George Weston Foods Limited v Golden Circle Limited

TRADE MARKS ACT 1995

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

Re:Opposition by George Weston Foods Limited to registration of trade mark application 1320897 (5, 29, 30, 32) – golden circle Logo - filed in the name of Golden Circle Limited

Delegate:	Michael Kirov
Representation:	Opponent: Celia Davies of Herbert Smith Freehills, assisted by Jack Rayson-Grant of the same firm Applicant: Siobhan Ryan of Counsel, instructed by Griffith Hack
Decision:	2013 ATMO 41 Section 52 opposition: ss 44, 59 and 60 pressed – trade marks not deceptively similar – use not likely to deceive or cause confusion – lack of intention to use not established – registration to proceed. Costs awarded against the Opponent.

Background

This is an opposition brought by George Weston Foods Limited (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Golden Circle Limited (“the Applicant”) for some of its claimed goods in Class 30:

Application Number: 1320897

Trade Mark: (“the Trade Mark”)

Priority Date: 16 September 2009 (“the Priority Date”)

Goods:Class 5: Food for babies and infants, including prepared meals and formulated food for babies and infants; food supplements for babies and infants; dietetic food and beverages in this class
Class 29: Meat, fish, seafood, poultry and game; seafood; preserved, dried, cooked, packaged or processed fruits; preserved, dried, cooked, packaged or processed vegetables including vegetable mixes; canned fruit and canned vegetables; frozen fruit and frozen vegetables; frozen potato products; stir fry vegetables; prepared foods in this class comprising fruits or vegetables; beans; baked beans; dairy products; chilled desserts; drinks made from dairy products; soups, broths and broth concentrates, consommes and soup preparations; sweet spreads, fruit sauces, jams, jellies, compotes, marmalade; savoury spreads, pickles, vegetable extract spreads; salads; fillings in this class; snack foods; prepared meals and constituents for meals; prepared meals including vegetable and carbohydrate mixes with or without sauces and/or flavourings; frozen prepared meals consisting of one or more of vegetables, meat, seafood with or without sauces and seasonings; prepared meals including dairy products or meat, poultry or seafood with or without sauces and/or flavourings; meat, chicken, seafood or vegetable stock; dips; microwaveable meals; tomato paste; edible oils and fats; eggs; nuts and nut products
Class 30: Rice, pasta, noodles and couscous; cereals and cereal preparations; meals made predominantly from rice, pasta or noodles; rice cakes; rice crackers; tea, coffee, cocoa, coffee essence, coffee extracts, mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee; non-medicated confectionery; pastries, cakes, biscuits, crackers, crispbread, bread, bread sticks; ices, ice cream, ice cream products, frozen confections, frozen yoghurt; desserts including chilled desserts, canned desserts, mousses, sorbets; bread; pastry; fillings in this class; sweet spreads, honey, treacle, maple syrup; savoury spreads, yeast extract spreads, mustards, relishes; snack foods; prepared meals and constituents for meals; prepared meals in a can; chocolate; sauces, ketchup, tomato sauce, soy sauce, chilli sauce, oyster sauce; simmer sauces; stir fry sauces; sauces in a pouch; pizza, pizza bases; sauces and toppings for pizzas; sauces for pasta and rice; salad dressing; mayonnaise; dips; spices; seasonings, marinades, condiments; dessert toppings; flavourings (other than essential oils) for adding to food and/or beverages; salsa; prepared entrees and meals; capers; cooking sauces; microwaveable meals; frozen prepared meals consisting predominantly of noodles or rice with or without sauces and seasoning
Class 32: Non-alcoholic beverages, fruit drinks and fruit juices, fruit drinks and beverages containing fruit juice or fruit juice flavouring, mineral aerated and non-aerated waters, soft drinks; syrups and other preparations for making beverages, sports drinks and energy drinks

The Opponent filed its Notice of Opposition (“the Notice”) on 21 April 2010, with it’s attorneys confirming by email on 8 March 2013 that the opposition was limited to the following Class 30 goods only (“the Opposed Goods”):
Pastries, cakes, fresh biscuits, bread, bread sticks; bread;[1] pastry; snack foods in the nature of bakery products
[1] “bread” is mentioned twice in the Class 30 specification.
The parties served and filed Evidence in Support, Evidence in Answer and Evidence in Reply as follows:

Evidence in Support

▪ Statutory Declaration by Peter McKinney made 19 October 2010, with Annexures 1 to 36
[Confidential Annexure 2 to McKinney is a full copy of a Statutory Declaration made by Brian Robert Simpson on 21 August 1985, the original of which formed the evidence in support in an earlier opposition[2] in 1987 (“Wyandra Golden Crumpets”).]

[2] Re Application by Hardings Manufactures Pty Ltd t/a Wyandra Industries (1987) 8 IPR 147.

▪ Statutory Declaration by Josephine Davey made 21 January 2011, with Annexures A and B

▪ Statutory Declaration by Catherine Jouguelet made 21 January 2011, with Annexures CJ1 to CJ5

Evidence in Answer
▪ Statutory Declaration by Anne Makrigiorgos made 12 April 2011, with Annexures AM-1 to AM-10
▪ Statutory Declaration by Michael Jones made 18 October 2011, with Annexures 1 to 14

Evidence in Reply
▪ Statutory Declaration by John Wardley made 10 May 2012, with Exhibits JW-1 to JW-4

I will refer to the parties’ evidence further, as necessary, in the “Discussion” section below. For the present I note that the Applicant is a long-established Australian company controlled since 2008 by HJ Heinz Company Australia Limited. Michael Jones has been a Director since then and he relates how the Applicant evolved from a grower cooperative with a pineapple cannery in Queensland in 1947. He says it first used the trade mark GOLDEN CIRCLE that year for canned pineapple and jam, with further products subsequently introduced under the brand including canned fruit salad, jelly, tropical fruit chutneys and fruit juice cordials between 1948 and 1950, juices between 1951 and 1953, and infant food in 2002. He says that, “Today the GOLDEN CIRCLE brand is used in respect of a great variety of foods and beverages including canned fruit such as pineapple, canned vegetables such as beetroot, corn and peas, fruit juices, vegetable juices, cordials, carbonated beverages, jams and sauces.” As at the Priority Date the Applicant owned around 25 registrations for trade marks containing or consisting of the words “GOLDEN CIRCLE” covering goods in Classes 5, 29, 30, 31 and 32 (five of these in Class 30, of which three cover the Opposed Goods).
Mr Jones says that from at least 1994 the Applicant has used a logo version of its GOLDEN CIRCLE trade mark on its products, with the original logo having been modified in or around 2005 and subsequently updated again in 2009 with the introduction of the Trade Mark, “chosen because it evoked even stronger connections to sunshine, childhood and goodness.”[3] The two earlier logos (as currently registered)[4] are shown below next to the Trade Mark which, although filed in the colours shown, was accepted for registration without colour limitation:

[3] Presumably also chosen to evoke “Australia” itself, given the mark features a stylised representation of the shape of the country.

