General Nutrition Investment Company v Little Vienna Pty Ltd

[2009] ATMO 44

TRADE MARKS ACT 1995

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

Re:Opposition by General Nutrition Investment Company to registration of trade mark application 1191603(30) – LIVE WELL - filed in the name of Little Vienna Pty Ltd.

Delegate:	Iain Thompson
Representation:	Opponent: Susan Gatford of Counsel instructed by Callinans Applicant: Did not appear or put in written submissions
Decision:	s52 opposition: section 44 – identical trade marks – goods of the same description – registration refused – costs ordered against applicant. 2009 ATMO 44

Background

1. In this matter Little Vienna, Pty Ltd (‘the applicant’) of Hunter Street, Sydney, New South Wales has applied to register a trade mark, current details of which appear below:

Application No:           1191603
Priority Date:               7 August 2007

Goods:Class: 30  Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; ices; honey, treacle; salt, mustard; vinegar, sauces (condiments); spices; ice

Trade Mark:                LIVE WELL

(‘the opposed trade mark’)

1. Following examination of the application, it was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 6 December 2007.

2. On 6 March 2008, General Nutrition Investment Company, (‘the opponent’) of Pittsburg, Pennsylvania, United States of America, filed Notice of Opposition to the registration of the opposed trade mark.  The Notice lists most available grounds of opposition but at the hearing the opponent relied primarily on section 44, with additional submissions couched in terms of section 60 of the Trade Marks Act 1995 (‘the Act’).

3. The opponent served and filed its evidence in support of the opposition – the applicant did not serve and file evidence in answer and the matter came before me (as a delegate of the Registrar of Trade Marks) at a hearing in Canberra on 23 March 2009.  The opponent was represented by Susan Gatford of Counsel instructed by Callinans.  The applicant did not appear or put in submissions.

The evidence

1. The evidence comprises a statutory declaration in support by James ‘Jim’ Mills who is General Manager of Green Valley Nutrition Pty Ltd (‘Green Valley’) of Port Melbourne, Victoria.  Green Valley is the opponent's exclusive franchisee in Australia – Mr Mills worked for the opponent before working for Green Valley.

2. The opponent uses the trade mark LIVE WELL in Australia on health products, namely vitamins and minerals, herbs, weight loss products, and sports nutrition supplements (‘the relevant goods’).  This trade mark is registered in Australia as follows:

Reg No:                726976

Priority Date:         31 January 1997

Goods:Class: 5  Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, pharmaceutical and dietary food supplements, including nutritional food supplements containing vitamins, minerals and herbs in the form of capsules, tablets, powders and liquids

Trade Mark:          LIVE WELL

1. Mr Mills, for the opponent, provides figures which show that many millions of dollars worth of the relevant goods are sold under the trade mark LIVE WELL every year – figures since 2002 are provided and use since the year 2000 is claimed – the applicant has not challenged the opponent’s evidence at all.

2. The opponent’s goods sold under the trade mark have been promoted in magazines, trade journals, newspapers and pamphlets, point of sale material, radio advertising, internet, tele-marketing, direct mail and letter box drops of promotional material.

3. As I have noted, the opponent’s evidence is not disputed by evidence filed and served by the applicant or by submissions from the applicant.  Further discussion of the evidence beyond these few bald facts is unnecessary.

10.  Also, in these proceedings, the onus is on the opponent to establish its opposition, on the balance of probabilities.[i]

Section 44

11.  Section 44 relevantly provides:

Identical etc. trade marks

44.(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.
[ii]

12.  The priority date of the registration on which the opponent relies is earlier than that of the opposed application; thus, in terms of section 44, I am to consider whether:

Øthe trade marks are substantially identical or deceptively similar;

Øthe goods are similar goods including whether the goods are of the same description.[iii]

13.  The trade marks involved here are identical, both being the words LIVE WELL.

14.  It remains to be decided if some or all of the goods involved are the same goods or goods of the same description.

15.  As it is quite obvious to me that at least some of the goods of the parties are goods of the same description, I will only address this question.

16.  The expression ‘goods of the same description’ has had substantial judicial comment.  In McCormick & Company Inc v McCormick [2000] FCA 1335. Kenny J stated at paragraph 17:

Whether the relevant goods are of the same description is essentially a question of fact.

The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek's Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd's Application (1948) 65 RPC 369 ("Crowther's Application") at 372; In Re Frank George Whiting's Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 ("Southern Cross") at 606-607:

The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek's Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: ´In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application ..., Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are "of the same description"': In re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ´What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments' (1945) 70 CLR, at p 94.

On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd's Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description . See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd's Application (1990) 19 IPR 140 at 144. On the other hand, the expression " goods of the same description " is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725.

17.  The applicant’s goods are:

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; ices; honey, treacle; salt, mustard; vinegar, sauces (condiments); spices; ice.

18.  The opponent’s goods in respect of which its trade mark is registered are:

Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, pharmaceutical and dietary food supplements, including nutritional food supplements containing vitamins, minerals and herbs in the form of capsules, tablets, powders and liquids.

19.  The fact that the two sets of goods fall into two different classes of goods within the goods classification is not relevant to the question of whether they are of the same description: as per In re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372, above.

20.  I think that tea, coffee and cocoa within Class 30 are goods of the same description as their analogues (or other similar beverages) adapted for heath-promotion purposes within Class 5.  For instance, item D00132    DIETETIC BEVERAGES ADAPTED FOR MEDICAL PURPOSES, in Class 5 listed in the International (Nice) Classification of Goods and Services implicitly involves goods of this character.  A green tea, promoted and bought for its anti-oxidant properties is a case in point.

21.  Although Ms Gatford argued her case more generally, I consider that with such an obvious example of goods of the same description within the ambit of the two specifications, it is unnecessary to consider the question more broadly than I have.  The applicant has not made submission for an exclusion of goods from the specification and I am not going to try to guess (in the absence of evidence) what the applicant’s goods of interest actually are.

22.  As some of the goods are goods of the same description, and the trade marks are substantially identical and the trade mark on which the opponent relies has an earlier priority date that that of the opposed application, the ground is established.

23.  Section 60 – under these circumstances, discussion of the ground under section 60 of the Act is otiose.

Decision

24. Section 55 of the Act provides:

Decision

55. 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.

25.  I refuse to register application 119603.

Costs

26.  The opponent sought its costs should it be successful.  I order costs against the applicant the official scale.

Iain Thompson
Hearing Officer
Trade Marks Hearings
29 June 2009

[i] Pfizer Products v Karam (2006) 70 IPR 599 per Gyles J.

[ii]

[iii] Section 14 relevantly provides:
14  Definition of similar goods and similar services

(1)        For the purposes of this Act, goods are similar to other goods:
            (a)        if they are the same as the other goods; or
            (b)        if they are of the same description as that of the other goods.