FurFresh Pty Ltd v David Haythornthwaite

[2022] ATMO 56

TRADE MARKS ACT 1995

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

Re:Opposition by FurFresh Pty Ltd to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 2011022 (International Registration number 1468224) (class 3, 21, 27) - FURF - in the name of David Haythornthwaite

Delegate:

Katrina Brown

Representation:

Opponent: J M Elks of Counsel instructed by Marque Lawyers

Holder: Potter IP Limited

Decision:

2022 ATMO 56

Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under regulation 17A.29 – grounds pursued under ss 44 & 60 – no grounds established – protection to be extended.

Background

1. This decision is in respect of an opposition under reg 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) by FurFresh Pty Ltd (‘Opponent’) to the extension of protection to the following International Registration Designating Australia (‘IRDA’).

Trade mark no:  2011022               

International registration no:  1468224

Trade mark:  FURF (‘Trade Mark’)

Holder:  David Haythornthwaite (‘Holder’)

Priority Date:  31 October 2018

Specification:  Class 3 - Deodorants for pets; non-medicated pet shampoos; pet shampoo and conditioner [non-medicated, non-veterinary grooming preparation]; pet shampoo, non-medicated [non-veterinary grooming preparation]; pet shampoos and conditioners [non-medicated, non-veterinary grooming preparations]; pet shampoos, non-medicated; shampoos for pets [non-medicated grooming preparations].

Class 21 - Pet feeding dishes; combs for animals; pet feeding and drinking bowls; feeding vessels for pets; brushes for pets; food containers for pet animals; brushes for grooming pet animals; pet brushes; household storage containers for pet food; electronic pet feeders; pet feeding bowls; pet food bowls; electric pet brushes; animal activated pet feeders; pet combs; pet drinking bowls; combs for pets; brushes for grooming animals; pet brushes, electric; pet feeding apparatus activated by laser sensors; dog food scoops for household purposes; animal combs.

Class 27 - Mats; pet feeding mats; floor mats; vinyl floor mats for indoor use.

(‘Holder’s Goods’)

1. The trade mark application was examined as required by reg 17A.12 of the Regulations. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 22 September 2019.

2. The Opponent filed a Notice of Intention to Oppose on 18 November 2019, followed by a Statement of Grounds and Particulars (‘SGP’) on 18 December 2019.

3. The Holder filed a Notice of Intention to Defend on 3 March 2020.

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

• Declaration of Emma Fisher (Founder of Opponent) made on 5 June 2020 with Annexures A to J (‘Fisher Declaration’); and

• Declaration of Emma Fisher made on 24 May 2021.

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

• Declaration of David Haythornthwaite (Holder) made on 9 December 2020 with Exhibits 1 to 5.

1. Once the time for filing evidence ended, a hearing by written submissions was requested. The Opponent filed written submissions. The Holder did not.

2. 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 [7] of this decision.

Grounds of opposition, onus, and relevant date

1. Regulation 17A.34 provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and on the grounds set out in ss 58 to 61 and 62A of the Trade Marks Act 1995 (Cth) (‘Act’).

2. In the SGP, the Opponent nominated grounds under ss 44 and 60 of the Act.

3. 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).

4. The date at which the rights of the parties are to be determined is 31 October 2018 (‘Relevant Date’) being the 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 Holder, 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 no:                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 Holder 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.

3. The Opponent does not assert that the trade marks are substantially identical. For the sake of completeness, in my opinion a total impression of resemblance does not emerge from a side by side comparison of the FurFresh Trade Mark and the Trade Mark. I am satisfied that the trade marks are not substantially identical.

4. The Opponent submits that the Trade Mark is deceptively similar to the FurFresh Trade Mark. 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.

5. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, 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].[3]

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 by the trade marks, allowing for imperfect recollection.

[3] [1963] HCA 66 [13].

1. 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.

2. 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 trade marks, recognising that one word or feature of a mark can be more striking and memorable than another.[4]

   [4] [2021] FCA 328 [245].

3. 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[5] 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.

   [5] Wingate Marketing Pty Limited v Levi Strauss [1994] FCA 1001 [129] (Gummow J).

4. 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.

5. The Opponent has also drawn my attention to alleged instances of actual confusion. I do not find these highly probative as it is not clear to me that the alleged confusion is due to the similarity of the trade marks. For example, the Opponent states that when a specific retailer sends through purchase orders for the Opponent’s products they shorten the brand name to FURF. Any confusion that results from this is due to the practice of one retailer using the first four letters of a brand name on their purchase orders, rather than the similarity between the trade marks.

6. Assessing the trade marks in their entirety, and their 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.

7. 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’ is ‘the recognition of the [trade mark] by the public generally’.[6] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[7] number of people or potential consumers. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[8] 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]

   [6] McCormick & Company Inc v McCormick [2000] FCA 1335 [81] (Kenny J).

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

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

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

2. Turning to the evidence, the Fisher Declaration indicates that the Opponent has used the FurFresh Trade Mark since 24 February 2015, approximately three and a half years prior to the Relevant Date.

3. The Opponent has not provided an indication of the revenue derived from goods bearing the FurFresh Trade Mark. It is declared that goods bearing the FurFresh Trade Mark are available in 200 stores across Australia. However, the Fisher Declaration does not specify how many of these stores were stockists at the Relevant Date.

4. It is declared that goods bearing the FurFresh Trade Mark are promoted via the Opponent’s website, social media, print advertisements, pet fairs and dog shows, third party articles and television segments. The Opponent has provided a small number of examples of these promotional activities. The number of likes or followers for the relevant social media pages are modest and there is no indication as to what proportion of these followers or likes existed at the Relevant Date. In fact, there are only 2 examples of promotion which are clearly before the Relevant Date, namely an article in the Mosman Daily newspaper (which was seemingly also available online via the website of the Daily Telegraph) and a segment on the Today Show.

5. Overall, the Opponent’s evidence lacks the specificity necessary for me to quantify any reputation that the FurFresh Trade Mark may have in Australia. Consequently, I am not satisfied, as a matter of fact, that at the Relevant Date the FurFresh Trade Mark had the reputation that is contemplated by s 60 of the Act.

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

Decision

1. Regulation 17A.34N relevantly provides:

   (1)  Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)  to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)  to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

2. The Opponent has not established a ground of opposition. Accordingly, trade mark application number 2011022 (IR 1468224) may proceed to protection 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 the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Costs

1. Both parties have sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent under s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Regulations.

Katrina Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

13 April 2022