[4] I note that the original logo (at left) has been registered since 1994 for, inter alia, the Opposed Goods.

Peter McKinney is the Australian Baking Operations Director of the Opponent, which he describes in his evidence as “a leading bakery company in Australia…well known for its iconic brands”. It wholly owns another long-established Australian company, Golden Crumpet Co A’sia (Extended) Pty Limited (“Golden Crumpet”), which has a history as a baking enterprise going back more than 60 years and which he characterizes today as “a modern food manufacturing company…still very well known for its bakery products”. As at the Priority Date Golden Crumpet was the owner of some 24 registrations covering various bakery products in Class 30 for trade marks containing or consisting of the word “golden”, the earliest of which dates from 1965 and covers “crumpets”. These include registration 355429 for the word “golden” solus (in plain capital letters), which covers “Crumpets, pikelets, pies, flapjacks, muffins and doughnuts” and which dates from 1981. The McKinney declaration indicates Golden Crumpet has continuously used and/or licensed the use of these trade marks throughout Australia over many decades for a range of bakery products including crumpets, pikelets and pancakes in particular and, to a somewhat lesser extent, or at most occasionally, for garlic bread, bread crumbs, English muffins, muffins (cakes), croissants, flap jacks, hot cakes, waffles, honey buns and “toast”.[5]
[5] “Toast” here refers to a form of Golden Crumpet’s crumpet product the same size and shape as a standard piece of sliced bread and which is sold in packaging which closely resembles that of a regular loaf of sliced bread in its overall dimensions and appearance.
Golden Crumpet too generally uses its GOLDEN brand in a logo form which has evolved over time and, since at least 1985, in similar colours to those of the Trade Mark as filed, although as at the Priority Date all of its trade mark filings had been in black and white, with no colour limitation. The two principal logos used since then are shown below (as registered together with the “chef mascot”, with the current logo, in use since around 2007, at centre). Also shown below is the trade mark subject of its recently filed application 1559823 (yet to be examined), in order to illustrate the colours used for both logos since 1985:[6]

[6] Application 1559823, which covers a wide range of goods in Class 30, was filed on 29 May 2013 with the Endorsement, “The trade mark consists of the combination of the colours RED and YELLOW used in connection with the goods, with or without accompanying text or graphics. An example of the colours as used in relation to the goods is shown in the representation attached to the application.”

At the heart of the present opposition is the claimed similarity of the Trade Mark to Golden Crumpet’s registered and/or common law trade marks which contain or consist of the element GOLDEN and the likely deception or confusion it is said would accordingly result if the Trade Mark were registered and used for the Opposed Goods. The Opponent is particularly concerned in this case, according to Mr McKinney, because the respective trade marks “use similar logo colours and a similar elliptical shape”. Additionally, the Opponent alleges that as at the Priority Date the Applicant did not intend to use the Trade Mark in relation to the Opposed Goods.
I heard the matter as a delegate of the Registrar of Trade Marks on 19 March 2013 in Melbourne. Celia Davies of Herbert Smith Freehills appeared for the Opponent, assisted by Jack Rayson-Grant of the same firm. Ms Davies’ oral submissions were supplemented by written submissions emailed to the Applicant’s representatives and me on 8 March. Siobhan Ryan of Counsel, instructed by Griffith Hack, appeared for the Applicant. Ms Ryan’s oral submissions were supplemented by written submissions emailed to Ms Davies and me on 14 March.

Grounds of Opposition, Onus and Standard of Proof

The Notice lists some fifteen specific grounds corresponding to various provisions of the Act. However the Opponent’s attorneys confirmed in their email of 8 March that the Opponent would only be pressing the grounds in the Notice based on sections 44, 59 and 60 of the Act. These grounds are discussed below. I treat the remaining grounds listed in the Notice as abandoned.
To succeed, the Opponent bears the onus of establishing at least one of the three grounds pressed at the hearing. I proceed on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[7]
[7] Following 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], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10], Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13] and, most recently, DC Comics v Cheqout Pty Limited [2013] FCA 478 (22 May 2013) per Bennett J at [13].
As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 595, the relevant date at which the rights of the parties are to be determined is the Priority Date.

Discussion

Section 44

The ground based on s 44 is indicated in the Notice as follows:
The Trade Mark is substantially identical or deceptively similar to a trade mark which is registered, or registration of which is pending, in respect of similar goods or closely related services. The [Priority Date] is not earlier than the priority date of the other trade mark: section 44(1)
Only s 44(1) of the Act is relevant to this ground and this is reproduced below:

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.

In her written submissions Ms Davies identifies the prior marks relied on as follows, confirming that all are registered and that in all cases it is claimed the Trade Mark is deceptively similar rather than substantially identical:
Golden Crumpet is the proprietor in Australia of several registered trade marks containing or comprising GOLDEN. … [The Trade Mark] is deceptively similar to one or more of these marks, as GOLDEN is the essential and key element of all of the marks. However, for the purposes of these submissions, we will focus on the closest of the marks as outlined below. A detailed schedule of these marks including images is provided in Schedule 2.
“Schedule 2”, headed “The closest of the GOLDEN family of marks”, was one of two schedules which accompanied Ms Davies’ emailed submissions of 8 March 2013 and contained details of 12 marks. At the hearing itself she relied on a slightly modified schedule (with the same heading) containing details of seven more registrations,[8] copies of which she gave to Ms Ryan and me and to which I refer as “Schedule 3”. Details of the registrations in question (“the GC Registrations”), all of which cover goods in Class 30 and have priority dates earlier than the Trade Mark, are set out below:
[8] And minus registration 705659 GOLDEN CROISSANTS Logo, which I understand had been included inadvertently on Schedule 2 since it was removed from the Register in 2007 following its non-renewal.

