G. Johns Orchards v Robert Cianfrano

[2005] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by G. Johns Orchards to registration of trade mark application 932616(31, 35) - TOPLINE FRUIT - filed in the name of Robert Cianfrano.

Delegate:	Jock McDonagh
Representation:	Opponent: Ms Elspeth Strong SC, instructed by The Field Group. Legal Applicant: Mr Robert Cianfrano represented himself
Decision:	Section 52 opposition - sections 58 and 60 grounds established -registration refused. Costs awarded against the applicant.

Background

1. The applicant, Robert Cianfrano, applied to register the following trade mark:

Application Number:	932616
Trade Mark:	TOPLINE FRUIT
Goods/Services	Class  31:  Fruit Class  35:  Sale and marketing of fruit
Priority date:	29 October 2002
Advertised:	15 August 2003

1. The opponent, G. Johns Orchards, filed notice of opposition to the trade mark's registration on 21 October 2003.  That notice listed four of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act"), namely under sections 42, 43, 58 and 60.

2. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 23 August 2005. Ms Elspeth Strong SC, instructed by The Field Group. Legal, represented the opponent. Mr Robert Cianfrano, the applicant, represented himself by telephone.

   Evidence

3. The evidence relating to the opposition consists of the following declarations:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Gordon William Johns	17.03.04	GWJ-1 to GWJ-20 & GWJ Confidential	First Johns
34 Trade declarations	Various	Various	[surname]
Evidence in Answer
Robert David Cianfrano	21.07.04	A to G	First Cianfrano
Evidence in Reply
Gordon William Johns	20.10.04	GWJ-22 to GWJ-27	Second Johns
Paul Barsoum	13.10.04	First Barsoum
Bruce Robert Battishall	15.10.04	Battishall
Damian Peter Hendriks	18.10.04	Hendriks
Opponent’s    Further	Evidence
Paul Barsoum	05.04.05	PB-1	Second Barsoum
Applicant’s    Further	Evidence
Robert David Cianfrano	15.06.05	Annexures A to C	Second Cianfrano
16 Trade declarations	Various	Various	[surname]

1. In the interests of brevity, I have omitted details of the various trade declarations, to which I will only make specific reference as required in my decision.

2. Counsel for the opponent objected to four declarations (those of Richard Pascoe, John La Spina, Joseph Kircher, and Timothy Hall) amongst the applicant’s further evidence on the basis that the copies served on the opponent were unsigned drafts.  I decided to admit the material as evidence, because formally executed declarations had been filed with the Trade mark Office as required by the Trade Mark Regulations 1995.  The Regulations only required a copy of the declarations to be served on the other party, I consider that the applicant has substantially complied with the Regulations.

3. The first Johns declaration is made by the senior partner of the opponent.  It gives details of the opponent's experience in the fruit growing industry in Victoria, the details of use of its trade mark, and the duration and extent of the opponent's markets Australia-wide and overseas. 

4. The numerous trade declarations in support are made by various representatives of a variety of industries associated with the opponent's business.  They each attest to the knowledge of the opponent's trade mark, their lack of awareness of any other brands with similar words, and the belief that there would be confusion if they were to encounter the applicant's trade mark.

5. The first Cianfrano declaration is made by the applicant, a second-generation orchardist from Orange.  He similarly details his experience in the fruit growing industry, the details of the adoption and use of his trade mark, and extent of his market in Australia.  Mr Cianfrano provided numerous examples of documentation showing the applied for trade mark, usually in association with the superscript TM, and copies of business name registrations for Top Line Fruit and Top Line Fruit Pty Ltd.

6. The applicant also provided numerous trade declarations that attest to knowledge of the applicant's trade mark and a lack of awareness of that of the opponent.

7. Again for the sake of brevity, I shall not here detail any more of the evidence.  Relevant parts of the evidence will be referred to as required in discussion of the various grounds.

8. I will, however, make the observation that it is obvious that the applicant has not had the advantage of professional advice such as from trade mark attorneys or legal practitioners.  While this does not affect the truthfulness of the evidence of the various declarants, it does affect the relevance of some of the material filed.

   Onus of Proof

9. It is necessary for the opponent to establish at least one of the grounds set out in its notice of opposition in order to succeed.  The Registrar is required to approach the question of registration with the presumption of registrability in mind: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, Lomas v Winton Shire Council [2003] AIPC-91-839, Kowa Company Ltd v N V Organon [2005] FCA 1282 paragraph [139].

   Grounds of opposition

10. While Counsel for the opponent did not abandon any grounds of opposition, emphasis was given to the sections 58 and 60 grounds with the remaining grounds being given perfunctory treatment.

    Ground 1 – Ownership of the trade mark

11. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.  In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant was not the first user in trade in Australia of the applied-for trade mark.  To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

12. The proper comparison for substantial identity is side by side, as described in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J, at 414:

    In considering whether marks are substantially identical 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.

13. The situation here is similar to that which was considered in P B Foods v Malanda Dairy Foods Ltd [1999] FCA 1602, where the marks under consideration were chill and choc chill. Carr J found that these trade marks were substantially identical because the essential feature of the trade marks and the word that served to denote the origin of the goods was the word chill. The purpose of the word choc was merely to describe the flavour of the goods. In this case topline denotes the origin of the goods and fruit is merely the name of the goods in respect of which the applicant trades.

14. Consequently, I am satisfied that the applied for trade mark is substantially identical to that of the opponent.

15. I am also satisfied that the opponent has used its trade mark from 1973, whereas the applicant adopted its trade mark in 2001.

16. Both the applicant and the opponent apply their trade mark to fruit.  Therefore, I am satisfied that the opponent has established that the applicant is not the owner of the trade mark in question.  This ground of opposition is made out.

