General Mills, Inc v Maria & Nikitas Chritofis

[2012] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by General Mills, Inc to registration of trade mark application 1297840(32) - NATURE'S VALLEY - filed in the name of Maria and Nikitas Christofis.

Delegate:	Nicole Worth
Representation:	Opponent: Trevor Stevens of Davies Collison Cave, Patent & Trade Mark Attorneys Applicant: Michael Hall of Counsel, instructed by Jirsch Sutherland IP
Decision:	2012 ATMO 59 S52 opposition: Ground pursued under s 44 only - section 44 partially established – no award of costs.

Background

1. On 7 May 2009 Maria and Nikitas Christofis (‘the Applicants’) applied to register a trade mark, relevant details of which appear below:

   Trade Mark: NATURE’S VALLEY

   Goods: Class 32: Aerated beverages (non-alcoholic); alcohol free beverages; beverages consisting of a blend of fruit and vegetable juices; beverages containing not more than 1.15% (by volume) of alcohol; beverages made from fruit concentrates; coconut milk (beverages); edible essences for making beverages; electrolyte replacement beverages for general and sports purposes; essences for making beverages; extracts of vegetables (beverages); fruit beverages; fruit concentrates for making beverages; fruit juice beverages; fruit juice extracts (beverages or for making beverages); fruit juice extracts for use as a beverage; fruit juice nectar (beverages or for making beverages); fruit syrup (beverages or for making beverages); grain based non-alcoholic beverages; hop concentrates for use in the preparation of beverages; hop essences for use in the preparation of beverages; hop extracts for use in the preparation of beverages; isotonic beverages; kvass (non-alcoholic beverages); lemon juice (beverage); low alcohol beverages containing not more than 1.15% (by volume) of alcohol; malt based preparations for making beverages; malt-containing beverages (beers); malt-containing beverages (non-alcoholic, except beers); milk of almonds (beverage); mineral water (beverages); multi-vitamin fruit juice beverages (not for medical use); non-alcoholic barley based beverages; non-alcoholic beverages; non-alcoholic fruit juice beverages; non-alcoholic honey-based beverages; pastilles for effervescing beverages; powders for effervescing beverages; preparations for making beverages; seltzers (beverages); sherbets (beverages); sorbets (beverages); soya based beverages (not being dairy substitutes); spring water (beverages), other than for medical purposes; squashes (non-alcoholic beverages); syrup for making beverages; syrup powder for beverages; syrups for beverages; tisanes (non-medicated beverages and other than tea based); tomato juice (beverage); tonic water (non-medicated beverages); tropical fruit squash (beverages); vegetable extracts (beverages); vegetable juice concentrates (beverages); vegetable juices (beverages); water (beverage) other than for medical use; waters (beverages); whey beverages.

2. The application was examined and accepted for possible registration. Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 10 September 2009.

3. After obtaining an extension of time in which to do so, on 10 March 2010 General Mills, Inc. (‘the Opponent’) filed a Notice of Opposition nominating most of the grounds available under the Trade Marks Act 1995 (‘the Act’).

4. The parties served and filed evidence in due course. Five days prior to the hearing the Applicant served and filed its written submissions in which it indicated its intention to request an adjournment of the matter, in order to allow it to be heard at the same time as a future removal opposition hearing between the parties (wherein the Applicant in the current matter has applied for removal of one of the Opponent’s trade mark registrations). The Opponent objected to the request for adjournment.

5. I heard the matter in Sydney on 17 April 2012 as a delegate of the Registrar of Trade Marks. The Opponent was represented by Trevor Stevens, Partner at Davies Collison Cave Patent and Trade Mark Attorneys. The Applicant was represented by Michael Hall, of Counsel, instructed by Brian Shortt of Jirsch Sutherland IP. I heard submissions from both parties in respect of the adjournment issue. I also heard submissions in respect of the substantive matter in order to allow me to decide the matter in the event that I did not allow the adjournment.

   Request for adjournment

6. The Applicant contends that this is an opposition which ought to be adjourned and heard together with, or after, the determination of the Applicant’s application to remove registration no. 347155 (in the name of the Opponent) from the Register. In particular trade mark no. 347155 covers “all goods in class 30” and the Applicant contends that the evidence filed in the subject proceedings makes clear that the Opponent has only used the trade mark in respect of, at most, breakfast cereal, health food snacks and [muesli or cereal] bars. Therefore it is contended that the Opponent’s true trade mark rights are narrower in scope than they appear on the Register, which in turn impacts upon an assessment of fair notional use under section 44.

