Frucor Beverages Ltd v Pepsico Inc
[2006] ATMO 97
•18 December 2006
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Frucor Beverages Ltd to registration of trade mark application 1012353(32) - H2OH! - filed in the name of Pepsico Inc.
Delegate: | Alison Windsor |
Representation: | Opponent: Glen McGowan of counsel instructed by Holding Redlich Lawyers Applicant: Siobhan Ryan of counsel instructed by Griffith Hack, Patent and Trade Mark Attorneys |
Decision: | S52 opposition: grounds under section 43, 44 and 60 not established; application to proceed to registration. |
Background
Pepsico Inc (“the applicant”) filed application to register the trade mark H2OH! on 22 July 2004. The application was for goods in class 32, namely “mineral and aerated waters, flavored waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups, concentrates, and other preparations for making beverages”. The application was examined, no grounds for rejection were identified and it was advertised as accepted for possible registration on 2 December 2004.
Frucor Beverages Ltd (“the opponent”) requested extensions of time in which to file a notice of opposition. After some correspondence between the potential opponent and the office, the notice was filed on 3 May 2005. The notice nominated two grounds of opposition only – those under sections 60 and 43 of the Trade Marks Act 1995(“the Act”).
The service of evidence in support, in answer and in reply was completed by 29 June 2006. On 25 July 2006, the opponent requested an amendment to the notice of opposition to include grounds under sections 42 and 44. After consideration of the request the office advised the reasons given were sufficient for it to allow amendment of the notice to add the section 44 ground, but permission to enter the ground under section 42 was denied. On 4 August 2006, the applicant asked to be heard.
The matter came before me, as a delegate of the Registrar, in Melbourne on 13 September 2006. The applicant was represented by Siobhan Ryan of counsel, instructed by Griffith Hack, Patent and Trade Marks attorneys. The opponent was represented by Glen McGowan, also of counsel, instructed by Holding Redlich Lawyers.
Evidence
The evidence in support consists of a single declaration made by Marilyn Awad[1], a lawyer from Holding Redlich, the opponent’s legal representatives in Australia. Ms Awad referred to four trade marks owned by the opponent, shown in the table below:
[1] There are three annexures to this declaration, labelled A, B and C. A and B consist of extracts from the Register of Trade Marks, and C includes examples of promotional material showing a very few examples of use of the trade marks.
| Trade mark number | Trade mark | Class and goods |
| 674517 (series of marks) | H2GO H2go H-2-GO H-Two-Go | Non-alcoholic beverages; aerated waters, mineral waters; soda waters; table waters; waters; syrup and concentrates used in the manufacture of non-alcoholic beverages |
| 674519 | H2GO | As above |
| 674522 | As above | |
| 957881 | As above |
Ms Awad said the first three trade marks were acquired by the opponent company from their previous owner in November 1999. These trade marks had first been used by the original owner in 1995, and had been in continuous use up until the opponent acquired them. The opponent’s first use of these trade marks was in New Zealand in 2000, and then in Australia in September 2001. The declaration states the fourth trade mark has been used since 2003 but does not specify if this use was in Australia or New Zealand.
The declaration gives an indication of the spread of use of the trade marks over the range of goods, starting with use on bottled spring water, and spreading over a wider range of goods between the years 2001 and 2005. Sales figures are very sound, showing a strong increase especially over the years 2003 to 2004. The declaration says the goods are sold in most major Australian supermarkets, as well as in petrol stations and convenience stores. Advertising expenses increased markedly from 2003 to 2005, the figures being quite significant overall. Reference to a survey conducted by Millward Brown Quantitative Tracking in June 2005 in Sydney and Melbourne, concentrating on people aged 18 to 39, makes the suggestion of a strong awareness of the brand in the surveyed market in respect of the goods.
Evidence in Answer
The evidence in answer consists of two declarations made by Anne Makrigiorgos, principal of Griffith Hack, Patent and Trade Mark Attorneys, who are the applicant’s Australian agents. The first declaration, dated 23 December 2005, consists of the results of a search of the Trade Marks Register, “designed to ascertain the frequency of concurrently registered trade marks in Class 32 which contain the chemical symbol for water, namely H2O”.
The second declaration, dated 29 March 2006 includes three annexures being printouts from the United Kingdom Trade Marks Register showing details of the opponent’s expired trade mark registrations in the UK, and the applicant’s registration in the UK of the instant trade mark.
Evidence in Reply
The evidence in reply consists of a second declaration made by Marilyn Awad commenting on the material provided in the second Makrigiorgos declaration. Ms Awad advises that the opponent had allowed its UK marks to expire because it no longer sold products under those trade marks in the UK. Any coexistence of the applicant’s and opponent’s trade marks in the UK, she says, was because the opponent was no longer selling goods under the trade marks.
