George Weston Foods Limited v Peerless Holdings Pty Limited

[1999] ATMO 102

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 No. 745689(29) for the trade mark - SOY-LIN - in the name of Peerless Holdings Pty Limited.

Background

Peerless Holdings Pty Limited (the applicant) filed application number 745689 on 7 October 1997, for the hyphenated word mark SOY-LIN, in class 29 in respect of 'edible oils and fats; liquid vegetable oil; solid vegetable oil; oil blends in this class; rapeseed oil; olive oil; rapeseed/extra virgin olive oil blends in this class; margarine; spreads in this class.' In a first report, the examiner of trade marks indicated that the specification of goods included items for which the mark would be misdescriptive. The examiner requested that the applicant limit the claim to overcome this difficulty. As a result, the application was accepted for a specification of 'edible oils and fats; liquid vegetable oil; solid vegetable oil; oil blends in this class, margarine, spreads in this class; all the foregoing containing soya bean oil'. The application was duly advertised as accepted in the Australian Official Journal of Trade Marks on 26 March 1998.

George Weston Foods Limited (the opponent) filed a notice of opposition on 27 May 1998. The evidence stages followed a usual course and all of the evidence in support and answer was served and filed by 27 January 1999. The opponent then requested an extension of time to serve evidence in reply to 18 July, which was approved. No additional evidence, however, was served and the opponent later requested to be heard in the matter. I conducted this hearing, as a delegate of the Registrar, in Canberra on 21 July 1999. The opponent was represented by Ms Annette Freeman of the Sydney office of Spruson & Ferguson whilst the applicant was not represented at the hearing, preferring to provide written submissions to support its case.

The grounds under the Act, on which opposition was based that are listed in the notice of opposition fall under sections 41, 42(b), 43, 44, 58, 60 and 62(a).

The Evidence

The evidence in support consisted of a single declaration, with exhibits 'IHT1' to 'IHT10' inclusive, from Ian Hill Timmis, Company secretary of the opponent, dated 10 August 1998 (the Timmis declaration). This material provided information of the opponent's use of the SOY-LIN trade mark. The exhibits contain a list of the opponent's registered trade marks in which SOY-LIN forms at least an element of the mark, samples of advertising and packaging material and extracts of articles appearing in magazines in connection with the opponent's 'Burgen Soy-Lin loaf' for bread products. Other exhibits catalogue the opponent's point of sale promotional material, the opponent's 1996 Annual Report and a summary of the development of the opponent's SOY-LIN product as recorded in the publication 'Functional Foods' of June 1998.

The applicant's evidence in answer consisted of two declarations. The first of these, with exhibit EC-1, is dated 22 December 1998 from Eric Ching, Laboratory Manager of the applicant (the Ching declaration). The second declaration, is from Eric McKenzie, Marketing Manager of the applicant, declared on 6 January 1999 (the McKenzie declaration).

The Ching declaration details the attestor's history in his employment at the laboratories of both the applicant and the opponent; he also states his understanding of the different specialist knowledge of chemistry needed for the production of either bakery products or edible fats and oils. The McKenzie declaration provides an opinion that the goods of the applicant and of the opponent are not related in any relevant trade sense.

Submissions

Ms Freeman, for the opponent, opened her submissions with the comment that the opponent was the registered owner of an identical trade mark for the word SOY-LIN, although the opponent's mark is in a slightly stylised version. I have reproduced the opponent's registered trade marks below.

This mark is registered in class 30 for a description 'bread, bread rolls, bread crumbs, yeast goods, and other bakery products included in this class'. The registration date is from 9 April 1997 and it carries the number 731883.

This registration is numbered 731884 for an identical priority date and specification of goods as that for 731883.

Ms Freeman briefly summarised the opponent's evidence emphasising the extensive use of the mark throughout Australia between November 1996 and the date of the present application on 7 October 1997, in relation to bread, muffins and crispbread. She said that the applicant had sought to lead evidence that showed the goods of the opponent differed from those of the applicant. Ms Freeman claimed that the McKenzie declaration merely asserted an opinion that this was the case and that the Ching declaration indicated that production of the different goods required a different specialist chemical knowledge. However, Ms Freeman added, one chemist can perform both jobs as the example of Mr Ching, who has worked in both areas, demonstrates.

Ms Freeman emphasised the degree of similarity of the goods of the application and the goods on which the opponent had used the SOY-LIN mark. Consumer interest in nutritional aspects of the opponent's goods added to the sales and advertising figures and market notoriety of these goods to establish a strong reputation for the opponent as owner of the mark, she said. Ms Freeman then proceeded to develop a line of reasoning for each of the three grounds - under s.44, s.58 and s.60 - that would be pursued by the opponent. She stated that the relevant date at which these matters must be determined was 7 October 1997, the date on which the present application was made.