Reg No.	Trade Mark	Goods
1	355429	GOLDEN	Crumpets, pikelets, pies, flapjacks, muffins and doughnuts
2	389694	Crumpets (The provisions of Section 24(2) [Trade Marks Act 1955] applied)
3	308146	Crumpets, pikelets, pies, flapjacks, muffins and doughnuts Registration of this trade mark shall give no right to the exclusive use of the letter G
4	608495	Crumpets, pikelets, flapjacks, and muffins
5	680349	GOLDEN CRUMPET BREAKS	Crumpets, pikelets, pies, flapjacks, muffins and doughnuts (In use, the description CRUMPET appearing in the mark will be varied in accordance with the application of the mark to other items included in the specification of goods)
6	680350	Crumpets, pikelets, pies, flapjacks, muffins and doughnuts (In use, the description CRUMPET appearing in the mark will be varied in accordance with the application of the mark to other items included in the specification of goods)
7	827315	GOOD AS GOLDEN	Crumpets, pikelets, pies, flapjacks, muffins and donuts
8	896573	Flour, and flour products, preparations made from cereals, none being biscuits or confectionery; bread, bread rolls, buns, flat bread, Lebanese and pita bread, muffins, pastry, pizza bases, ciabatta and focaccia bread and rolls; baked goods in this class including cakes, crispbread; hot plate bakers' products including crumpets, waffles, pikelets, flapjacks, croissants, bagels, hot cakes, croutons, bread crumbs, seasonings in this class, stuffing mix, cake and pastry mixes; bread mixes; all the aforesaid excluding biscuits
9	896575	Flour, and flour products, preparations made from cereals, bread, bread rolls, buns, flat bread, Lebanese and pita bread, muffins, pastry, pizza bases, ciabatta and focaccia bread and rolls; baked goods in this class including biscuits, cakes, crispbread; hot plate bakers' products including crumpets, waffles, pikelets, flapjacks, croissants, bagels, hot cakes, croutons, bread crumbs, seasonings in this class, stuffing mix, cake and pastry mixes; bread mixes; confectionery
10	1092439	NOTHING'S AS GOOD AS GOLDEN	Muesli, muesli bars; flour, and flour products; preparations made from cereals; grain meal; baking improvers and conditioners; bread, bread rolls, buns, flat bread, Lebanese and pita bread, muffins, pastry, pizza bases, ciabatta and focaccia bread and rolls; donuts; baked goods in this class including biscuits, cakes, crispbread; hot plate bakers' products including crumpets, waffles, pikelets, flapjacks, croissants, bagels, hot cakes, croutons, bread crumbs; seasonings in this class; stuffing mix; cake and pastry mixes; bread mixes; confectionery; flour based premixes; custard mix; yeast
11	1094482	Muesli, muesli bars; flour, and flour products; preparations made from cereals; grain meal; bread, bread rolls, buns, flat bread, Lebanese and pita bread, muffins, pastry, pizza bases, ciabatta and focaccia bread and rolls; donuts; baked goods in this class including biscuits, cakes, crispbread; hot plate bakers' products including crumpets, waffles, pikelets, flapjacks, croissants, bagels, hot cakes, croutons, bread crumbs; seasonings in this class; stuffing mix; cake and pastry mixes; bread mixes; confectionery; flour based premixes; custard mix
12	1106551	Flour, and flour products, preparations made from cereals, none being biscuits or confectionery; bread, bread rolls, buns, flat bread, Lebanese and pita bread, muffins, pastry, pizza bases, ciabatta and focaccia bread and rolls; baked goods in this class including biscuits, cakes, crispbread; hot plate bakers' products including crumpets, waffles, pikelets, flapjacks, croissants, bagels, hot cakes, croutons, bread crumbs, seasonings in the class, stuffing mix, cake and pastry mixes; bread mixes; all the aforesaid excluding biscuits
13	702693	Waffles
14	704717	Hotcakes
15	600919	Bakery products including crumpets, flapjacks and pikelets
16	601000	GOLDEN FINGERS	Bakery products including crumpets, flapjacks and pikelets
17	614061	Crumpets, flapjacks and pikelets which are square in shape (The provisions of sub-section 26(2) [Trade Marks Act 1955] applied)
18	614062	GOLDEN SQUARES	Crumpets, flapjacks and pikelets which are square in shape (The provisions of sub-section 26(2) [Trade Marks Act 1955] applied)

