, opposition has succeeded because the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark: see also John Batt at 439-40.

    In Food Channel, the Full Court observed that ‘only a low threshold has been set with regard to intention to use’: at [67]. Their Honours referred to Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 (in which the applicant companies appeared not to carry on business, their location was illegal for a restaurant for which service the trade mark was to be registered and they adduced no evidence in answer to the opponent’s material) and to Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18; (2004) 61 IPR 651 (in which the applicant had made a large number of applications that were subsequently permitted to lapse, had a history of ‘cybersquatting’ and advanced the evidence of an unreliable sole witness. It was therefore inferred that the applicant was trading in registrations and had neither the capacity nor means to use the trade mark.).

    Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.

    In Health World, Jacobson J at first instance concluded that there was no intention to use the mark where the applicant’s principal witness did not make the final decisions on such matters, and did not distinguish between the applicant company and another company in relation to steps said to evidence an intention to use the mark. The person who did constitute ‘the controlling mind’ of the applicant company gave limited evidence which disclosed no positive intention to use the trade mark on goods of the relevant class. Rather, he testified that ‘we wanted to widen our business’ to use the mark on any goods or products the company might make.

    In Food Channel, the Full Court upheld the appeal on grounds, inter alia, that the primary judge erred in finding that the applicant had no intention to use the trade mark where its sole director (and ‘controlling mind’) gave unchallenged (and not inherently improbable) evidence of intention to use the mark, and there was ‘some evidence not found to be unreliable’ that the assignor company (controlled by the same person) had used the mark in respect of the relevant class of goods: at [82]. The Full Court concluded that ‘in this state of the evidence, the judge could not reasonably conclude that [the opponent] had discharged its onus on the s 59 issue’: at [83].

    Suyen itself concerned opposition based on s 59 to a trade mark with a 2003 priority date. The opponent in that case submitted that, in addition to there having been no significant use prior to the opposition proceedings commencing, two further circumstances shifted the evidentiary onus to the applicant. Firstly, the applicant had apparently only made scant reference to Australia in a notice of opposition it had filed in the USA in 2006 in which it had purported to set out its sales, marketing, advertising and other activities and other activities under a closely related trade mark. Secondly, as at three specific dates in 2008, being dates when the opponent’s attorneys had checked the applicant’s website, the ‘website did not evidence any intention to use [the trade mark] in Australia’ and, inter alia, did not appear to ‘target, and was not accessed by, Australian-based purchasers’. Dodds-Streeton J however considered that these matters were not sufficient to shift the opponent’s evidentiary onus … [12]

    [12] [2012] ATMO 29, [36]-[39].

1. The Opponent has particularised this ground of opposition in the SGP as follows:

   Based on the Applicant's trading activities in other jurisdictions, the Applicant only uses, and has only used, the Applicant's Mark in relation to cheese tarts, flavoured cheese tarts, soft serve cheese ice cream and cheese-based pastries, biscuits and beverages, and provision of food and drink services involving these items.

   In these circumstances, there is no evidence that, as at the date the Application was filed, the Applicant intended to use the Applicant's Mark across the breadth of the goods and services claimed in the Application.

2. The Opponent has provided evidence, based on the historical operation of the Applicant, as well as its use of the Trade Marks globally, that the Applicant only trades in the limited categories of goods and services as set out in the SGP.  As noted in the Opponent’s Submissions the Trade Marks have only been used in Australia to sell cheese tarts in Sydney.  This in my view is sufficient to shift the onus to the Applicant to show an intention to use the Trade Marks for the Goods and Services for which no use in Australia has been shown.

3. The Applicant is a large and well-resourced organisation that is legally represented and has clearly been put on notice,(by the provision of the SGP and the Opponent’s EIS) that lack of intention to use the Trade Marks is an issue in these proceedings.  The EIA provides no evidence of the breadth of the Applicant’s use or intention to use the Trade Marks beyond that of a bakery selling branded cheese tarts, and indeed to the extent the EIA depicts any use of the Trade Marks it is only in respect of cheese tarts.[13]  Furthermore, the Applicant’s Submissions only refer to evidence of use in respect of a bakery selling cheese tarts.  I do not accept the submission that the store the Applicant operated was a café or restaurant in the ordinary understanding of the term; it was a branded store that sold the Applicant’s cheese tarts.  The Applicant’s Submissions assert that the Applicant’s George Street store sold beverages but there is no documentary evidence to support this.

