Gaseosas Lux S.A. v Chris Alexander Sanson

[2017] ATMO 151

TRADE MARKS ACT 1995

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

Re:Opposition by Gaseosas Lux S.A. to registration of trade mark application 1709603(32) - THE BIG HIT - filed in the name of Chris Alexander Sanson.

Delegate:	Jock McDonagh
Representation:	Opponent: Samuel Hallahan of counsel, instructed by Davies Collison Cave Patent and Trade Mark Attorneys Applicant: Anthony Norris of Collison & Co Patent and Trade Marks Attorneys (by telephone)
Decision:	2017 ATMO 151 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered –ground established – registration refused

Background

1. This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark filed by Chris Alexander Sanson (‘the Applicant’). Relevant details of the opposed application are set out below.

Application No	1709603
Trade Mark	THE BIG HIT           (‘the Trade Mark’)
Filing Date:	24 July.2015 (‘the Priority Date’)
Goods:	Class 32: Isotonic drinks and formulated caffeinated beverages

1. The Trade Mark was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 17 December 2015. Gaseosas Lux S.A. (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark on 15 February 2016 and a Statement of Grounds and Particulars (‘the Statement’) on 15 March 2016.  The Applicant filed Notice of Intention to Defend on 27 April 2016. On 13 October 2016 the Opponent filed a request to amend the Statement under reg 5.12(1)(b) of the Trade Mark Regulations 1995 (‘the Regulations’)to take into account a divisional application  made after the Statement. The request was granted. The parties then filed evidence as provided by the Regulations.

2. I heard the matter in Canberra on 1 September 2017 as a delegate of the Registrar of Trade Marks. Samuel Hallahan of counsel, instructed by Davies Collison Cave Patent and Trade Mark Attorneys appeared for the Opponent. Anthony Norris of Collison & Co Patent and Trade Marks Attorneys appeared by telephone link for the Applicant.

   Grounds of Opposition

   4. The Opponent pressed the following ground of opposition under the Act at the hearing:

   ·Section 44: The Trade Mark is substantially identical with or deceptively similar to a prior application or registration;

3. To succeed in its opposition the Opponent bears the onus of establishing the ground on the ‘balance of probabilities’.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

4. The time at which the ground of opposition must be established is the date of filing of the application for registration.[2]

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Evidence

   7.     The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Katherine Louise Kemp (‘Kemp’)	Opponent’s attorneys’ trade mark searcher	3.08.2016	KK-1  to KK-3
Evidence in Answer
Chris Alexander Sanson (‘Sanson’)	Applicant	12.10.2016	A1 to C2

1. Kemp provides the results of a number of searches of the Trade Marks Register for the word ‘HIT’ in class 32. The searches provided details of the following trade mark registrations:

Trade Mark No.	Trade Mark	Classes of Goods/services	Priority Date
715956	HIT	Class 32 Non-alcoholic drinks and beverages, mineral and aerated waters; soda water, dry ginger ale, tonic water, lemon squash, bitter lemon, lemonade, orangeade; fruit juices, fruit juice drinks and beverages containing fruit juice and fruit juice flavouring, including mineral and aerated water containing fruit juice or fruit juice flavouring; dietetic and low calorie forms of all the foregoing good in this class; carbonated and non-carbonated soft drinks and concentrates for making same, including beverages in containers; concentrates, syrups, powders and other preparations and substances for making the foregoing goods	27.08.1996 (removed 14.03.2017)
1662046	Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages	3.12.2014 (lapsed 9.06.2016)
1765535	Class 32: Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages	3.12.2014

1. Sanson provides a history of the Applicant’s business in selling goods under the Trade Mark in New Zealand and Australia and processes the Applicant conducted in preparing to apply for registration of the Trade Mark in Australia.

2. The information in Sanson is possibly relevant for establishing the bona fides of the Applicant’s application; however, it is of little assistance in the comparison of trade marks under section 44 of the Act.

   Discussion

3. During the hearing there was a great deal of attention afforded to the issue of two of the cited registrations (715956 and 1662046) having ceased to be on the Register prior to the date of the hearing. My attention was drawn to a recent Office decision 1872 Holdings VOF v Havana Club Holding SA[3] (‘Havana Club’), where the Hearing Officer discussed the concept of the  “‘zombie’[4] application: dead, but still capable of doing damage to a later comer filed during its pendency.”[5]

   [3] [2017] ATMO 12 (21 February 2017).

   [4] Zombie marks? Ceased registrations, failed applications and citation objections under s 44 of the Trade Marks Act; Michael Handler and Robert Burrell (2013) 23 AIPJ 206 at 206.

   [5] Havana Club at [19].

4. In Havana Club, the ‘zombie mark’ cited against the applied for International Registration Designating Australia was an application that was refused registration after being opposed under reg 17A.33 of the Regulations.

5. In these proceedings, cited registration 715956 HIT remained registered for some 21 years before being removed for non-use on 14 March 2017. Cited application 1662046 lapsed without achieving registration; however, it is an identical mark to cited registration 1765535, which is registered for similar goods in class 32 to application 1662046.

6. As will become apparent in my reasons below, the life, death, or resurrection of any of the cited marks has no bearing on my decision. Therefore, I need not discuss Havana Club further.

7. I now turn to the grounds of opposition.

   Section 44 – Identical etc. trade marks

8. Section 44 of the Act relevantly states:

(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.

Note 1:       For deceptively similarsee section 10.

Note 2:       For similar goodssee subsection 14(1).

Note 3:       For priority datesee section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

             (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 limitationssee 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 titlesee section 6.