Deceptive similarity

It was not disputed that the Opposed Goods are “similar” [9] to the goods covered by each of the GC Registrations. Accordingly the key issue the parties addressed was whether the Trade Mark is deceptively similar to any of the registered marks (“GC’s Marks”). In this regard the word “golden”, being common to both the Trade Mark and all of GC’s Marks[10], was the main focus and, indeed, Ms Davies submitted that:
Each [of GC’s Marks] is derived from, and is an extension of, the core element GOLDEN. GOLDEN is the distinctive common thread.
Thus, taking into account fair notional use of Golden Crumpet’s marks, it is clear that it has a claim to a family of marks all deriving from the core word GOLDEN. In our submission, the analysis under s 44 must be undertaken against the wide backdrop of Golden Crumpet’s family of GOLDEN marks. The existence of a family of GOLDEN marks significantly heightens the likelihood of confusion between the [Trade Mark] and any one or more of the family of GOLDEN marks…
[9] As defined in s 14(1) of the Act, namely the same goods and/or goods of the same description.
[10] Although difficult to make out, the word appears in the badge on the chef mascot’s hat in the marks subject of registrations 896573 and 1106551.
The relevance to deceptive similarity of a claim to a “family” of trade marks is generally traced to the UK Registry case of Beck Koller & Co Limited’s Application (1947) 64 RPC 76 (“Beck Koller”), where the Assistant-Comptroller said (at 83):
When an application for registration is before the registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors.
If, therefore, all the marks were owned by one proprietor, the registrar would presume that the latter was using a “series” of marks and judge the conflict between the applicant’s mark and each of the proprietor’s marks with this in mind.
In the present opposition, however, I do not believe I can give the “family” of trade marks factor significant weight. As is generally acknowledged,[11] it is in reality use of the family of marks rather than the existence of numerous registrations which may heighten the likelihood of deception or confusion. In Beck Koller, it is merely suggested that use might be “presumed” based on the state of the Register. Here the evidence indicates that several of GC’s Marks comprise or incorporate Golden Crumpet’s superceded logo, which apparently may not have been used since around 2007. Others of GC’s Marks too appear not to have been used to any great extent in recent years, or have at most enjoyed “seasonal” use for a limited range of goods.
[11] See for example Shanahan’s Australian Law of Trade Marks and Passing Off (4^th ed) at [30.1560].
Moreover, Golden Crumpet may own some 21 odd Class 30 registrations for “GOLDEN marks” in total[12] but, as is apparent from the Makrigiorgos declaration (discussed in more detail below), it is far from alone. Indeed, as at the Priority Date there were around 135 registered marks in Class 30 featuring the word “golden”, variously covering overlapping goods (including the Opposed Goods) and owned by many different parties. The Applicant itself owns five of these registrations, with its registration 640403 for an earlier iteration of its GOLDEN CIRCLE Logo dating from 1994 and covering all goods in the Class. Nor is this necessarily surprising in this case. In her submissions Ms Davies accepts that “[‘golden’ is] not the most distinctive of terms” and, as Ms Ryan highlighted, the Makrigiorgos declaration indicates this is particularly so as far as the Opposed Goods are concerned. Accordingly an “orthodox” analysis of deceptive similarity, assessing the Trade Mark in relation to each of GC’s Marks, appears appropriate here.
[12] That is, three more registrations than are actually included on Schedule 3’s list of “the closest of the GOLDEN family of marks”.
That said, the 18 registrations relied upon can be seen as falling within four broad categories. Firstly, there are the registrations which I have numbered from 1 to 10 on Schedule 3 above. Of these ten registrations I believe it is only necessary to consider in detail the first two, 355429 GOLDEN and 389694 Golden (stylized). On the face of it these two registrations represent the Opponent’s case as to deceptive similarity based solely on the presence of the element GOLDEN in the Trade Mark at its highest. If the Trade Mark were not deceptively similar to these two marks then I agree it would follow, as Ms Ryan submitted, that neither would it be deceptively similar to any of the marks subject of the registrations numbered 3 to 10 on the schedule. I will accordingly return shortly to a consideration of Ms Davies’ and Ms Ryan’s submissions in relation to registrations 355429 and 389694 in particular.
Secondly, Ms Davies submitted registrations 1094482 and 1106551 (numbered 11 and 12 on the schedule) were in a special category because, in addition to the word “Golden”, these marks contained Golden Crumpet’s current logo,[13] to which the stylised map of Australia prominently featured in the Trade Mark is said to be similar in shape. For obvious reasons I think it is sufficient only to consider registration 1094482 in any detail and in this regard I will also return to this submission below.
[13] Being the logo mentioned in paragraph 8, registered together with the chef mascot under registration 1094482 and appearing on the chef mascot’s hat in registration 1106551.
Thirdly, there are registrations 702693 GOLDEN TOASTA Waffles (stylized) and 704717 GOLDEN TOASTA Hot Cakes (stylized), numbered 13 and 14 on Schedule 3 above. Ms Davies submitted that the Trade Mark was deceptively similar to these marks “because of the common key element GOLDEN and the confusion between TOASTA in the registrations and the claim to bread and bakery products in the Opposed Application.” It is convenient here to confirm that I do not agree with this contention. In my view the presence of the additional element TOASTA would, if anything, lessen the likelihood of deception or confusion between the Trade Mark, (which does not contain this element nor anything at all similar), and the marks concerned. I accordingly consider registrations 702693 and 704717 effectively fall into the same category as the registrations numbered 3 to 10 on the schedule.
The fourth and final category includes those registrations numbered 15 to 18 on the schedule for the trade marks GOLDEN FINGERS Logo, GOLDEN FINGERS, GOLDEN SQUARES Logo and GOLDEN SQUARES. Ms Davies submitted that the Trade Mark was deceptively similar to these four marks not only because of the common element GOLDEN, but also because “they each include a second word which describes a shape; and that shape has relevance to the goods claimed”. She argued that, “It is clear that [the Trade Mark], in the context of the baked goods market, may be seen as merely a natural extension of this pattern” and that consumers may accordingly be confused or deceived as to trade source, particularly as “Golden Crumpet’s iconic crumpets are circular in shape”.
Again, it is convenient here to mention that I do not find this last submission persuasive. I accept the proposition may possibly have had some force had the Trade Mark featured the words “GOLDEN CIRCLES” rather than “GOLDEN CIRCLE”, but as it stands I do not believe consumers are likely to make any relevant connection between the Trade Mark in use for the Opposed Goods and the actual shape of those goods. Rather, I think Ms Ryan is correct that, (to the extent they would think about it at all), consumers are likely merely to perceive some interplay between the words “GOLDEN CIRCLE” and the rising sun device also appearing in the Trade Mark. Here too, accordingly, I consider these four registrations effectively fall into the same category as the registrations I have numbered 3 to 10 on the schedule.
I turn now to the question of whether the Trade Mark is deceptively similar to the GOLDEN or GOLDEN (stylized) marks subject of registrations 355429 and 389694.
As both Ms Davies and Ms Ryan noted, s 10 of the Act provides that “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”. Both advocates also referred to the affirmation by French J (as he then was) in Registrar of Trade Marks v Woolworths Ltd[14] (“Woolworths”) of the relevant considerations enunciated by Kitto J in Southern Cross:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, 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 The Bali Company Inc (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.”
[14] (1999) 45 IPR 411 at [50].
Both advocates further noted that in order to assess deceptive similarity trade marks should not be compared side by side. Rather, to paraphrase Windeyer J at first instance in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd,[15] I should attempt to assess the impression based on recollection of each of GC’s Marks that persons of ordinary intelligence and memory would have and compare this with the impression potential purchasers would have on encountering the Opposed Goods advertised or sold under the Trade Mark.

Ms Davies’ submissions on deceptive similarity

[15] (1961-1963) 109 CLR 407 at 415; (1961) 1B IPR 523 at 529. Windeyer J’s judgment was overturned on appeal to the full High Court but not on this point.