   [13]  The Delegate considers the statements made by Mr Sakimoto, in respect of the examination of each of the marks, that the Applicant has used a related mark (1577526) for iced tea and tea-based iced beverages are of little value since they concern a mark other than the Trade Marks and are not supported by any documentary evidence. 

4. Furthermore, I find it exceedingly unlikely that, had the Applicant held an intention to use the Trade Marks in respect of all the Goods and Services, there would be a complete absence of documents documenting that intention.

5. I therefore find that the Opponent has established the ground of opposition it raised pursuant to s 59 of the Act in respect of the following goods and services.

   Class 30: Biscuits; Cookies; Buns; Chocolate and chocolates; Pancakes; Waffles; Gingerbread; Ice cream; Flour and flour preparations for culinary purposes; Cake mixes; Cake batter; Starch-based binding agents for ice cream; Ice for refreshment; Macaroons (pastry); Bread; Golden syrup; Pies; Sandwiches; Sorbets (ices); Pastries, namely, pasties; Candy (not medicated); Custard; Frozen yogurt confections; Frozen yogurt; Iced tea; Tea-based iced beverages; Chocolate mousse; Dessert mousse;
   Class 43: Cafes; Cafeteria services; Self-service restaurant services; Restaurant and cafe services; Snack-bar services; Restaurant services, namely, providing of food and beverages for consumption on and off the premises; Food and drink catering

6. It remains necessary to consider whether the Opponent has established any of the remaining grounds of opposition in respect of the following remaining goods for which intention to use has been established.

   Class 30: Cakes; Bakery desserts; Puddings (Dessert); Tarts; Pastries (‘Remaining Goods’)

   Section 44

7. The relevant provisions of s 44 are reproduced below, noting that the scope of the goods to be considered has been narrowed to the Remaining Goods:

   Section 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)it 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).

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   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.

8. To successfully oppose the applications pursuant to s 44, the Opponent must establish the requirements of s 44(1) i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Marks (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Marks (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Remaining Goods (‘the third requirement’).

9. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the applications (or allow them to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Marks, other circumstances which would make registration of the Trade Marks proper, or that the Applicant has continuously used the Trade Marks beginning before the priority date of the Opponent’s relied upon mark.

10. The Opponent only presses this ground on the basis of the services in Class 43 and ‘iced tea’ and ‘tea-based ice beverages’ in class 30.[14]  As it does not press this ground in respect of the Remaining Goods I find this ground not established for the Remaining Goods but for completeness I note that I agree with the Opponent’s implicit concession that the goods for which the Opponent’s Trade Marks are registered are not similar goods to the Remaining Goods.

    [14] In the SGP for the 77 Mark, the Opponent particularized Trade Mark Nos. 1784114 and 1784115, owned by a third party for the s 44 ground but in oral submissions indicated that it no longer sought to rely on those marks.

11. I find that the Opponent has failed to establish the ground of opposition under s 44.

    Section 60

12. Section 60 is reproduced below:

    Section 60 - 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.

13. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

14. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[15]

    [15] [2023] FCA 487, [20-21] (Kennett J)

15. In McCormick & Co Inc v McCormick[16], Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[17]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [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 …[18]

    [16] [2000] FCA 1335.

    [17] Ibid, [81].

    [18] (1992) 33 FCR 302, 343.

16. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[19]

    [19] (1999) 47 IPR 423, 436.

17. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[20] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[21]

    [20] [2000] FCA 1587.

    [21] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

18. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    The Opponent has, and as the Priority Date had, a substantial reputation in the Opponent's PABLO Trade Mark as a result of the use and promotion of this trade mark by the Opponent, its predecessors in title, Related Bodies Corporate, licensees, authorised users, and agents, in Australia since at least as early as 1962 in relation to the Opponent's Goods.

    As a result of such use and reputation, the use by the Applicant of the Applicant's Mark for the Applicant's Goods and Services would be likely to deceive or cause confusion (including initial interest confusion).

