General Biscuits Belgie N.V v Christian Joanny Dongey

[1999] ATMO 57

TRADE MARKS ACT 1995

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

Re:      Opposition by General Biscuits Belgie N.V. to trade mark application number 752694(30) filed in the name of Christian Joanny Dongey.

Trade mark application number 752694 was filed on 15 January 1998 in the name of Christian Joanny Dongey of 735 Marion Road, Ascot Park, South Australia.  Mr Dongey seeks to register the following trade mark in respect of cakes and pastries.  This mark

successfully passed through examination, and in the Official Journal of Trade Marks of 21 May 1998, the Registrar advertised acceptance of trade mark application number 752694 for registration.  I shall refer to this trade mark as the frog prince trade mark. 

In accordance with the provisions of section 52 of the Trade Marks Act 1995, General Biscuits Belgie, a Belgian corporation located at De Beukelaer-Pareinlaan 1, Herentals, Belgium, opposed this application and subsequently advised it would not serve any evidence to support that opposition. The applicant, Mr Dongey likewise served no evidence.  On 16 March 1999, Ms Gail Hill, a legal practitioner with F.B.Rice & Co, a Sydney firm of patent and trade mark attorneys which acts on behalf of General Biscuits Belgie, asked that the opposition matter be set down for a hearing.  A Canberra hearing was appointed for 7 May 1999.  Neither side attended at the appointed time, but both filed a set of written submissions. I now turn to decide the opposition on the basis of the grounds set down in the notice of opposition, and of argument put to me in those written submissions. General Biscuits Belgie’s submissions come from Ms Hill (mentioned above).  Mr Dongey’s submissions come from Mr Howard Schulze of the Adelaide firm of Collison & Co.

Notice of opposition

The grounds nominated by General Biscuits Belgie are broadly stated.  Essentially, however, they claim that the application trade mark: -

• is not intended to be used by Mr Dongey (section 27 of the Act)

• is not capable of distinguishing Mr Dongey’s cakes and pastries  (section 41)

• would be contrary to law (section 42)

• would be likely to deceive or cause confusion (section 43)

• is deceptively similar to trade mark 741259 (30)  - prince (section 44)

• is deceptively similar to trade mark 563223 (30)  - choco prince (section 44)

• is deceptively similar to “a trade mark” with an earlier priority date (section 44)

• is not owned by  Mr Dongey (section 58)

The submissions filed by Ms Hill concentrate on the section 44 ground, and make some minor reference to the sections 27 and 42 grounds. There is no support for the section 41, 43 and 58 grounds. I shall deal first with the substantive section 44 ground.

The section 44 ground 

General Biscuits Belgie is the owner of a number of trade marks. Some of these marks are registered. Others are pending.  As pointed out by Ms Hill, four of these marks (as detailed below) have a priority date earlier than 15 January 1998 (the filing date of the subject application) and specify goods which include cakes and pastries (the goods of the subject application). They include the two marks specifically nominated in the notice of opposition and two further marks, 256564 and 747287. In General Biscuits Belgie’s submissions, as put by Ms Hill, these four trade marks constitute grounds for rejecting the frog prince trade mark under the provisions of section 44.  These four marks are:

Number class   trade mark                  goods
256564   30     pineapple prince      Pineapple flavoured ice cream and frozen confections

1. 30     choco prince           Biscuits, wafers, waffles, pastry, bakery goods, confectionery, sweets, candy, scones, cakes, all containing chocolate; cocoa, chocolate, chocolate goods

2. 30     prince  Biscuits, pastries, cakes and bakery items in this class

I shall refer to this mark as the prince device

 

747287   30  Coffee, tea, cocoa, chocolate; coffee-based beverages, cocoa-based beverages, chocolate-based beverages; sugar, rice, tapioca. Flours, pies (sweet or savoury), pizzas, and tarts (sweet or savoury). Pasta (plain or flavoured and/or filled), cereal preparations, cereals for breakfast. Prepared meals totally or partially composed of pasta. Ready made dishes partially or totally made of pastry. Bread, rusks. Biscuits (sweet or savoury), wafers, waffles, cakes, pastries. All these products being plain and/or coated and/or filled and/or flavoured. Savoury or sweet appetizers composed of biscuit, pastry, dough or batter. Confectioneries. Ice cream, frozen creams. Honey; salt; mustard; vinegar; sauces (condiments), sweet sauces, pasta sauces; spices

There is consensus that these marks have an earlier priority date than the application; and that the goods overlap. It is worth mentioning here that the pineapple prince goods, which might appear of dubious relevance, encompass frozen cakes and pastries. I also mention, for completeness, that 747287 is a multiclass registration which covers eight other classes.

Ms Hill concedes that the frog prince trade mark is not substantially identical with any of these four marks.  She submits, however, that it is deceptively similar to each one.  Mr Schulze argues to the contrary. In terms of the section 44 ground, the crux of the matter then, is whether or not the frog prince trade mark is deceptively similar to any one of the word marks pineapple prince, choco prince or prince; or if it is deceptively similar to 747287, the prince device trade mark.