    Ground 2 - Reputation

17. To satisfy section 60, the opponent has the burden of establishing the following elements:

    ¨   a pre-existing trade mark;

    ¨   substantial identity or deceptive similarity between the applied-for trade mark and the pre-existing trade mark;

    ¨   the acquisition of a reputation in Australia by the pre-existing trade mark; and

    ¨   a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

18. Under section 60, the opponent may rely on a trade mark which is not registered, but which has been used at common law. To establish such use, it must show that it has been used as a "badge of origin" - as confirmed by Gummow J in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd  (1991) 21 IPR 1. The requisite use must be public use, but need not be sufficient to establish a local reputation: Moorgate Tobacco Co. Limited v Philip Morris Limited & Anor (1984) 156 CLR 415, per Deane J.

19. I am satisfied that the opponent has been using top line as a trade mark since 1973.  The evidence clearly demonstrates that top line has been publicly used in Australia as a "badge of origin" of the opponent’s fruit.

20. It already been established that the opponent’s common law trade mark is substantially identical to that of the applicant. 

21. The next question in respect of the section 60 ground, is whether the opponent has shown a sufficient reputation in its trade mark to satisfy the requirements of subsection 60 (b), such that the reputation is wide enough that deception and confusion is likely. The reputation must be shown to have existed at the priority date.

22. It is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions: McCormick & Co Inc v McCormick, supra.

23. On the basis of the opponent's evidence, I am satisfied that it has shown sufficient reputation and that the reputation is such that deception and confusion is likely.  I find this ground is made out.

24. Although the applicant has provided evidence that he has used his trade mark before the priority date, honest concurrent user is not available with respect to section 60: McCormick & Co Inc v McCormick, supra.

    Ground 3- Use contrary to law

25. Subsection 42(b) of the Act provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. Here, the opponent alleges that use of the trade mark would constitute the common law tort of passing off, and contravene sections 52 and 53 of the Trade Practices Act 1974.

26. Following the decision of Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, the Registrar is obliged, when assessing whether use would be contrary to law under s.42(b), to take into account the operation of laws and legislation other than the Act.

27. In the Advantage Rent-A-Car case, Madgwick J confirmed that the test to be satisfied was that use would, rather than could, be contrary to law.  Therefore, I am to determine, on the balance of probabilities, and on the basis of a hypothetical case which takes into account all the evidence and submissions before me, whether use of the applied-for trade mark in respect of the applicant’s goods would involve a misrepresentation by the applicant by which the goodwill of the opponent's business is deflected to the use of the applicant with consequent damage (or likelihood thereof) to that business: see Shanahan's Australian Law of Trade Marks and Passing Off, 3rd Edition, page 493.

28. In one of the leading cases in Australia, ConAgra Inc v McCain Foods (Aust) Pty Limited (1992) 33 FCR 302, Gummow J observed at 355‑56 that the ‘classical trinity’ of:

    (a)reputation;

    (b)misrepresentation; and

    (c)damage,

    served to emphasise the core concepts in this area of the law.

29. I accept the applicant’s evidence that he innocently and honestly adopted the trade mark, without knowledge of the opponent.  However, I am satisfied that the opponent has established a reputation and goodwill in its common law trade mark such that the use of the applicant’s mark, however honestly, is capable of constituting a misrepresentation.

30. Therefore,  I am satisfied that the applied-for trade mark in respect of the applicant’s goods would involve a misrepresentation by the applicant by which the goodwill of the opponent's business is likely to be deflected to the use of the applicant with consequent likelihood  of damage  to that business.

31. Ms Strong also submitted that use of the trade mark would be contrary to section 52 of the Trade Practices Act, which provides that ‘a corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.’

32. The applicant is not an incorporated body; however, sections 6(2) (a) and (h) and 6(3) extend sections 52 and 53 of the Trade Practices Act to apply where trade and commerce takes place among the states and between a state and a territory.  These Commonwealth provisions are also substantially reproduced in relevant State Fair Trading Acts.

33. I must now decide if use by the applicant of its trade mark would be contrary to law. The relevant standard to be applied is that there must be a ‘real or not remote chance or possibility’ of a reasonably significant number of people being misled or deceived per Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431. It is not necessary to prove that misleading and deceptive conduct has actually occurred. It is enough if there is a real likelihood of misleading or deceptive conduct. Shanahan's Australian Law of Trade Marks and Passing Off, 3rd edition, 2003 at page 598, states:

    Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice.

34. Ms Strong submitted that consumers would be misled into a belief that the applicant was in some way connected with the opponent through an association, endorsement or sponsorship. There was no requirement for any blameworthy conduct by the applicant, and the opponent did not contend that there was any.

35. On the basis of the opponent's evidence and submissions, I am satisfied that potential customers being confronted by the applicant’s trade mark in respect of fruit and the sale and marketing of fruit would be likely to be misled into believing that they were connected in the course of trade with the opponent. This ground of opposition has been established.

    Ground 4 – Connotation

36. The opponent submitted that because of the connotation of the word topline in relation to fruit sales and marketing, the use of the topline fruit mark by the applicant would be likely to deceive or cause confusion.

37. It was submitted that the connotation is that the fruit sold or marketed under the top line mark is of the highest quality.  The opponent submitted there was no evidence of any quality control or testing of quality.

38. While it might be true that the applicant's trade mark does indeed carry the connotation alleged, there is no evidence to suggest that the applicant's fruit is not of the highest quality.  Therefore I am not satisfied that the use of the topline fruit mark by the applicant would be likely to deceive or cause confusion.

    Decision and Costs

39. The opponent has established grounds of opposition on which it relied so that the opposition as a whole has been successful.  Pursuant to section 55, I refuse to register application 932616.

40. The opponent sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    29 November 2005