19. The Opponent’s evidence and submissions on this point are ambitious and rely heavily on the assumption that the average consumer of coffee in Australia remembers 20-year-old advertisements for defunct instant coffee brands.  This matter can be resolved simply.  At the relevant date the Opponent had not used the Pablo Mark in Australia (other than for export) for almost 10 years.  Whatever reputation it had at that date would have been limited and solely in respect of instant coffee.[22]  There is no prospect that by reason of that limited and residual reputation held by the Opponent in the Pablo Mark for instant coffee, the use of the Trade Marks in respect of the baked goods and desserts that comprise the Remaining Goods would be likely to deceive or cause confusion.  The Opponent’s Submissions that consumer confusion would arise by reason of consumers considering the possibility of brand extension for a brand that, at the relevant date, had not been used for the sale of goods to Australian consumers for 10 years, verge on the heroic.

    [22] The Opponent’s submissions at [28] and [29] significantly overstate the factual findings the Federal Court in Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited (No 2) 2021 FCA 1404 (Thawley J) made about the level of reputation held in the Pablo Mark. While noting that the mark was used extensively between 1960s and 1990s, the relevant statement in the decision at [38] is that ‘These references were not always positive, but I accept that the reputation and brand equity in the PABLO Mark remains an important and valuable asset to FreshFood.’. Statements suggesting that the court found this ‘a compelling reason’ and that there was ‘significant residual reputation’ are not supported in the text of the decision. In any event, the level of reputation found to be sufficient by a court to apply s 101(3) of the Act (in combination with other factors) to retain the registration of a mark for coffee is clearly different to that necessary to find confusion arising as a result of the use of different marks on different goods.

20. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 42

21. Section 42 is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

22. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Marks would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Marks by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[23]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[24]

    [23] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

    [24] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

23. The Opponent has particularised the ground of opposition in the SGP as follows: 

    The Opponent has, and as at the Priority Date had, a substantial reputation in the mark PABLO (Opponent's PABLO Trade Mark) as a result of the use and promotion of this trade mark by the Opponent, its predecessors in title, Related Bodies Corporate, licensees, authorised users, and agents, in Australia since at least as early as 1962 in relation to coffee and coffee-based products (Opponent's Goods).

    Given the substantial goodwill and reputation accrued by the Opponent in the Opponent's PABLO Trade Mark in relation to the Opponent's Goods, the use of the mark (Applicant's Mark) in relation to the goods and services specified in the Application (Applicant's Goods and Services) would be likely to cause consumers to be misled or deceived as, amongst other things, it would wrongly suggest:

    (a) a connection in trade between the Applicant and the Opponent;

    (b) that the Applicant's Goods and Services and/or goods bearing the Applicant's Mark, are, or are related to, the Opponent's Goods;

    (c) that the Applicant's Goods include the Opponent's Goods as an ingredient;

    (d) that the Applicant's Services involve the use of the Opponent's Goods; and/or

    (e) that the Applicant's Goods and Services are goods provided by, or on behalf of, or with the licence, permission, sponsorship or approval of, the Opponent.

    As a result, the use by the Applicant of the Applicant's Mark in relation to the Applicant's Goods and Services would therefore constitute:

    (a) misleading or deceptive conduct contrary to s 18 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010 (Cth)) (ACL);

    (b) the making of false or misleading statements contrary to s 29 of the ACL;

    and/or

    (c) the commission of the tort of passing off.

    The use of the mark would therefore be contrary to s 42(b) of the Act.

1. As previously stated, the Opponent has failed to establish a ground of opposition under s 60 for the fairly obvious reason that consumers would be unlikely to associate a mark applied to baked goods and dessert with (at the relevant date) a defunct mark previously applied to instant coffee. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[25] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Marks would be contrary to s 18 of the ACL.

   [25] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

2. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[26], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered — in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[27] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   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.[28]

   [26] [2014] ATMO 65, [50] (Hearing Officer Wilson).

   [27] [2003] FCA 104, [107] (Beaumont J).

   [28] [1989] FCA 506, [40] (citations omitted).