Discussion
The grounds for opposition notified by the opponent are those under sections 43, 44 and 60. When dealing with each section, I will refer to the relevant submissions presented by each party at the hearing.
Mr McGowan submitted at the hearing that the opponent had acquired a reputation in its trade mark prior to the filing date (section 60); that deception and confusion would result because of connotations engendered by this reputation (section 43) and that the applicant’s trade mark was deceptively similar to four of the opponent’s already registered trade marks for the same goods (section 44). A useful place for me to begin my discussions of the issues is by looking at whether the trade marks under consideration are substantially identical or deceptively similar, as required for establishment of a ground of opposition under either of sections 44 and 60.
Substantial Identity and deceptive similarity
The test for substantial identity[2] assumes a side by side comparison. When compared this way, there are sufficient differences between these trade marks for them to be distinguished one from the others. Whilst all the trade marks begin with the letter-number combination “H2”, the opponent’s trade marks clearly incorporate the known word “GO”. On a side by side comparison, this word is quite clearly different from the “OH!” forming the second half of the applicant’s construction. The trade marks are thus not substantially identical.
[2] The tests for determining substantial identity are set out by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd ((1961) 109 CLR 407 at 414-415
There is a different comparison to be made in determining deceptive similarity. The trade marks are now seen in isolation from each other, and what the viewer relies on is the overall impression of a trade mark left in their mind once the trade mark is no longer in front of them.
The expression “deceptively similar” is defined in section 10 of the Act:
Definition of deceptively similar
10. 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.
The appropriate tests to be applied in determining deceptive similarity were set out by the Full Bench of the Federal Court in the Hill Of Grace decision[3], as follows:
There is no room for doubt, in general terms, about the test to be applied. In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described it as follows:
"But, in the end, it becomes a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.
In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight."
Equally well known is the following passage from the judgment of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:
"On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions."
Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances". Thus, for instance, although the present Trade Marks Act contains no analogue of s 66 of the Trade Marks Act 1955 (Cth), it is still true that questions of deceptive similarity must be considered against the background of the usages in the particular trade.
[3] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at paragraph 40
Both parties made submissions about their opinions in respect of customers’ emotional reactions to the trade marks. These being purely suppositions, I do not intend to give them great weight. What I consider is of greater importance is the most likely way people will view the trade marks when they appear on the goods in question and how people are likely to pronounce them when giving a verbal version of the mark in question. These aural and visual aspects then add up to the overall impression of the trade marks likely to lodge in the mind of a purchaser.
Visual aspects of the trade marks
The applicant applied for its trade mark in plain block letters. It provided no evidence to show that use is otherwise, so I will consider the trade mark as it appears on the application form – H2OH!. The applicant said it saw the trade mark as consisting of two basic components: the letter-number combination H2 and the word OH! (an expression of surprise). It submitted that the opponent’s trade marks clearly incorporated the word GO, which was highlighted in the stylized versions of the trade marks, thus further distinguishing between them. It considered the differing numbers of components involved in various versions of the opponent’s trade marks were a significant factor in the differences between those marks and that of the applicant. Similarly, it considered the “bookending” of the letters “H” in the applicant’s trade mark and the exclamation mark were striking features, again pointing to significant differences between the trade marks.
The opponent, on the other hand, considered all the trade marks consist of identical first two characters, pointing to strong similarities between them. The lack of device elements in the applicant’s trade mark, the opponent said, did nothing to help distinguish it from those of the opponent.
On the purely visual aspects, and given that both the word OH and the word GO are known and understood by the majority of the Australian buying public, I consider that there are significant differences between the trade marks, despite both of them beginning with the letter-number combination H2. These differences are exacerbated by the “fancy” lettering of the opponent’s trade marks, as shown in the table above, and in the evidence provided.
However, these visual differences are not sufficient to point to an overall impression of difference between the trade marks. It is not appropriate to ignore the aural aspects of the trade marks, which, added to the visual, could alter the impression left on the mind of the buying public.
Aural aspects of the trade marks
The applicant considered its trade mark consists of two main components, the second being the word OH!, which it described as an expression of surprise. This view of the trade mark does allow for a certain amount of aural similarity between the final sound of all trade marks under consideration - the syllables OH versus GO - both incorporating a long O sound, as is heard in the word “hole”. The opponent put weight on the fact that the final letter H and the exclamation mark are silent in the applicant’s construction, which, it said, emphasises the long O sound.
I agree that the most likely pronunciation of both trade marks will incorporate that long O sound. However, as submitted by the applicant, the letter G in the word GO in the opponent’s trade marks is a very strong sound. It is not likely to be slurred or elided during pronunciation - it is most likely to be clearly articulated. This immediately sets up a significant difference in the aural qualities of the two trade marks.