7. The Applicant emphasises an unnecessary duplication of expense should the opposition be determined now, given that an appeal to the Federal Court would most likely result in the removal action being determined before or concurrently with the opposition. Lastly the Applicant distinguishes this case from the delegate’s decision in Lidl Stiftung & Co KG. v Aquent LLC (‘Lidle’)[1], on the basis that its removal application is not merely a “tactical trick” or “ambush”, being filed well in advance of the opposition hearing.

   [1] [2010] ATMO 21 (16 March 2010).

8. Whilst I am mindful of the Applicant’s concerns, I do not agree with its conclusions. I believe the considerations in Lidl deal with all of the issues before me. It is true that in that decision the delegate considered the actions of the applicant, in filing an application to remove the opponent’s trade mark the day before the hearing, bore the hallmarks of an ambush. However the following passage from the delegate applies here:

   While there is an internal logic to the proposition that an injustice would arise from the removal for non-use of trade marks cited to prevent protection of the [applied for trade mark], the situation is rather more complex.

   As at the date of the hearing, and at the time of writing this decision, there is no indication of when the removal opposition hearing is likely to be. At best, with no extensions of time to perform the various tasks, the hearing is unlikely to be set down before November 2010.

   The ultimate removal for non-use of the opponent’s trade marks, while possible, is not certain. Unless and until the matter is determined by a delegate of the Registrar, it would be improper of me to speculate on the outcome of the proceedings.

   Furthermore, as [the Opponent’s representative] has pointed out, so long as the opponent’s trade marks remain on the Register, the opponent is entitled to exercise all of the rights that derive from registration[2]. To suspend such rights for an uncertain period of time to await an uncertain result would create the same sort of injustice referred to by Finkelstein J in Cadbury UK Ltd v Registrar of Trade Marks (supra).

   In Aon Risk Services Australia Ltd v Australian National University (supra), the parties and the subject matter were the same. Here, while the parties may be the same, the subject matter is different. The current proceedings relate to the eligibility of the holder’s international registration to be protected in Australia as at the priority date, 24 August 2007. The possible removal proceedings relate to the opponent’s use or otherwise of its trade marks in Australia, with possible extinguishment of the opponent’s trade mark rights to be effective only after such hearing.

   [2] I note that the Opponent’s representative pointed out that the holder was not supported by the Federal Court’s decision in E&J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27. In that case it was established that removal orders take effect as at the date of the order, not retrospectively. Thus, as at the relevant date in that case the opponent’s registrations were in full force and effect.

9. In the matter before me there is likewise no indication as to when the removal action is likely to be heard, or what the outcome of that action may be. It is only in its early evidence stages and it is unlikely that a hearing will be set down before December 2012, assuming no extensions of time are sought. That being the situation, I have decided not to adjourn these proceedings and will consider the substantive matter.

   Onus

10. The Opponent bears the onus of proof of establishing its ground of opposition on the balance of probabilities. See for example Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].

    Evidence

11. The evidence served and filed in respect of this matter is as follows:

Declarant	Position	Date	Exhibits
Evidence in support
Joshua J. Burke	Senior Counsel of Trade Marks, General Mills, Inc.	6/8/2010	JJB-1 to JJB-12
Evidence in answer
Maria Christofis	Co-Applicant	10/5/2011	MC-1 to MC-19
Evidence in reply
Kimberley Jade Evans (‘Evans 1’)	Solicitor, Davies Collison Cave	28/7/2011	KJE-1 to KJE-3
Kimberley Jade Evans (‘Evans 1’)	Solicitor, Davies Collison Cave	30/8/2011	KJE-4 to KJE-6
Further evidence
Maria Christofis	Co-Applicant	22/12/2011	MC-1 to MC-2

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.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   Note 3:  For priority date see section 12.

2. The Opponent’s evidence indicates that the basis for the ground of opposition under section 44 is its trade mark registrations numbered 347155, 832955 and 1237372. At the hearing only registration 347155 was pursued in detail. I will proceed on this basis also, and address the other registrations should the ground not be established with respect to registration 347155.

3. The relevant details of registration 347155 are:

   Trade Mark: NATURE VALLEY

   Goods: Class 30: All goods in this class

   Priority Date: 11 June 1980

4. Windeyer J, in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[3] said of substantial identity:

   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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges form the comparison.

   [3] (1963) 1B IPR 523, at 528.