3. For these reasons I am not satisfied that use of the Trade Marks by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Section 62

4. Section 62 of the Act is reproduced below:

   62 Application etc. defective etc.
   The registration of a trade mark may be opposed on any of the following grounds:
   (a) that the application, or a document filed in support of the application, was amended contrary to this Act;
   (b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
   Note: For file see section 6.

5. The Opponent does not rely on the ground under s 62(a). The ground under s 62(b) of the Act is particularised in the SGP as follows:

   In order to secure acceptance of the Application, the Examiner, by way of an Examination Report dated 3 February 2022, required the Applicant to file a Declaration "providing confirmation that the trade mark has been used continuously on" certain class 30 goods and all of the services in class 43 (emphasis added). Continuous use, is, in accordance with the authorities and relevant Trade Marks Office practice, required to be demonstrated in Australia.

   In response, the Applicant filed a Declaration of Masamitsu Sakimoto, President of the Applicant, dated 21 February 2022 (Sakimoto Declaration), in which he declared that the Applicant had continuously used the mark (registered under Registration Nos. 1577526 (class 30) and 1656617 (class 43) (Alternate Pablo Mark) up to the Filing Date of this Application. The term "Filing Date" was undefined in the Declaration, even though the Application is itself a Divisional of an earlier Trade Mark Application.

   However, based on the Opponent's research, the Opponent submits that the Sakimoto Declaration contained the following evidence and/or (express or implied) representations that were false in material particulars:

   1. The Sakimoto Declaration implied that the continuous use of the Alternate Pablo Mark occurred in Australia, when, in fact, the continuous use of the mark has occurred in other jurisdictions.

   2. That there had been continuous use of the Alternate Pablo Mark for the relevant class 30 goods in Australia since it was registered in 2013 up to either 12 November 2016 (the Priority Date of the Divisional Application) or 27 February 2018 (the Lodgement Date of the Divisional Application) when, in reality, the Applicant had not commenced use of the Alternate Pablo Mark, or a similar mark, in Australia until sometime after July 2017.

   3. That there had been continuous use of the Alternate Pablo Mark for the class 43 services in Australia since it was registered in 2014 up to either 12 November 2016 (the Priority Date of the Divisional Application) or 27 February 2018 (the Lodgement Date of the Divisional Application) when, in reality, the Applicant had not commenced use of the Alternate Pablo Mark, or a similar mark, in Australia until sometime after July 2017.

   4. That, at the date of the Sakimoto Declaration, the Applicant was still using the Alternate Pablo Mark in Australia, when, in reality, the Applicant's only retail premises in Australia offering the Applicant's Goods and Services was not in operation, and had not been in operation for at least 12 months.

   (the Representations).

   It is clear from the Examiner's file that the Application was accepted on the basis of one or more of the Representations, and as a result, the registration of the Applicant's Mark would be contrary to subsection 62(b) of the Act.

6. Section 62(b) requires that representations were false in material particulars and that there was a causal connection between those false representations and the acceptance of the application for the trade mark by the delegate of the Registrar.[29]  A representation must be false at the time that it was made in order to be relevant.[30] I note that s 62(b) can encompass all manner of falsehoods, be they deliberate or innocent.[31] Section 62(b) does not of itself raise a basis for revisiting grounds of opposition under s 44.[32]  It is not enough that a statement relied upon by a delegate during examination is imprecise or vague.[33] There are decisions of this office where reliance on inaccuracies about an applicant’s use, including as it relates to s 44, has resulted in s 62(b) being established.[34]

   [29] Dunlop Aircraft Tyres Ltd v Goodyear Tire & Rubber Co [2018] FCA 1014, [230]-[231] (Nicholas J)

   [30] Levi Strauss & Co v Bon Levi (1999) 44 IPR 431, 434 (Hearing Officer Thompson).

   [31] Analyses Conseils Informations ACI v Iguassu (No 16) Pty Ltd & Al Gray Nominees Pty Ltd [2001] ATMO 4 (Hearing Officer Nancarrow); Laboratoires La Prairie v Wendy Stockden-Brock [2005] ATMO 80 (Hearing Officer Nancarrow) (‘Laboratoires’).