One other likely occurrence with these trade marks is that the number 2 in the centre of the respective trade marks may be weighted differently when spoken, depending on whether it is followed by a consonant or a vowel. When saying “H2OH!”, the most likely pronunciation appears to be a clear articulation of the major components of the construction, resulting in pronunciation as “aitch-too-o”. It is difficult to see that the 2 and the O could be run together in any way. However, when saying H2GO, the strong consonant G is likely to result in a truncated articulation of the number 2 so that the construction is pronounced as “aitch-t’go”. The emphasis here moves to the word GO, and the aural differences between the two trade marks are exacerbated.
All these factors add up to there being significant differences in the way in which these two trade marks are likely to be pronounced. Add to these the differences in appearance when written, and any similarities between the trade marks are clearly diminishing.
Other aspects of the trade marks
It might also be worth noting that there is another way the whole construction of the applicant’s trade mark can be viewed and that is as a chemical formula – H2OH – where each separate letter is pronounced on its own, rather than pronouncing the OH portion as a word.[4] While this is a possibility, on these particular goods I do not consider it particularly likely the trade marks would viewed this way, and it is thus not something I should give any great weight to.
[4] This is the way I initially viewed the applicant’s trade mark, to the extent that I did some research to see if it had any specific chemical significance in respect of water. Having found nothing relevant, I have not pursued this aspect any further.
The opponent’s trade mark may also be viewed differently, and this view is likely to be more widespread. It has become reasonably common for the words “to go” to be used to describe goods designed to be “taken away”. This terminology is usually applied to food and/or drink which will not be eaten on the premises where it was purchased, but will be taken away by the customer and consumed elsewhere. The expression H2GO is effectively meaningless, but it could be seen as a play on words. The chemical formula for water is H2O – H2GO is water to take away and consume elsewhere. I consider there is a strong likelihood of the trade mark being regarded in this fashion.
Imperfect recollection
The so-called “doctrine of imperfect recollection” arises from the principle posited by Luxmoore LJ in Re Application by Rysta Ltd (1943) 60 RPC 87 at 108, where he said:
The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of s 12 of the Trade Marks Act 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.
The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants.
Analysis of the pronunciation of constructions such as the two under consideration is at best a theoretical exercise. However, there are additional factors involved here that are likely to have a significant effect on the way people will recall the trade marks. The applicant’s evidence pointed out that there are other trade marks already on the register, and presumably out in the market, for the same and similar goods, these trade marks incorporating references to, and variations of, the chemical formula for water. These registrations are consistent with my own experience and I am satisfied the buying public is likely to be well experienced in differentiating between various brands of drinks labeled with these kinds of indicia.
Overall, I consider the differences between the trade marks outweigh their similarities. I am not satisfied there is a real tangible danger of deception or confusion occurring if these trade marks coexist in the marketplace, nor am I satisfied that ordinary people will entertain a reasonable doubt as to the trade source of the products being sold under these trade marks. I do not consider the applicant’s trade mark to be deceptively similar to those of the opponent. As grounds of opposition under sections 44 and 60 require the trade marks to be at least deceptively similar, neither of these grounds can be established.
Section 43 – deception and confusion
The remaining ground the opponent raised in the notice of opposition and pressed at the hearing was that of section 43. The submissions were aimed squarely at confusion between the opponent’s trade marks and that of the applicant. The opponent submitted that it had acquired a significant reputation in its trade mark before the applicant filed its own application. Use by the applicant of its trade mark would, the opponent said, cause confusion because of the significant reputation and recognition of the opponent’s trade mark.
Section 43 provides:
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.
By the language of section 43, my considerations of the issues involved are limited to connotations arising from the opposed trade mark itself and not through similarities to another trade mark. This approach has been affirmed by the Court in Big Country Developments Pty Ltd v TGI Friday's Inc, [2000] FCA 720, 48 IPR 513 at 521:
The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43.
The opponent has not provided any evidence pointing to a connotation inherent within the applicant’s trade mark which is likely to result in deception and confusion. Similarly, as the applicant submitted, they have not provided evidence to support the kind of reputation envisaged in the BRAVEHEART[5] and SUMMER BAY[6] decisions. The main connotation within the applicant’s trade mark is that of a deliberately altered version of the chemical formula for water, H2O. The goods claimed include mineral, aerated and flavoured waters. I do not consider the connotation within the trade mark and the goods on which it is used to be at odds, thus resulting in deception and confusion. The ground of opposition under section 43 thus has not been established.
[5] Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5
[6] Amalgamated Television Services Pty Ltd v Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard [1999] ATMO 103
Decision
The opponent has not established any of the grounds of opposition it pursued in this action. The opposition therefore fails. The application may proceed to registration six weeks 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 the appeal has been discontinued or registration is otherwise ordered by the court.
Costs
The applicant having been successful is entitled to its costs. I award costs against the opponent at the official scale.
Alison Windsor
Hearing Officer
Trade Marks Hearings
IP Australia
18 December 2006
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