Submissions in respect of the section 44 ground

Ms Hill relies on established case law to support the claim of deceptively similar. She reminds me in particular that in considering the question of deceptive similarity:

• the comparison is based on the recollection of the General Biscuits Belgie trade marks that a person of ordinary intelligence and memory would be expected to retain, and the impression that such a person would  take up from the frog prince trade mark[1];

  [1] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd  (1963) 109 CLR 407

• the impressions or recollections carried away and retained is the basis on which to decide whether confusion between the frog prince trade mark and General Biscuits Belgie  trade marks is likely[2] ;

  [2] Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641

• the consideration requires taking account of all the surrounding circumstances and what is likely to happen if the frog prince trade mark and the General Biscuits Belgie trade marks are used in a normal way in respect of cakes and pastries[3]; and finally

  [3] Pianotist Co.’s Application (1906) 23 RPC 774 at 777

• that it is not necessary for a finding contrary to the application, that there is an actual probability of deception leading to a passing off or infringement action.  It is sufficient if the result of the registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the products bearing the frog prince trade mark and those bearing the General Biscuits Belgie trade marks, come from the same source.  It is enough if an ordinary person entertains a reasonable doubt[4].

  [4] Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592 at 595

Submissions from Mr Schulze rest on what he says is the minor role provided by the word prince as it is represented as a component of the frog prince trade mark.  He says that the word prince is but a very small part of that mark, and moreover, that it is supplementary to elements which in themselves, are notably impressive. Furthermore, he says, when read in context, prince links with the word pastries and forms a laudatory reference as per le frog, prince of pastries.  He says that the frog prince trade mark exhibits a humorous tilt which, all in all, makes it a very memorable trade mark.  The particularly memorable constituents, says Mr Schulze, are the amusing depiction of the frog, and the words le frog. The word prince, in his submissions, is not, however, a memorable constituents.  The total impact of the application mark, says Mr Schulze, is very different from the impact created by any one of the General Biscuits Belgie trade marks. Moreover, the role played by the word prince in the trade marks pineapple prince, choco prince and prince, is quite different from the role it plays in the frog prince trade mark. Altogether, Mr Schulze contends, the frog prince trade mark is not deceptively similar to any one of these; nor is it deceptively similar to the prince device trade mark. 

Analysis of the section 44 grounds and submissions

For the purposes of deciding deceptive similarity, as Ms Hill submits, it is required that I consider the recollection of an ordinary person and the degree to which such a person would be expected to recall the impression made by any one of General Biscuits Belgie’s trade marks ¾ prince, choco prince, pineapple prince and the prince device. This recollection, I think, would quite clearly not include any notion of either a frog prince, or a French frog.  In light, however, of the images engendered by the frog prince trade mark and of the widespread familiarity with the fabled association between frogs and princes, this mark, I think must be assumed to convey an overt reference to the story entitled The Frog Prince (generally ascribed, I understand, to the Brothers Grimm).  A corresponding reference is not, however, present in any one of the four General Biscuits Belgie trade marks.  Certainly, three of these marks contains the word prince, and the fourth comprises the image of a person who could well be considered a prince, but the word prince, or a prince standing alone, is insufficient to prompt an image of the Grimm brothers’ magical Frog Prince. I do not think that an encounter with any one of General Biscuits Belgie three word marks is likely to call up a recollection of a frog or of a frog prince.  In respect of the French idea engendered by the inclusion of the term Le Frog in the frog prince trade mark, it is clear that the expressions prince, choco prince and pineapple prince are ordinary (and colloquial) English words and terms.  As such they are quite devoid of any French allusion, and as trade marks they are not likely to generate any notion or recollection of a French association. Hence, despite the word prince being held in common, I find the ideas and impressions created by General Biscuits Belgie’s three word marks very different from the ideas and impressions generated by the frog prince trade mark.

Turning more particularly to the comparison of the two device marks, it is convenient to again reproduce them. The central notion of Mr Dongey’s trade mark is clearly the frog (and

a French one at that) while the sole element in the prince device trade mark is a noble male figure, wearing a crown. The frog prince is a quirky character shown in Napoleonic stance (a fact that is not clear in the image reproduced in these reasons), who rests his weight on a rolling pin, and wears a chef’s hat.  The character in the prince device is a chivalrous figure of a young man. He has one hand resting on his sword, and the other on his hip.  Though smiling he is, apparently, ready for serious action. This figure has none of the quirky characteristics exhibited by the frog prince trade mark.  Nor are there any words which establish royal status and verify the claim that the figure in this mark will be perceived as a prince.  Furthermore, the artwork of these two marks exhibits two quite dissimilar graphic styles.  That disparity lays further emphasis on the very different subject matter of the two marks.