Note 3:       For priority datesee section 12.

1. Thus to found its ground of opposition under subsection 44(1) the Opponent has to establish to my satisfaction the existence of at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Applicant and which:

   ·        has a priority date earlier than that of the opposed trade mark; and

   ·is registered or made in respect of the same or similar goods or closely related services; and

   ·is substantially identical or deceptively similar to the opposed trade mark.

2. The marks relied upon by the Opponent are those shown above in [8], and each of the marks relied upon by the Opponent has a priority date earlier than that of the Trade Mark and are registered in class 32 for the same or similar goods.

3. The Opponent did not press substantial identity, only deceptive similarity. Indeed, in submissions the Mr Hallahan expressly repudiated the side by side comparison test for substantial identity. I shall only address the deceptive similarity issue.

4. Deceptive similarity is defined in section 10 of the Trade Marks Act as follows:

   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.

5. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited[6]:

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark].

   [6] (1961) 109 CLR 407 at 415

6. The Court 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.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

7. The principles applicable in determining the standard of “confusion or deception” under s 44(1) of the Act were discussed by French J in Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’):[7]

   [7] [1999] FCA 1020 at [50]

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd at 594-595, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i)        To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii)       A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii)      In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv)     The rights of the parties are to be determined as at the date of the application.

   (v)       The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

8. There was no practical divergence between the parties as to the legal principles cited above. However, there was divergence as to how the principles should be applied.

9. Mr Hallahan submitted that the essential feature of the Trade Mark and the cited trade marks is the word HIT. Further, he submitted that the definite article ‘the’ should be excluded for the purposes of comparison, and that ‘big’ should also be ignored because of its descriptive and laudatory character.

10. Mr Hallahan said that the goods are low-cost and often sold in an environment where there are often many choices and goods are often ordered verbally, rather than by inspection. Therefore, he submitted, there was a high risk of confusion.

11. Mr Norris submitted that the Trade Mark should not be dissected as suggested by Mr Hallahan, rather the Trade Mark should be considered as a whole.

12. Mr Norris highlighted the aural and visual differences between the marks. He submitted that the words ‘THE BIG’ would be spoken and appreciated as forming a significant part of the Trade Mark when presented orally.

13. Mr Norris submitted that the visual differences of the marks under comparison are more significant in circumstances such as the sale of non-alcoholic beverages where the goods are usually displayed and selected by the purchaser with little or no intervention from sales staff.

14. Mr Norris also discussed the conceptual differences between the competing marks, especially the two device marks. However, he also highlighted the conceptual differences between the single word ‘hit’ and the typically sporting expression ‘THE BIG HIT’. The words ‘the big’ are submitted to be not apt to describe beverages, as one does not typically describe a beverage as ‘the big’ beverage.

15. Having taken into account the submissions by the parties, I have decided that the Trade Mark is deceptively similar to the Opponents trade mark registration 1765535 (‘the Opponent’s Mark’). I do not need to consider the remaining cited marks. My reasons follow.

16. The Opponent’s Mark comprises a series of two marks, being the same device in black and white, and in colour. For the purposes of this opposition, it suffices to focus on the black and white version, which is taken to be registered for all colours.[8]

    [8] Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606.

17. The Opponent’s Mark is a device comprising the word HIT in front of a round device. The device appears to have two leaves on top and is suggestive of a piece of fruit. The word HIT dominates the device.

18. I consider that the word HIT is the essential feature of the Opponent’s Mark and is a significant and distinctive element. It is common for various beverages to be referred to as providing a ‘hit’ by way of its flavor, sugar content, or caffeine content (or all three).

19. Beverages are commonly sold in different sizes (such as 250ml and 330 ml cans, 600ml and 1l bottles), and the word ‘big’ may be apt to use to differentiate one from the other. As Mr Hallahan suggested in his submissions, ‘in a hypothetical retail situation where a consumer was seeking to communicate to the retailer that they wished to purchase the larger serving of the Opponent’s product, the consumer may say, “I’ll have a big Hit”’.

20. The word ‘big’ has a laudatory character, and is also an adjective commonly used with the word hit to emphasise magnitude. The phrase ‘big hit’ is relatively common, for example, in sporting context.

21. The relevant goods for each of the respective marks in issue are beverages sold in the often fast-moving consumer goods sector. They are generally low-cost goods, sold in environments where there are often many choices and the goods may be ordered verbally rather than the consumer personally selecting them. These are circumstances that typically heighten the risk of confusion.

22. Accordingly, when the comparison is made between the Trade Mark and the Opponent’s Mark on the basis of imperfect recollection[9] and the behavior of ordinary people, not credited with high perception or habitual caution,[10] I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Mark in that there is a real likelihood that some people will wonder or be left in doubt whether the products in question come from the same source.

    [9] Re Rysta Ltd (1943) 60 RPC 87 at 108.

    [10] Woolworths at [49].

23. In view of my finding that the Trade Mark is deceptively similar to the Opponent’s Mark, the Opponent has established the opposition ground based on s 44 of the Act.

    Decision

24. Section 55(1) of the Act provides:

    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.
    Note: For limitations see section 6.

25. Subsection (3) does not apply to these proceedings.

26. I have found the Opponent has established the ground of opposition it raised under s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the trade mark application number 1709603.

    Costs

1. The Opponent has sought its costs.  I see no reason to depart from the general rule that costs follow the event.  As the Opponent has established a ground of opposition, I award costs against the Applicant in accordance with the amounts in Schedule 8 of the Regulations.

   Jock McDonagh
   Hearing Officer
   Trade Marks and Designs Oppositions and Hearings
   1 December 2017