5. In comparing the trade marks NATURE VALLEY and NATURE’S VALLEY, I consider that a ‘total impression of resemblance’ between the two trade marks emerges. The difference of the possessive ‘S’ present in the Applicant’s mark is a trifling variant, such that the Opponent’s trade mark is substantially identical to it. What remains to be determined, then, is whether the respective goods for the Opponent’s and Applicant’s trade marks are similar.

6. Section 14 of the Act states that goods are similar to other goods if they are the same as the other goods, or of the same description as that of the other goods. The expression ‘goods of the same description’ is a term of art describing the relationship between products such that they would be seen by purchasers as having the same trade origin if sold under deceptively similar marks[4]. In considering whether the goods of the parties are of the same description, I bear in mind the comments of Mason J regarding notional use in Berlei Hestia Industries Ltd v The Bali Company Inc[5]:

   [T]he 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.

   [4] As described in Shanahan’s Australian Law of Trade Marks and Passing Off Online 4^th Edition, 2008 at 35.505, which cites Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 26 IPR 246 (FC).

   [5] [1973] HCA 43; (1973) 129 CLR 353, at 362.

7. Notionally, then, it is assumed that the Opponent does or will use its trade mark in relation to any of those goods in respect of which it is registered. It is registered in respect of an extremely broad range of goods, being “all goods” in class 30[6]. The Opponent has provided a list of all of the goods which fall within class 30 under the Nice International Classification of Goods and Services. There are over 250 items in this list.

   [6] In accordance with regulation 4.4 of the Trade Marks Regulations 1995 this expression may no longer be used in an application for registration of a trade mark.

8. Similarly, the Applicant specifies over 50 items in its specification of goods in class 32. Although it appears, on the evidence before me, that neither party actually uses its respective trade mark upon anything near that breadth of goods (the Opponent’s use thus far relating to cereals and cereal bars and the Applicant’s relating to fruit juices), as stated previously the assessment under section 44 is based upon notional, rather than actual, use.

9. It would not be reasonable to compare each of the 250-plus items in International Class 30 to each of the 50-plus items in the Applicant’s specification. However the Opponent provides, in both its evidence in reply and its submissions to the hearing, ‘illustrative’ tables identifying goods in both classes that it contends are of the same description. I have reproduced them below, although combined into a single table. Bearing in mind that the onus is upon the Opponent to establish it case with respect of similar goods, I will focus most of my comments upon those goods highlighted by the Opponent.

Opponent’s goods under class 30

Applicant’s goods under class 32

Chocolate based beverages; coffee based beverages; iced tea; tea-based beverages

Non-alcoholic beverages

Beverages       - aerated
  - Alcohol free
  - Fruit beverages
  - Mineral Water

Cereal preparations

Malt-based beverages; malt-based preparations for making beverages; preparations for making beverages

Flavourings for beverages/vanilla flavouring

Preparations for making beverages

Tomato sauce

Tomato juice

Almond paste

Vegetable extracts

Soya bean paste

Soya based beverages

Flavourings for beverages

Syrups for making beverages

Malt for human consumption/malt extract for food

Malt based preparations for making beverages; malt-containing beverages

Golden syrup

Syrups for making beverages

Vegetable preparations for use as coffee substitutes

Vegetable extracts

1. The tests for establishing whether goods are of the same description are well established. In Jellinek’s Application[7] Romer J set out the following as considerations for whether goods are of the same description:

   ·    the nature of the goods,

   ·    the respective uses of the articles, and

   ·    the trade channels through which the goods are bought and sold.

   [7] (1946) 63 RPC 59.

2. These were expanded upon in Beck, Koller & Company’s Application[8] to include the nature and characteristics of the goods, the origin of the goods, the purpose of the goods, whether the goods are usually produced by one and the same manufacturer, whether the goods are distributed by the same wholesale houses, whether the goods are sold in the same shops, over the same counter, during the same season and to the same class of customer, and whether those engaged in the manufacture and distribution of the goods are regarded as belonging to the same trade.

   [8] (1947) 64 RPC 76.

3. I note further that it has been found that goods are not necessarily of the same description simply because they are both intended for human consumption[9].

   [9] Re Application by Chan Li Chai Medical Factory (HK) Ltd (1990) 19 IPR 140.

4. I would also preface the following considerations with the notion that whilst a class number is not always determinative of the nature of a good, where the defining factor of a good is that it be one of “all goods” within a class, it is necessarily limited to those falling within the scope of that numbered class.