With that as background, Ms Davies’ principal submissions were that:

The relevant purchaser of the Opposed Goods “is a person of ordinary intelligence with an ordinary capacity to recall trade marks.” The goods being unsophisticated, relatively cheap and “frequently purchased ‘on the hop’ without profound consideration”, such purchasers are not “likely to exercise particular care and attention to detail when inspecting the trade marks on the relevant goods.”
“As the Opposed Goods are more often purchased by self selection rather than by a verbal over-the-counter request, ‘visual similarity, particularly at the beginning of a word, is more significant than actual pronunciation’.” (quoting Kellogg Company v Société des Produits Nestlé SA [2004] ATMO 45 at [39]).
“…the visual likeness of GOLDEN to GOLDEN CIRCLE is readily apparent. GOLDEN is the essential element of both. The GOLDEN word mark is wholly contained within and, relevantly, is at the beginning of GOLDEN CIRCLE.”
…“the word GOLDEN is either the whole or the essential feature of the trade marks under comparison. Although not the most distinctive of terms, the word GOLDEN nonetheless functions quite adequately as a trade mark and is well adapted to distinguish in relation to baked goods in terms of the test in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511.” (paraphrasing the words of the Hearing Officer in Next Retail Limited v Marlin Australia Pty Ltd [2010] ATMO 117 at [12] in relation to the word “NEXT” for “clothing, footwear, headgear” in Class 25).
CIRCLE “fails to turn GOLDEN into a phrase of a significantly different character.”
To the extent aural similarities are relevant, “The first word of each trade mark is GOLDEN. This means that if the full mark is not pronounced, it will be the ‘CIRCLE’ portion that is omitted, leaving simply Golden Crumpet’s mark, GOLDEN.”

Seeking to distinguish this case from Flight Centre Pty Ltd v World Flight Centre Pty Ltd [2003] ATMO 60, (“where the opponent was known nationwide as FLIGHT CENTRE ‘plain and simple’”), Ms Davies also argued that “Golden Crumpet has varied its trade marks with the addition of devices and other words and so consumers are accustomed to seeing the GOLDEN marks in a variety of ways” and thus “may consider that GOLDEN CIRCLE branded bakery products are an expansion of the GOLDEN family and GOLDEN brand.” I would mention at this point that while this may in principle be relevant to s 60, I do not believe it is a matter I might take into account in this case in relation to s 44. I have already indicated why I do not believe it appropriate to give significant weight to there being a “family” of GC’s Marks. More generally, s 44 is essentially concerned with notional use. The issue is whether deception or confusion is likely if each of the trade marks under comparison is used in “a normal and fair manner”[16] for the relevant goods. Indeed, the parties’ marks need not have been used at all for s 44 to apply.
[16] These being the often quoted words of Evershed J (as he then was) in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101.
To some extent I have similar reservations in relation to Ms Davies’ submission specific to registrations 1094482 and 1106551,[17] which would perhaps be more appropriate in the context of s 60. Ms Davies said these marks contained, (in addition to the chef mascot), “an elliptical shape” which, with the addition of the word “Golden”, formed Golden Crumpet’s current logo (introduced in around 2007). However she went further. She emphasized that the logo was used in red and yellow colouring and indeed noted that since 1985 Golden Crumpet “has consistently used red and yellow colouring in relation to its products branded with its GOLDEN marks.” Ms Davies then went on also to characterise the stylised map of Australia in the Trade Mark as “an elliptical shape” and noted that the Trade Mark as filed was rendered in red and yellow colouring. Citing the opinions of the Opponent’s Baking Operations Director, Peter McKinney and of Josephine Davey, a marketing professional who has some 25 years experience in the Australian food industry, Ms Davies submitted that as far as the bakery segment of the market was concerned:
In addition to all the other points of similarity, the fact that the [Trade Mark] also adopts a similarly shaped device and the same colour scheme heightens the probability of confusion or deception as between the marks.
[17] Numbered 11 and 12 on the schedule.
I think it is appropriate to emphasise that neither the Trade Mark nor the marks subject of registrations 1094482 or 1106551 bears an endorsement limiting any part of the marks concerned to a particular colour or colours. I do accept that the Trade Mark having been filed in particular colours does suggest that these are the colours the Applicant intends to use. Indeed, the Applicant’s evidence showing use appears to confirm this. Strictly speaking as far as s 44 is concerned, nevertheless, I note that the possibility of a coincidence in the colours the parties might actually use, (which in a notional sense would be use of the respective marks in a normal and fair manner), is but one factor that needs to be considered when assessing deceptive similarity in any event, even, or perhaps particularly, where one or both marks under comparison has not been used at all.[18]

Ms Ryan’s submissions on deceptive similarity

[18] See Sym Choon & Co Ltd v Gordon Choons Nuts Ltd (1949) 80 CLR 65, per Latham CJ at 71 to 72.

Turning now to Ms Ryan, as regards comparison of the Trade Mark and GC’s Marks as wholes her principal submissions in response were that:

Visually the Trade Mark was significantly different, being “a logo comprising the words GOLDEN CIRCLE in lower-case and set in a stylized map of Australia, against the rising sun [which] emphasizes the word ‘circle’.” Moreover the word “circle” is not common to any of the registered marks;
Conceptually “the ‘circle’ element is informed by the disc-like rising sun and the map of Australia, which is [as the Jones declaration put it] suggestive of sunshine, childhood and goodness. By contrast, [GC’s Marks] have none of these connotations. They are completely bound to the word ‘golden’ (which is descriptive of bakery goods) and the chef mascot, where it appears. These concepts have nothing whatsoever to do with that conveyed by the [Trade Mark].”
Aurally “the term ‘Golden Circle’ is strikingly phonetically different to each of [GC’s Marks]”; and
The above mentioned differences are relevant to how the respective marks would be recollected and are “sufficient…to enable distinction, even allowing for imperfect recollection.”

