Furfresh Pty Ltd v David Haythornthwaite

[2022] ATMO 123

TRADE MARKS ACT 1995

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

Re:Opposition by Furfresh Pty Ltd to registration of trade mark application number 2144080 (classes 21, 27) – furf. – in the name of David Haythornthwaite

Delegate:

Katrina Brown

Representation:

Opponent: Marque Lawyers Pty Ltd

Applicant: Potter IP Limited

Decision:

2022 ATMO 123

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 44 and 60 – no grounds established – trade mark to proceed to registration.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Furfresh Pty Ltd (‘Opponent’) to registration of the following trade mark:

Trade mark number:  2144080

Trade mark:  

(‘Trade Mark’)

Applicant:  David Haythornthwaite (‘Applicant’)

Filing date:  17 December 2020

Goods:Class 21 - Food bowls for pets; Pet feeding bowls, automatic; Electronic pet feeders; Plastic containers for dispensing drink to pets; Plastic containers for dispensing food to pets; Containers for pet food; Brushes for grooming pet animals; Combs for animals

Class 27 - Feeding mats for domestic pets; Floor mats; Mats

(‘Applicant’s Goods’)

1. The trade mark application was examined as required by s 31 of the Act. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 18 May 2021.

2. The Opponent filed a Notice of Intention to Oppose on 1 June 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 29 June 2021.

3. The Applicant filed a Notice of Intention to Defend on 8 September 2021.

4. The Opponent filed the following declaration as evidence in this matter:

• Declaration of Emma Fisher (Founder of Opponent) made on 14 December 2021 with Annexures A to H (‘Fisher Declaration’).

1. The Applicant filed the following declaration as evidence in this matter:

• Declaration of David Haythornthwaite made on 18 March 2022 with Exhibits 1 to 8.

1. Once the time for filing evidence ended, the Applicant requested that the matter be decided without a hearing. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material described in [3] to [6] of this decision.

Grounds of opposition, onus, and relevant date

1. In the SGP, the Opponent particularised grounds of opposition under ss 44 and 60 of the Act.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

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

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is 17 December 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Section 44

1. Section 44 of the Act relevantly provides:

   (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.

2. To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.

3. In the SGP, the Opponent identifies the following trade mark as the basis for this ground of opposition:

Trade mark number:  1675297

Trade mark:  FurFresh (‘FurFresh Trade Mark’)

Registered owner:  Furbaby Fresh Pty Ltd

Priority date:  24 February 2015

Specification:  Class 31 – Pet food; dog food; cat food.

1. From the information set out above, it is evident that the FurFresh Trade Mark is held in a name other than that of the Applicant and has a priority date which is earlier than the Relevant Date.

2. My next consideration is whether the Trade Mark is substantially identical with, or deceptively similar to, the FurFresh Trade Mark.

Substantially identical

1. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[3]

   [3] [1963] HCA 66, [12] (Windeyer J).

2. In my opinion a total impression of resemblance does not emerge from a side by side comparison of the Trade Mark and the FurFresh Trade Mark. The Trade Mark consists of the letters ‘furf’ followed by a full-stop, whilst the FurFresh Trade Mark consists of the known words ‘Fur’ and ‘Fresh’ run together. These differences are unlikely to go unnoticed on a side by side comparison. I do not consider the Trade Mark to be substantially identical with the FurFresh Trade Mark.

Deceptively similar

1. Section 10 of the Act defines deceptively similar as:

   a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. In Shell, Windeyer J provided the following insights on deceptive similarity:

   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 [trade mark].[4]

As such, I must estimate the impression that a person of ordinary intelligence and memory would have of the Trade Mark and of the FurFresh Trade Mark. I must consider the look, sound and idea conveyed, allowing for imperfect recollection.

[4] Ibid [13].

1. The Applicant and Opponent were parties in a prior opposition proceeding relating to the registration of trade mark number 2011022 for the word FURF in classes 2, 21 and 27. In that matter, in finding FURF not deceptively similar to the FurFresh Trade Mark, I stated

   The Opponent asserts that the trade marks are deceptively similar because they both begin with the letters ‘furf’ which are not descriptive in relation to the goods and would be emphasised when the trade marks are spoken. In the Opponent’s view, ‘furf’ is the essential feature of each of the trade marks.