Under s.58, Ms Freeman submitted that the marks of the applicant and the opponent were so similar as to be virtually the same. She argued that the present marks were closer than either POLYKIN and POLYKEN (Kendall Co. v Mulsyn Paint and Chemicals (1963) 109 CLR 300) or DERMOFILM and DERMAFILM (Warner-Lambert Co v Harel (1995) 32 IPR 189) where successful proprietorship challenges had been mounted. Ms Freeman submitted that the opponent had documented use of the mark prior to the application date, on goods that were the 'same kind of thing' as the present application. The necessity of the goods being the 'same kind of thing' in an ownership claim under s.58 is discussed in Re Hicks' Application (1897) 22 VLR 636. (Further aspects of these submissions relating to the similarity of the goods are to be found in the Discussion section below where the issue is developed in relation to all grounds of opposition pursued by the opponent.)

Under s.44, the attorney submitted that the opponent disputed that the goods were different. She said that the McKenzie declaration, submitted in the evidence in answer, only provided an opinion, without firm evidence, that the goods were not similar. This should be given little weight, she said. Ms Freeman added that the opponent's registered mark 731884 was substantially identical with the present mark, whilst registration 731883 was arguably deceptively similar to it and both of these registrations pre-date the present application. She also submitted that the goods were similar and provided many examples to support her argument. I will address these issues in the Discussion section.

For opposition in terms of s.60, Ms Freeman re-iterated earlier comments on the similarity of the opponent's registered trade mark with the applicant's mark. She then turned to the reputation acquired by the opponent, as a result of the use of its trade marks, prior to the date of the present application. Ms Freeman referred to the figures provided in the Timmis declaration, together with supporting comments from newspaper articles in the attached exhibits. Ms. Freeman concluded her argument concerning s.60 with comments that, because the applicant's mark and the mark of the opponent's registration 731884 were substantially identical, consumers would be deceived or confused by use of the applicant's mark on any items able to be eaten as a spread on bread. This type of confusion was even more likely, she said, given that the opponent and the opponent's major competitor, Goodman Fielder Limited, marketed not only bread but spreads, such as margarine, for use on bread.
Ms Freeman also submitted that the circumstances involving how people shop in the market conditions today and how the trade operates (including bread and margarine being produced by one and the same manufacturer) were relevant to the likelihood of the purchasing public being confused. She also submitted that the opponent should be awarded its costs in the matter.

Mr Robert Kelson, of the Melbourne office of Callinan Lawrie, prior to the hearing provided written submissions on behalf of the applicant. The submissions dealt with all seven grounds of opposition listed in the notice of opposition. However, as the opponent only chose to develop those under s.58, s.44 and s.60, I intend to only mention those parts of the applicant's submissions as being relevant for this decision.

For opposition in terms of s.58, Mr Kelson submitted that the opponent has not demonstrated use of the mark SOY-LIN but of more complex trade marks showing use of the word BURGEN together with a device, or of the word RYVITA, in conjunction with the SOY-LIN mark. In addition, use has only been shown on bread or crispbread and not on goods that could be regarded as 'the same kind of thing' as the applicant's goods, he said. Illustrating these points Mr Kelson referred to both case law (esp. Re Hicks' Application (supra), Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC ¶91-049, Karu Pty Ltd v Jose (1994) AIPC ¶91-101, Dolan v Hugo Boss AG (1997) AIPC ¶91-318) and to the applicant's declarations submitted in the evidence in answer.

Opposition under s.44 fell down, he said, because the respective goods of interest of both applicant and opponent were not similar and so the average consumer would not be confused by use of the respective trade marks.

For s.60, Mr Kelson outlined the nine principles summarised by Heerey J from earlier law in Nettlefold AdvertisingPty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501. He then attacked the opponent's claim to a reputation in the mark SOY-LIN prior to the present application date. Mr Kelson also presented argument on the differences between the goods of the applicant and of the opponent and the variations in the broader business interests of both parties.

Ms Freeman responded to these submissions. Concerning all three sections of the Act, she said that there is nothing to suggest that the mark SOY-LIN does not have its own identity in considering the manner in which the mark is used. The prevalence of housemarks and of product marks on goods such as these is common and, in addition, the opponent's registration of the word SOY-LIN alone, from 9 April 1997, supports the case, she said. Ms Freeman also took the opportunity to remind me that for s.60 it is not a requirement that I must find that the goods are 'similar' in order to find that use of the applicant's mark would be likely to deceive or cause confusion.

Discussion

As I mentioned earlier, the notice of opposition listed seven separate grounds of opposition, but the opponent only pursued three of these and abandoned the remaining four. The grounds that the opponent developed were those involving s.58, s.44 and s.60 in that order. I intend to treat these in a similar manner. For these three sections of the Act the date at which rights must be determined is the date of the present application, as set out in Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595 by Kitto, J with the words:

In applications for registration, the rights of the parties are to be determined as at the date of the application.