   [32] Medvisit Pty Ltd v MedVisit LLC [2017] ATMO 140, [72] (Hearing Officer Condon).

   [33] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502, [61]-[62] (Wilcox J); Inventions Marketing Pty Ltd v Aqualoc Pty Ltd (2002) 55 IPR 600, 615 (Hearing Officer Thompson); and GAP (ITM) Inc v General Pants Co Pty [2004] ATMO 12, [45]-[52] (Hearing Officer McDonagh).

   [34] Arbormasters Pty Ltd v Arbormaster Training Inc [2007] ATMO 7 (Hearing Officer Thompson); Laboratoires (n 6); Link Recruitment Pty Ltd v Link Employment and Training Inc [2006] ATMO 39 (Hearing Officer Nancarrow).

7. The Sakimoto declarations were filed in response to a request for evidence of use of the Trade Marks in respect of the Class 43 Services, iced tea and tea-based iced beverages. The delegate did not seek information about use of any of the Remaining Goods, being the goods for which the s 59 ground has not been established. As a matter of causal connection, and without making a finding of about the veracity of the statements in the Sakimoto declarations, the Trade Marks did not proceed to acceptance under s 44(3)(b) in respect of the Remaining Goods as a result of the Sakimoto declarations.[35]  For that reason, this ground of opposition cannot be established in respect of the Remaining Goods. 

   [35] The delegate also notes the recent decision of Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138, [229] (Charlesworth J) in which the Federal Court concluded that although the representations made were false, they were not false ‘in particulars’ within the meaning of s 62(a) because the representations were immaterial in the context of the Court’s other findings. In the present case, given my findings under the s 59 ground, the representations made in the Sakimoto declarations, about use in respect of goods and services other than the Remaining Goods, even if they were false, would not have been false in material particulars.

8. Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62(b) with respect to the Remaining Goods.

   Section 43

9. Section 43 is reproduced below:

   Section 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.

10. To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

    ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [36]

    [36] [2006] FCA 1663; (2006) 70 IPR 599, [53].

11. In Winton Shire Council v Lomas Spender J said:

    Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [37]

    [37] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

12. In Primary Health Care Limited v Commonwealth of Australia[38] Jagot J stated:

    [38] [2016] FCA 313, [17].

    Insofar as use of a trade mark would be likely to deceive or cause confusion is concerned (the s 43 issue, on which the respondents bear the onus):

    (1)    The section:

    looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion... (Woolworths at [79]).

    (2) “In order for s 43 to apply, the Court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations” (McCorquodale v Masterson at [26]).

    (3) The purpose of s 43:

    is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks... (Pfizer Products at [53]).

    (4) “Whether there is a likelihood of deception or confusion is to be answered ‘not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered’: Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 at 362” (Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382 (Scotch Whisky Association) at [52]). Deceptive similarity must be considered against the “background of the usages in the particular trade” (Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410).

    (5) “The probability of deception or confusion must be finite and nontrivial. There must be a ‘real tangible danger of its occurring’ - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15; (1954) 91 CLR 529 (sic) at 594-5 per Kitto J” (Woolworths at [43]). As such, the mere possibility of confusion is insufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 (Southern Cross Refrigerating) at 595). Further, that “exceptionally stupid or careless consumers might be confused does not suffice” (Scotch Whisky Association at [61]).

    (6) “In order for s 43 to apply, the connotation must be clear and there must be a real and tangible danger that the trade mark, in the context of the relevant services, would be likely to deceive or cause confusion. It would be sufficient if there is ‘real and tangible danger’ of consumers having ‘reasonable doubt’ or being ‘caused to wonder’ about this issue: cf Southern Cross Refrigerating...at 595, per Kitto J” (Accor Australia at [269]).

    (7) All surrounding circumstances must be considered including the circumstances in which the marks will be used, the circumstances in which the services will be provided, and the character of the probable users of the services (Southern Cross Refrigerating at 595).

    (8) The test is not confined to a particular method of use of the marks; the question is “what can the applicant do if he obtains registration?” (Southern Cross Refrigerating at 595). ^[39]

    [39] [2016] FCA 313, [17].