5. In respect of the items ‘cereal preparations’ and ‘malt for human consumption/malt extract for food’ in class 30, I consider their nature to differ significantly to the corresponding identified goods in class 32. Generally cereal preparations in class 30 are intended as foodstuffs, in accordance with the Nice International Classification of Goods and Services ‘Explanatory Note’ to class 30. It is possible that ‘malt’ in class 30 refers to malt used for making beverages (other than the malt based preparations for making beverages which fall within class 32). However those beverages to which malt in class 30 is likely to be similar are more in the nature of malted milk beverages in class 29. Malt beverages in class 32 are most commonly in the form of beers. Without further information to the contrary, I do not consider these items to be similar, despite all being ‘cereal based’.

6. With regard to ‘soya bean paste’ in class 30 and ‘soya based beverages’ in class 32 (which are qualified in the Applicant’s specification as ‘not being dairy substitutes’), I am not entirely certain of the nature of the class 32 goods. I am not aware of any soya based beverages in the Australian market other than various soy milks (which are not within the scope of the Applicant’s specification). Whilst there is the possibility of a soya bean ‘juice’ or ‘extract’ (the extract being a beverage rather than an extract for food), I consider ‘soya bean paste’ is a decidedly different product. ‘Soya bean paste’ is generally in the form of salted and/or fermented soya beans mashed into a paste, such as for miso soup. As such I do not consider the goods to be of the same description.

7. With reference to the above comments, I consider that the following goods are sufficiently unalike in nature, use and/or the trade channels through which they are sold to support the opposition under section 44.

Opponent’s goods under class 30	Applicant’s goods under class 32
Cereal preparations	Malt-based beverages; malt-based preparations for making beverages; preparations for making beverages
Tomato sauce	Tomato juice
Almond paste	Vegetable extracts
Malt for human consumption/malt extract for food	Malt based preparations for making beverages; malt-containing beverages
Golden syrup	Syrups for making beverages
Vegetable preparations for use as coffee substitutes	Vegetable extracts*
Soya bean paste	Soya based beverages

1. *Note that these goods are qualified in the Applicant’s specification as beverages: “vegetable extracts (beverages)”. Although I do not consider the vegetable extracts being beverages in class 32 to be similar to those items highlighted by the Opponent, I do consider them to be similar to flavourings for beverages. Such flavourings are discussed below, and a similar rationale applies to the comparison with ‘vegetable extracts (beverages)’.

1. The remainder of the Opponent’s examples are:

Opponent’s goods under class 30

Applicant’s goods under class 32

Chocolate based beverages; coffee based beverages; iced tea; tea-based beverages

Non-alcoholic beverages

Beverages       - aerated
  - Alcohol free
  - Fruit beverages
  - Mineral Water

Flavourings for beverages/vanilla flavouring

Preparations for making beverages

Flavourings for beverages

Syrups for making beverages

1. I will dispense first with ‘flavourings for beverages’ and ‘vanilla flavouring’ (whilst vanilla flavouring is not a common flavour for non milk-based beverages, it is not an improbable one either). I consider they are similar goods to ‘preparations’ or ‘syrups’ for making beverages in class 32. Particularly in the case of syrups, the division of ‘syrups for making beverages’ and ‘flavourings for beverages’ into different classes appears somewhat artificial. Their nature and purpose are largely the same. It is also reasonable to assume that a manufacturer of syrups for beverages will produce flavourings for beverages in such other forms as they may belong in class 30 (for example a tea-based flavouring for the making of iced tea beverages). As such I consider them similar goods. Similarly given that ‘preparations for making beverages’ encompasses ‘syrups for making beverages’, I consider them also to be similar goods.

2. The remaining goods postulated by the Opponent as being similar can broadly be described as ‘soft drinks’, in that their common properties are that they are non alcoholic beverages for refreshment or enlivenment. I acknowledge that manufacturers in today’s market produce a wide range of such goods, and that such goods are usually sold within the same refrigerator cabinet or in the same aisle of shops and supermarkets (note chocolate, coffee and tea based beverages which come within the ambit of ‘all goods in class 30’ are those which are not predominantly milk based – those goods being in class 29[10]). At least some of them would be assumed by purchasers to originate from the same source, such as iced tea and tea flavoured fruit drinks, or chocolate-based beverages and chocolate flavoured colas. Moreover the goods are not expensive, and as suggested by Dixon and McTiernan JJ in Australian Woollen MillsLtd v F.S. Walton & Company Ltd[11] purchasers may not take a great deal of care in choosing the goods.