The Trade Mark and the FurFresh Trade Mark do both begin with ‘furf’. However, this does not automatically amount to deceptive similarity. The question to be considered is whether the similarity gives rise to a real and tangible danger of deception or confusion. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) O’Bryan J stated:

That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[5]

When the trade marks are considered as wholes, the common presence of ‘furf’ is not, in this instance, sufficient to give rise to a real and tangible danger of confusion. The likely impression of the Trade Mark on an ordinary consumer is that of a four-letter word with no obvious meaning. Contrastingly, the FurFresh Trade Mark consists of an eight-letter word formed by conjoining the known words ‘Fur’ and ‘Fresh’. I consider it likely that a consumer of ordinary intelligence and memory would be familiar with the words ‘Fur’ and ‘Fresh’. It strikes me that the natural and ordinary pronunciation of those words is likely to influence the way the FurFresh Trade Mark is recalled and spoken, namely as ‘Fur Fresh’, not ‘FURFresh’ as asserted by the Opponent.

In my opinion, it is very difficult to characterise ‘furf’ as an essential feature of the FurFresh Trade Mark. The letters ‘furf’ are absorbed within ‘FurFresh’ and the emphasis and impression conveyed is not on ‘furf’, rather it is on the FurFresh Trade Mark as a whole.[6]

[5] [2021] FCA 328, [245].

[6] FurFresh Pty Ltd v David Haythornthwaite [2022] ATMO 56, [21]–[24] (citations omitted).

1. The reasoning applied in the prior opposition is equally applicable to the current matter. Additionally, I note that in the current matter the particularisation of this ground refers to the reputation of the Opponent and the FurFresh Trade Mark. As a general principle, reputation is not a relevant consideration in determining deceptive similarity. In Singtel Optus Pty Limited v Optum Inc Davies J observed:

   the fact that the mark, or an important element of it, is “notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services” will be a relevant consideration in assessing the nature of a consumer’s imperfect recollection of a mark

   …

   In both Henschke and Crazy Ron’s it was held that RTM v Woolworths is not authority for any wider proposition in relation to the relevance of reputation on a question of deceptive similarity, as any wider proposition would be inconsistent with established authority.[7]

   [7] [2018] FCA 575, [140]–[142].

2. It will become apparent from my discussion of s 60 below, that the evidence does not establish that the FurFresh Trade Mark is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use.

3. Assessing the trade marks in their entirety, and the likely impression on the mind of the relevant consumer, I am not satisfied that the Trade Mark is deceptively similar to the FurFresh Trade Mark.

4. The ground of opposition under s 44 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. In the SGP, the Opponent nominated the FurFresh Trade Mark as the basis for this ground of opposition.

Reputation

1. For the purposes of s 60 ‘reputation’ has been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[8] number of people or potential consumers. In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[9]

   [8] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170 (Moore, Tamberlin and Goldberg JJ).

   [9] [2019] FCA 923, [83] (O’Bryan J).

2. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[10] In this matter, I am not satisfied that the evidence demonstrates that there was recognition of the FurFresh Trade Mark by a significant or substantial number of relevant consumers at the Relevant Date.

   [10] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

3. The Fisher Declaration indicates that the Opponent has used the FurFresh Trade Mark in Australia for approximately 5 years before the Relevant Date. However, the Opponent has not provided an indication of the revenue derived from goods bearing the FurFresh Trade Mark, nor has the Opponent provided any indication of the expenditure on marketing and/or promoting the FurFresh Trade Mark.

4. It is declared that FurFresh branded goods are available in 200 stores across Australia. However, it is unclear how many of these stores were stockists at the Relevant Date. Similarly, the Opponent has provided examples of use of the FurFresh Trade Mark on websites and social media pages but it is not clear that these examples are prior to the Relevant Date. There are only three examples of use of the FurFresh Trade Mark which are clearly before the Relevant Date, namely an article by the Australian Dog Lover, an article in the Mosman Daily newspaper (which was seemingly also available online via the Daily Telegraph website) and a segment on the Today Show. Furthermore, the Opponent has not provided any means to quantify the exposure that Australian consumers had to these three promotional activities, such as the number of visitors to the relevant websites or the reader/viewer numbers of the relevant newspapers or television program.

5. Overall, the Opponent’s evidence lacks the specificity for me to quantify any reputation that the FurFresh Trade Mark may have in Australia.

6. The ground of opposition under s 60 has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (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.

2. The Opponent has not established a ground of opposition. Accordingly, trade mark number 2144080 may proceed to registration one month from the date of this decision.

3. 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 that the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Costs

1. The Applicant sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

27 July 2022