13. The operative test is the secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the goods provided. It does not follow that all trade marks containing descriptive matter would attract a section 43 objection. Only if there is a real and tangible danger that the trade mark would cause consumer’s expectations to be false and result in confusion as to the inherent nature of the goods themselves, would section 43 be triggered.

14. The ground of opposition pursuant to s 43 was particularised in the SGP (solely in respect of the 77 Mark) as follows:

    The Applicant's Mark includes the words "baked cheese tart". A baked cheese tart is a dessert tart that is made with pastry and various types of cheeses.

    While the Applicant's Goods include goods that encompass "baked cheese tarts", they also include goods that are not "baked cheese tarts", and, furthermore, goods that are unlikely to have the flavour of "baked cheese tarts" (such as 'chocolate', 'gingerbread', 'flour and flour preparations for culinary purposes' and so on).

    In these circumstances, the use of the Applicant's Mark in relation to these goods would cause consumers to be deceived or confused, as those consumers would believe that such goods are, or have the flavouring of, a "baked cheese tart" when that is not the case.

15. I do not accept the Opponent’s Submissions on the s 43 ground as it applies to the Remaining Goods. I accept that the term ‘the cheese tart’ in the 77 Mark connotes that the goods bearing the mark are cheese tarts or have a flavouring of cheese tarts. I consider that cheese tarts fall within the categories of goods that comprise the Remaining Goods. The Opponent’s Submissions are that by reason of the fact that many of the goods that fall within the Remaining Goods are not cheese tarts that there is real and tangible danger that use of the 77 Mark in respect of the Remaining Goods would result in confusion. This submission, taken to its logical conclusion, would exclude essentially all trade marks that contain descriptive elements such as flavorings since, for example, any product that is chocolate flavored (other than chocolate) could also have a different flavor.

16. I note that the Register presently contains 439 marks that contain the word ‘chocolate’; the vast majority of them registered for goods or services not limited to chocolate or chocolate flavored products.  Indeed the Opponent itself is the owner of a variety of marks that contain descriptive elements including Trade Mark No: 918879 for a device mark incorporating the words BUSHELLS COFFEE registered for ‘Coffee and coffee products and substitutes; cocoa; coffee essence and chicory products; sugar; beverages in this class including coffee-based beverages’.  By the logic set out in the Opponent’s Submissions, this mark should only have been registered for coffee and coffee products.

17. The Opponent refers to the recent decision in this office of Ampac Pty Limited v Boss Products (Australia) Pty Ltd[40].  That case involved marks where the connotation made by the subject marks was (through an exclusion) expressly excluded from the goods and services for which the marks were sought to be registered; in essence any use of the marks on the goods and services for which the marks were proposed to be registered would have caused confusion. The present case is entirely different in that the use of the 77 mark on the Remaining Goods would only be likely to cause confusion if it was used on a particular subset of the goods (such as if the BUSHELLS COFFEE mark was used on beverages other than coffee) where the connotation that the goods are or contain cheese tarts does not arise. Section 43 of the Act is not intended to preclude all marks that contain descriptive material that only describe a subset of the goods or services for which registration is sought. Such marks are not marks where there is a real and tangible danger that the trade mark would cause consumer’s expectations to be false and result in confusion.

    [40] [2023] ATMO 181, (Hearing Officer Barbey).

18. As a consequence, I am not satisfied that if the Trade Marks contain a connotation such that their use in relation to the Remaining Goods is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

    Resolution of Opposition

19. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[41]

    [41] [2014] FCA 1304, [232].

20. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.

21. Given the circumstances of the use of the mark, and the relatively clear demarcation that can be made between the Remaining Goods and the goods for which the s 59 ground is established I considered it appropriate to offer an amendment to the Applicant. On 3 May 2024 I provided the Applicant with an opportunity to amend the Trade Marks to limit them to the Remaining Goods The amendment has now been made and on that basis I find that the Opposition under s 59 has not been established for the revised set of goods and services for which the Trade Marks is sought to be registered.

    Decision and Costs

22. Following the amendment referred to in paragraph 68, I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application nos. 1909774 and 1909777 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

1. The Parties have each sought an award of costs in its favour.  As each party has had a degree of success I make no award of costs.  Each party shall pay its own costs.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   21 May 2024