As regards the common element GOLDEN in particular, Ms Ryan pointed to the Makrigiorgos declaration and submitted that “less weight should be given to the coincidence”, as she put it, because the word was “descriptive and common to the bakery trade”. I mention that Ms Makrigiorgos, who is a Principal with the Applicant’s attorneys, annexes to her declaration a number of search results centered on the word “golden”. These include Trade Marks Register searches, Google® searches, Company and Business Name Register searches and telephone directory searches, as well as definitions of the word from the Macquarie Dictionary Online and examples of recipes obtained from the internet where the word is obviously used descriptively. These various search results do on the face of it support Ms Ryan’s submission.
Additionally, (and while at first blush arguably a “double edged sword”), Ms Ryan referred to my 2012 decision also involving GC’s Marks (“Golden Food Kitchen”).[19] There I confirmed that I was in general agreement with Chief Assistant Registrar Farquhar’s conclusion in Wyandra Golden Crumpets concerning the distinctiveness of the word “golden” for Golden Crumpet’s bakery goods. Ms Farquhar had said at IPR 154:
I think that as well as the device component of [Golden Crumpet’s] marks, the word “golden”, forming as it does a prominent feature, would be “carried away and retained” and, even more importantly, would be “the source of some name or verbal description by which buyers will express their desire to have the goods”. It is natural for the word component of a composite device/word mark to be used by customers when ordering the product. The simple and obvious name by which goods on which these marks appear would be known would, in my opinion, be the word “golden”, rather than, for example, “the chef/crumpet device mark”. When the applicant’s mark is compared to [Golden Crumpet’s] with this in mind, I think it must be concluded that they are deceptively similar.
In coming to this conclusion I do not overlook Mr Gummow’s submissions on “golden” being common to the trade in goods of this type. It is true that a large number of marks which include this word have been or are currently entered on the register. Many of these registrations have been subject to a disclaimer in respect of the word. However, it is not enough to show that an element in a mark is commonly used by other traders in similar goods, in order to disregard that element entirely when assessing possible conflict between marks: Broadhead's Application (1950) 67 RPC 209. Each case must be judged on its own merits and circumstances, and in the present case I am satisfied that the word “golden”, in the context of the marks in suit, is not so devoid of any capacity to distinguish, or alternatively, is so apt for normal description of the goods on which it appears, that it can be completely discounted for the purposes of determining deceptive similarity. If the word in question was a description such as “wholemeal” or “fresh”, the situation, and the conclusion reached, would be quite different. Such terms cannot perform any of the necessary functions of a trade mark in establishing a connection in the course of trade between the goods and their manufacturer. It seems to me that “golden”, although bearing a considerable degree of descriptive reference to bakery goods, and being commonly used by traders in their marks and everyday reference to those goods, nevertheless has some spark of inherent adaptedness to distinguish which puts it on the other side of the boundary from those descriptions which can never serve to distinguish one trader’s goods from another’s.
[19] Golden Crumpet Co A’asia (Extended) Pty Limited v David Innes Pty Ltd [2012] ATMO 38 at [39].

Accepting that Golden Crumpet could point to its registrations 355429 and 389694 in particular as illustrating its (registered) rights in the word “golden” per se for certain bakery products, Ms Ryan nevertheless emphasised that this did not entitle it to a monopoly in trade marks which happen to include the word. She referred to a number of cases where “coincidental” overlap, as it were, between trade marks had not led to a finding of deceptive similarity. Amongst these, those where the element in common had at least a tinge of descriptiveness in relation to the relevant goods or services, such as Conde Nast Publications Pty Limited v Taylor (1998) 41 IPR 505 (VOGUE and EUROVOGUE & Device for clothing) and Trust Company Ltd v WW Australia Pty Ltd (2010) 85 IPR 452 (WATER WORLD and WHITEWATER WORLD for amusement park services), may be most apt to the present comparison. Ms Ryan’s submission was that:
In each of these cases the tribunal saw past the common element and searched for the “something more”[20] which, as in this case, was lacking. On the contrary, in this case, the commonality of the word “golden” is immediately negated by the adjective/noun conjunction “GOLDEN CIRCLE” and the re-inforcing effect of the rising sun and map of Australia device; thus making the new mark conceptually distinct, as well as visually and aurally different.
[20] Being a reference to the words used by the Hearing Officer in Pom Wonderful LLC v Trialia Foods Australia Pty Limited [2009] ATMO 93 at [38].
Ms Ryan also submitted that there were parallels between this case and the majority decision of the Full Federal Court in Woolworths. There French and Tamberlin JJ (Branson J dissenting) expressly approved the taking of reputation into account when assessing deceptive similarity under s 44 in circumstances “where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken” since “it would be artificial to separate out the physical features of the mark from the viewer’s perception of them”.[21] Applying this principle in the case before them, French and Tamberlin JJ affirmed the finding of the trial judge[22] that, in view of the “notorious familiarity” amongst Australian consumers of the name “Woolworths”, the trade mark was not deceptively similar to the trade mark METRO.
[21] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, per French J at [61].
[22] Wilcox J in Woolworths Ltd v Registrar of Trade Marks (1998) 42 IPR 615.
Ms Ryan argued that although the Applicant’s “logos have differed slightly over the years…the essential feature, being [its] corporate name and house mark, GOLDEN CIRCLE, has remained constant.” She continued:
The notoriety of this element is in evidence in [the Jones declaration] where the sales figures for food and beverages under the GOLDEN CIRCLE trade mark in the 10 years prior to the [Priority Date] run to hundreds of millions of dollars per annum…
Consistently in the seven years prior to the Priority Date GOLDEN CIRCLE ranked in the upper 50% of the Top 100 grocery brands in Australia. In 2009, it ranked 11…[23] This is a matter that the Registrar is quite able to take judicial notice of.
[23] I note that these claims are based on rankings compiled by market research company AC Nielsen, with Annexures to the Jones declaration showing the relevant reports.
As to the coincidence of red and yellow colours highlighted by Ms Davies, Ms Ryan addressed this issue in her response on the s 60 ground of opposition, submitting:
…a glance at the general market place materials exhibited in both parties’ evidence will show that the colours red and yellow and combinations thereof are widely used on packaging and point of sale materials in the grocery sector.

Conclusion on deceptive similarity

I agree on balance with Ms Ryan’s submissions and I have concluded that the Trade Mark is not deceptively similar to any of GC’s Marks as far as the Opposed Goods are concerned. I find it difficult to accept Ms Davies’ contention that, for bakery products in particular, the element CIRCLE “fails to turn GOLDEN into a phrase of a significantly different character” from the word “golden” per se. On the contrary, had the opposed trade mark consisted of the words “golden circle” alone, I tend to think on the evidence before me that this would most likely suffice to distinguish it from each of GC’s Marks.[24] In this regard the present opposition may be distinguished from my finding in Golden Food Kitchen, where I considered there was a tangible danger of deception or confusion occurring because the words “food kitchen” were essentially descriptive in relation to the relevant goods.
[24] There is of course no evidence of actual confusion before me in the present matter and I hesitate to express too firm an opinion because I am aware that the Opponent is also currently opposing an application for the GOLDEN CIRCLE (word) mark.
Moreover in this case the Trade Mark does not merely consist of words alone, but also prominently features an image of the sun rising from behind a quite distinctively stylized map of Australia. While at one level one might roughly classify the dominant shapes of the mark subject of registration 1094482 (which features Golden Crumpet’s current logo) and of the Trade Mark as “elliptical”, in reality neither is particularly elliptical at all and I do not think this would be the way consumers would be likely to recall either mark. What is more, quite apart from the difference between the words “Golden” and “golden circle” discussed above, Golden Crumpet’s mark prominently features its chef mascot as a further distinguishing element.
As regards Ms Davies’ submission concerning the combined effect of the “elliptical” shapes and the parties’ actual use of similar colouring, this is, as mentioned, a matter of particular relevance to the Opponent’s s 60 ground. I nevertheless confirm here that I agree with Ms Ryan that the many supermarket advertising materials included in both parties’ evidence do indicate that this colour combination is by no means limited to the parties alone, but is employed by a significant number of other traders in the grocery market. Against this background, accordingly, I do not on balance believe that too much weight should be placed on the coincidence in this instance.
Finally, I think this is a case where, as Ms Ryan submitted, the decision in Woolworths might on the face of it be relevant to assessing whether confusion or deception was likely. Indeed, as she highlighted in her opening submissions, this opposition “concerns the competing interests of two long established businesses, both of which have used marks which contain the element GOLDEN in relation to foodstuffs in Australia for over 60 years” (my emphasis). Based on the parties’ evidence and based on my own knowledge as a consumer of the parties’ goods bearing the GOLDEN and GOLDEN CIRCLE trade marks over more than 30 years, I am satisfied both brands would be very well known. To the extent, then, that it is appropriate to take judicial notice, as it were, of this fact, and that “it would be artificial to separate out the physical features of the mark[s] from the viewer’s perception of them”, I think Ms Ryan’s point is well made.
In summary, the Opponent’s arguments have not satisfied me that the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the Opposed Goods come from the Applicant merely because the Trade Mark contains the word “golden”, or for any of the additional reasons put forward in its submissions. To establish deceptive similarity the Opponent must show there is a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient. My conclusion is thus that the Trade Mark is not deceptively similar to any of GC’s Marks and the Opponent has accordingly not established its ground of opposition under s 44.