The conclusion of these comparisons is that I do not think it likely that the ideas conveyed by the trade marks prince, choco prince and pineapple prince, or the recollections of those ideas, are likely to give rise to any mistaken idea that the frog prince trade mark indicates a connection with the proprietor of those marks.  I come to this point of view conscious of the fact that the goods on which the marks may be used, cakes and pastries, are bought with little forethought and perhaps on nothing more than a whim.  I base my conclusion on the finding that the impression generated by the frog prince trade mark is very different from the impressions generated by the opponent’s word marks and quite outweighs the fact that the word prince occurs both in the frog prince trade mark and in pineapple prince and choco prince. With regard to trade mark number 741259, the word prince solus, I note Ms Hill’s submissions concerning the fact that the whole of this mark is encompassed within the frog prince trade mark.  However, although, as a part of the frog prince trade mark, it maintains the status of a separate word, it nevertheless merges into the general idea associated with the frog. In my view, the value of that word prince is overwhelmed by the ideas generated by the frog association. In the context of the frog prince trade mark, I find that the word prince is not likely to convey the kind of meaning which would cause ordinary people to wonder whether it was the case that goods bearing this mark originated with the owner of the prince trade mark. 

In respect of 747287, the prince device mark, again I do not think the idea generated by this trade mark, and retained by ordinary persons, of ordinary intelligence, is likely to cause those persons to speculate whether cakes and pastry bearing the frog prince trade mark, come from the same trade source as goods labelled with the prince device. To start with, one mark depicts a frog and the other a man - probably a prince.  As discussed, I acknowledge a recognised bond between frogs and princes.  However, I believe it would need something rather stronger than that slender link to cause people to wonder about these two marks. Particularly is that so if, as here, the respective pictorial signs are executed in distinctly different styles. A perceived commonality of corporate dress might serve to unite the marks. Here the plainly different styles serve only to separate them. The words le frog and the resulting French connotation of Mr Dongey’s trade mark widen the difference further. All told, I conclude that these two marks are not deceptively similar.

In coming to these conclusions, I am taking into account the general surrounding circumstances in which purchases would take place. I am conscious of the fact that the goods, cakes and pastries, are brought without undue reflection.  And I note Ms Hill’s reference to earlier comparisons where I have laid emphasis on the fact that purchasers of goods in supermarkets (where cakes and pastries are clearly to be sold) rely on visual recognition.  However, even in those circumstances where the value of the purchase is low, where the purchaser relies on visual recognition, and where the exercise is quite likely to be conducted in a somewhat distracted state of mind, I do not think that a person of ordinary intelligence, with a general recollection of the prince device trade mark will be caused to wonder whether a commercial link exists between the owner of that mark and the origin of any cakes and pastries which bear the frog prince trade mark.  I find no reason to uphold the section 44 ground in respect of the opponent’s prince device trade mark.

Accordingly, I dismiss the section 44 ground of this opposition.

The section 27 ground

Ms Hill submits that the applicant has led no evidence showing any use or bona fide intention to use the subject trade mark and that use cannot be assumed from the fact of the application itself.   She gives no law to support this contention and it seems to me to be plainly at odds with the long standing directives that making of an application is to be regarded as an intention to use.

As per Aston v Harlee Manufacturing Co. (1960) 103 CLR 391 at 401

[T]he making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.  I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, in an opposition or on a motion to expunge, the burden must rest on the opponent or the person aggrieved, of proving the absence of intention.

General Biscuits Belgie has not discharged this onus and the ground must fail.

Section 41 ground

There is no support for this ground and I dismiss it out of hand.

Section 42 ground

Ms Hill submits that if I find the application trade mark deceptively similar to any of the General Biscuits Belgie trade mark, then I should find it contrary to law.   She gives no reason.  Had I found the application trade mark failed on the basis of deceptively similar (which I have not), there are nevertheless various provisions, which operate to allow such marks to proceed to registration.  A finding of deceptive similarity therefore does not require a finding that such marks are contrary to law.  Furthermore, in view of the fact that sections 10 and 44 deal specifically with the issue of deceptive similarity, I do not think that section 42, can be relied on unless it is the case that the deceptive similarity is in conflict with some law other than the Trade Marks Act 1995.

This ground of opposition also fails.

The section 43 ground

There is no evidence or submission to show that, should Mr Dongey use the frog prince trade mark on cakes or pastries, it is likely to give rise to any deception or confusion.  This ground is not supported and I see nothing in the mark itself to lead me to suppose that in use it will deceive or cause confusion.  This ground fails.

The section 58 ground

There is no support for this ground and again I dismiss it out of hand.

Decision

I have found that each of the opponent’s grounds has failed.  I therefore dismiss the opposition in full.  Subject to any appeal I direct that trade mark application number 752694 may proceed to registration.

Costs

The applicant is entitled to its costs.  In accordance with the provisions of regulation 21.13 an officer of the Trade Marks Office as appointed by the Registrar for that purpose, will tax, allow and certify these costs. 

x

Helen R. Hardie

Deputy Registrar

31 May 1999