   [10] Milk, including flavoured milks, are commonly sold in separate cabinets or separated from other beverages when in the same refrigerator cabinet.

   [11] [1937] HCA 51; (1937) 58 CLR 641.

3. However I do not consider that all such goods will be perceived as originating from the same source. Fruit juices (as opposed to fruit beverages which may be made from artificial preparations) are not usually sold under the same trade marks or brands as chocolate, coffee or tea based beverages or iced teas. Neither are vegetable juices. Producers of fruit and vegetable juices often deliberately distance their products from other types of soft drinks on grounds that their juices are ‘natural’ whilst other types of soft drinks are ‘unnatural’, ‘sugary’ or ‘artifical’. They do not usually diversify the goods available under a juice label to include other products either, tending rather to specialise only in juices, such as the well known brands Berri, Just Juice and Daily Juice.

4. In addition to the examples in the tables above, the Opponent made submissions to the effect that the various cereals, cereal bars and snack foods made available under its trade mark would be likely to be considered similar goods by the purchasing public. In support of this contention web site extracts of the companies Boost Juice, Sanitarium and Nestle are provided[12] showing that those companies produce both snack foods and beverages. I do not consider the potential conclusions to be drawn from these examples sufficiently convincing.

   [12] Exhibit KJE-3 in Evans 1.

5. Boost Juice snack foods are generally sold through dedicated Boost Juice outlets rather than being distributed to retailers who then sell them along with the goods of other producers. Sanitarium’s beverages are milk based which, as pointed out previously, are generally sold separately from other soft drinks. Moreover these beverages are intended somewhat as meal replacement or breakfast cereal replacement drinks. Manufacturers of such goods do not generally diversify into fruit and vegetable juices, nor vice versa. Lastly Nestle is the ultimate holding company of a large number of brands. Of those products listed in the exhibit (KJE-3), only MILO is related to both cereals and preparation for beverages. The beverage preparation, however, is normally associated with a milk drink rather than those of the type belonging in class 32.

6. Both parties also served evidence regarding the stores in which their goods are/were purportedly available. However an assessment of fair notional use, in my estimation, extends also to the manner of sale of goods. It cannot be assessed simply in terms of the methods and places in which goods have been sold, but must rather include any trade channel which would be considered reasonable in commercial practice. I therefore do not accord this evidence much weight in my assessment under section 44.

7. In summary I find that the ground under section 44 is partially established. I have outlined below the goods in respect of which the application may proceed. This limitation to the Applicant’s goods addresses any potential conflict with the Opponent’s trade mark registration 1237372. I do not consider that the Opponent’s registration 832955 is a barrier to the subject Application.

   Decision

8. Section 55 of the Act relevantly provides:

   Decision

   Unless the proceedings are discontinued or dismissed, 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.

9. I find that the Opponent has partially met the onus upon it in terms of the ground of opposition under section 44. Whilst I have found that there is no conflict between the marks in respect of some of the Applicant’s goods, I do not intend to go through the specification of goods item by item, particularly as many of those items are separated by only fine distinctions.

10. Rather I believe it necessary to adopt a pragmatic approach. The Applicant’s evidence indicates that currently its goods of interest are fruit juices. Bearing in mind that the Applicant should not be limited to only those goods where there is no conflict with others in its specification, and that it would be unreasonable to discuss each of its 50 plus items and how they compare to the 250 plus items in class 30, I consider it reasonable that the Applicant limit its goods to those which I have discussed and found to be sufficiently different to “all goods in class 30”, being:

    Fruit juices, vegetable juices, malt based beverages, malt-based preparations for making beverages; mal-containing beverages; soya based beverages (not being dairy substitutes).

    I refuse the application in respect of the remaining goods.

11. I will allow the Applicant one month from the date of this decision to amend it goods to those identified above. In the event that the Applicant does not amend its goods within the time specified, I refuse the application in its entirety. If the Registrar has been served with a notice of appeal before that time the disposition of the registration should be in accordance with the Court’s order or direction.

    Costs

12. Each of the parties has requested costs. As neither party has been entirely successful I decline to make an order as to costs in favour of any party. I consider that the appropriate course on this occasion is that each party should be responsible for meeting its own costs.

    Nicole Worth
    Hearing Officer
    Trade Marks Hearings
    20 June 2012