Section 60

The ground based on s 60 is indicated in the Notice as follows:
Another trade mark has, before the [Priority Date], acquired a reputation in Australia; and because of that reputation, use of the Trade Mark in relation to [the Opposed Goods] would be likely to deceive or cause confusion: section 60
Section 60 of the Act itself is reproduced below:

Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.

Ms Davies did not single out one particular trade mark on which the s 60 ground was based, but instead relied on the “family” of marks containing or comprising the word “Golden”[25] that Golden Crumpet uses for its bakery goods. In this regard Mr McKinney says (in 2010) that, “The trade marks most commonly used on Golden Crumpet’s products today include the trade marks covered by registration nos. 355429, 680349, 1092439, 1094482 & 1106551 (corresponding to the registrations numbered 1, 5, 10, 11 and 12 on Schedule 3 above). Based on the evidence I believe one might also reasonably include the marks subject of registrations 308146, 608495, 680350 and 896575, (numbered 3, 4, 6 and 9 on the schedule), all of which feature the now superceded GOLDEN Logo used between around 1985 and 2007. I refer to all of these trade marks collectively hereafter as “the GOLDEN Marks”. As indicated by the McKinney declaration, the principal goods for which the GOLDEN Marks have been consistently used over the years, (and for which I believe the marks would be mainly known), are crumpets, pikelets and pancakes.[26]
[25] Generally rendered in (cursive) lower case with an initial capital “G” according to the evidence.
[26] I understand “pancakes” in this context refers to a product essentially identical to Golden Crumpet’s pikelet offering but larger in diameter.
As with s 44, what needs to be considered in the case of s 60 is the notional use the Applicant might make of the Trade Mark in relation to the Opposed Goods. The issue is whether such use would be likely to deceive or cause confusion in light of the reputation of the GOLDEN Marks as at the Priority Date.
I accept that as at the Priority Date the GOLDEN Marks undoubtedly had the kind of reputation contemplated by s 60 in relation to its particular bakery goods of interest. In this regard I note that the evidence in these proceedings going to reputation is essentially the same as that before me in the 2012 Golden Food Kitchen opposition and concerning which, as Ms Davies noted, I said:
… the McKinney declaration attests to continuous use of relevant trade marks throughout Australia from 1951 and the advertising and sales figures for the various bakery items produced over the years are on the face of it very substantial. Moreover, the evidence indicates the advertising and promotion of bakery goods bearing the GOLDEN Marks has been extensive and diverse, embracing regular inclusion in printed weekly marketing materials produced by the major supermarket chains and also significant radio and television advertising.
Indeed, there is evidence before me that the GOLDEN Marks have enjoyed a significant reputation in Australia since at least 1980, as indicated by a Statutory Declaration made by Brian Robert Simpson on 21 August 1985 and included as Confidential Annexure 2 to the McKinney declaration. Mr Simpson was the Opponent’s General Manager at the time and his declaration was originally lodged as the Opponent’s principal Evidence in Support of its (successful) opposition to the trade mark WYANDRA GOLDEN CRUMPETS. The declaration includes, inter alia, sales and advertising figures for the Opponent’s relevant bakery items for the years 1965 to 1983. In her decision in that earlier opposition, Chief Assistant Registrar Farquhar concluded (at IPR 155):
The evidence shows, I think beyond question, that the opponent has established a very considerable reputation in its marks by virtue of long and very extensive use. In forming this opinion, I have found the opponent's supporting declarations from ordinary members of the public of only minor assistance. I consider Mr Gummow's criticisms of them to be justified in the main. However, the 30-odd years of use and the very large volume of sales must be accepted as suggesting, at the least, that there is a significant level of knowledge of the marks among that section of the public concerned with consumption of the goods in question. This knowledge would be sufficient, I think, to conclude that the result of use of the applicant's mark will be that “a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source”: Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592. The likelihood of this result is increased by the circumstances of the trade in the goods in question.
The reputation of the GOLDEN Marks notwithstanding, I am not satisfied in this case that use of the Trade Mark for the Opposed Goods was likely to deceive or cause confusion amongst a substantial number of consumers as at the Priority Date. Indeed, as mentioned earlier in connection with the relevance of the decision in Woolworths to the Opponent’s s 44 ground, I believe the extensive and longstanding reputation of not only the Golden Marks, but also that of the Applicant’s GOLDEN CIRCLE “house mark” (albeit in another segment of the grocery market), would on balance tend in this instance to lessen the likelihood of significant confusion or deception.
I will not repeat the matters I have discussed already in connection with the s 44 ground, save to mention that the issue which to my mind might in principle be particularly significant to the Opponent’s s 60 ground is the use (or possible use by the Applicant in the case of the Opposed Goods) of similar colours for their respective logo marks. However even taking into account this issue, I believe the various other differences between the Trade Mark and, in particular, Golden Crumpet’s current logo mark obviate the risk of genuine deception or confusion.
In this regard I have already mentioned that I agree with Ms Ryan as to the different concepts conveyed by the elements GOLDEN and GOLDEN CIRCLE respectively as far as the Opposed Goods are concerned. Added to this are the different shapes in fact forming the red background to the respective logos, with the Trade Mark also incorporating a rising sun device and Golden Crumpet’s logo almost invariably used (both before and after introduction of the current logo in 2007) in close proximity to its chef mascot. Significant, too, is that the evidence shows the element GOLDEN is consistently used by Golden Crumpet in a particular cursive script with an initial capital “G” (as in the mark subject of registration 389694) and virtually always in yellow. By contrast, the words in the Trade Mark are rendered entirely in lower case in unlinked letters. Moreover, to the extent that the colours of the Trade Mark as filed represent the actual colours in which the mark is intended to be used, (as appears to be confirmed by the evidence), and indicate the colours in which it would in principle be used in future for the Opposed Goods, I note the words “golden circle” are rendered in white rather than yellow.
To conclude, given the various differences between the GOLDEN Marks and the Trade Mark when considered as wholes and the fact that it is not necessarily uncommon for traders in relevant goods to employ a red and yellow colour scheme for their packaging and/or trade marks, I am not satisfied use of the Trade Mark for the Opposed Goods would be likely to deceive, or cause confusion amongst, a significant number of consumers. The Opponent has accordingly not established its ground of opposition under s 60.

Section 59

The ground based on s 59 is indicated in the Notice as follows:
The Applicant does not intend to use or authorise the use of the Trade Mark or assign the Trade Mark to a body corporate for use by the body corporate in Australia, for [the Opposed Goods]: section 59
Section 59 of the Act itself is reproduced below:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.

It was not in dispute that the requisite intention must have existed as at the Priority Date.[27] Ms Davies submitted that lack of intention might then be inferred because:
[27] As confirmed by the Full Federal Court (Keane CJ, Stone and Jagot JJ) in Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 (“Food Channel”). See also Suyen Corporation v Americana International Limited (2010) 87 IPR 262 (“Suyen”) per Dodds-Streeton J.

the Applicant “was not in 2009…or to this day, in the bakery goods market;”
the Applicant “was acquired by Heinz Australia in 2008 [which] also does not produce bread or bakery products;”
the Applicant “has not stated that it has an intention to use [the Trade Mark] in relation to bakery goods and has not submitted any evidence of such use” and “there is no indication that [it] has or had any intention to move into the bakery goods market;”
“the bakery goods market is very specialized and has high practical barriers to entry”, it “requires an entirely different manufacturing and distribution network to that required for the long life goods that [the Applicant] currently sell[s]” and, “It is simply not feasible for [the Applicant] to make and sell bakery goods without a significant change to its operating practices;” and
Four years have passed since the Priority Date and the Applicant has not expanded into the bakery goods market. Accordingly whatever intention it may once have had, “it must now be concluded that such an intention was insufficiently definite or was speculative given the passage of time”.

Ms Davies argued that the fact that the Applicant had not addressed the issue in its evidence despite s 59 having been included in the Notice was significant in this case because the Opponent had separately filed an application for partial removal of the Trade Mark for non-use under s 92(4)(a) of the Act. In summary, she submitted, the Opponent had made out a prima facie case on the balance of probabilities that the Applicant did not have the requisite intention as at the Priority Date, or to the extent any such intention might be inferred, that it was merely speculative and indefinite.
Referring to the decision of Fullagar J in Aston v Harlee Manufacturing Co,[28] Ms Ryan countered by emphasizing that an applicant’s intention to use is presumed upon the filing of its application and that, in the absence of relevant admissions, an opponent needs to file evidence displacing that presumption. She continued:
The Opponent’s submissions make unsupported allegations about the lack of capacity of [the Applicant] or its parent company Heinz Australia to produce bakery products. [Ms Davies’ submission] that Heinz Australia does not produce bread or bakery products is not only new and unsworn evidence, but it is wrong. It is readily contradicted by reference to Heinz Australia’s website at and where it will be seen that Heinz Australia manufactures infant rusks, corncakes, biscuits, muesli fingers, rice bars and biscottini.
[In the submissions] the “very specialised” nature and “high practical barriers to entry” of the bakery goods market are asserted again, without any evidence. It is then asserted that “[It is] simply not feasible for [the Applicant] to make and sell bakery goods without a significant change to its operating practices”. These unsupported assumptions do not displace the assumption of an intention to use.
[28] (1960) 103 CLR 391; [1960] ALR 605, affirmed recently by the Full Federal Court in Food Channel and by Dodds-Streeton J in Suyen –see Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29 (“Foxtel”) at [24] to [28].

I agree with Ms Ryan that the Opponent has not by its evidence displaced the Applicant’s presumed intention to use the Trade Mark for the Opposed Goods. I do accept that, as Dodds-Streeton J said in Suyen at [190], “where [an opponent] makes a prima facie case for lack of intention in proceedings under s 59, the evidentiary onus may shift to an applicant who, although on notice that its intention is challenged, fails to respond to the opponent’s evidence.”[29] However, as was noted by Dodds-Streeton J in Suyen and by the Full Court in Food Channel, lack of the requisite intention to use cannot be inferred from lack of use per se. For the reasons submitted by Ms Ryan I do not consider the Opponent’s evidence has made out a prima facie case for lack of intention, nor can I be satisfied on the evidence that the Applicant’s intention was not sufficiently definite or immediate as at the Priority Date.
[29] For a more detailed discussion on the “shift of onus” under s 59 see Foxtel at [34] to [39].
I accordingly do not agree with the Opponent’s submission that the Applicant has a case to answer. In principle the Applicant may, unbeknownst publicly, have plans to expand, or to acquire and re-brand a business which is already operating in the relevant field, but I do not believe it is obliged to disclose the scope of any such plans in these proceedings. The Opponent has apparently commenced separate proceedings under Part 9 of the Act alleging lack of intention and I agree with the view of the Hearing Officer in Intel Corporation v Magnatex International Pty Ltd[30] in similar circumstances that it would be appropriate for the issue to be dealt with then.
[30] (1998) 41 IPR 406 at 412-413.
To conclude, the Opponent has not established its ground of opposition under s 59.

Decision

Section 55(1) of the Act relevantly provides that, 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.
I have found the Opponent has not established any of the grounds it raised pursuant to ss 44, 59 or 60 of the Act. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov
Hearing Officer
Trade Marks Hearings
11 June 2013

[2013] ATMO 41

11 June 2013

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