(a) Section 58 - Applicant not owner of trade mark

The relevant legislation reads:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

If it can be shown that the applicant is not the owner of the mark then the applicant should not have made the application, as s.27(1)(a) indicates. In the present instance, in order to mount a successful opposition under s.58, the opponent would need to have used an identical trade mark, or virtually identical trade mark, prior to the present application. In addition, as established in Re Hicks' Trade Mark (supra), the opponent would also need to show that it had used its trade mark on 'the same kind of thing' prior to the applicant filing its application.

The applicant argued that the use that the opponent showed of its trade mark was not of SOY-LIN, but of BURGEN SOY-LIN together with a device of A FARMER CUTTING WHEAT WITH A SCYTHE depicted within an ELLIPTICAL BORDER on bread, or of RYVITA SOY-LIN on crispbread. There are certain situations when I would agree with such an argument. For instance, where one trade mark overwhelms another, such use may not be seen as use of the less distinctive mark at all but, for example, as a description of the goods. There are, however, several factors here that lead me to think otherwise in this particular case. Firstly, I note that the word mark SOY-LIN (with a border device) has been registered, in its own right, by the opponent from 9 April 1997. I also accept the opponent's argument on this particular point that SOY-LIN operates as a product mark whilst BURGEN operates as a housemark on several different breads. One page of exhibit 'IT3' attached to the Timmis declaration shows six different loaves of the opponent's bread each displaying the BURGEN mark with the device of the farmer with the scythe. One of the loaves, however, also shows the SOY-LIN mark in white lettering on a red background. This is, in my opinion, use of the trade mark for a particular product or line of goods - consistent with the submission of Ms Freeman. I also note that the opponent distinguishes between the marks by use of the ® symbol on the BURGEN mark and use of the ™ symbol on the SOY-LIN mark, where these are used together. The BURGEN word mark has been registered from 1988, but unfortunately, no indication is given in the evidence, when such usage of the ® and ™ symbols began. All of the opponent's evidence does contain it in that format but it may not have been used that way until after the present application date. As such, it does not directly support the opponent's case for separate use of the mark prior to 7 October 1997. The opponent's cause, however, is strengthened by the actual appearance of the mark in use. SOY-LIN is used in white lettering on a red background and it is obvious that the mark retains its own distinct identity in the overall composite mark. It seems to me that the use of the mark by the opponent equates to use of both of its registered trade marks, 731883 and 731884, shown in the Submissions section above. A similar situation exists for the use of the word mark RYVITA and SOY-LIN on crispbread. I am satisfied, for the purposes of s.58, that the opponent has used and continues to use the mark SOY-LIN as per its registration, number 731884.

Thus, I am required to test the applicant's mark SOY-LIN, as applied for in normal upper-case lettering, against the opponent's registered mark, number 731884 for similarity. In relation to the accepted test for substantial identity of trade marks, this has been well set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 at 414 where Windeyer J said:

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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

When these marks are placed side by side the similarities are immediately striking. Both marks are made up of the words SOY and LIN and both are hyphenated. Although the opponent's mark is registered in a combination of upper-case and lower-case lettering, as Soy-Lin, such a construction is covered by the present application. This principle is outlined in Morny Ltd's Trade Marks (1951) 68 RPC 131. Although this case dealt with an expungement action, the words of Jenkins, L.J. have broader application than merely for such actions. I quote the words of the Lord Justice at 149-150 in that case:

I should have thought, as my Lord has in effect said, that it must really be obvious that the registration of a word in block capitals must cover use of that word in any clearly legible form of lettering and not be confined to its representation in block capitals. Otherwise the registration of a mark consisting of a name in block capitals would give virtually no protection at all, for anyone could use the same word in some other form of type or lettering in imitation handwriting or some other form of that kind; and it would obviously be impossible for anyone seeking to register a particular word, such as 'Morny', to cover in his application or applications every conceivable form of lettering in which it might be represented.

In essence, these marks are the same. The only notable difference is that the opponent's mark contains a simple border device - a rectangle surrounding the words in which the 90° corners have been rounded. Given the degree of similarity, I find that the applicant's mark is substantially identical with the opponent's SOY-LIN mark.

The opponent's evidence at point 6 of the Timmis declaration claims use of this mark for bread, muffins and crispbread. The applicant challenged this use in respect of muffins, claiming that there is no evidence of actual use of the trade mark in relation to muffins. However, I believe that points 6,7 and 8 of the Timmis declaration do make such a claim and I intend to use these items in the following comparison of the applicant's and opponent's goods.

In terms of s.58, I have found to this point that the opponent has used a trade mark substantially identical with the present application. The date of such use began, according to point 4 of the Timmis declaration, from November 1996. The Timmis declaration also provides sales and advertising figures for the 1996 calendar year at points 7 and 8. This use of the mark pre-dates the present application.

The remaining test under s.58 concerns the degree of similarity of the goods of both parties. The opponent has used the mark in respect of 'bread, crispbread and muffins'. The present application claims 'edible oils and fats; liquid vegetable oil; solid vegetable oil; oil blends in this class, margarine, spreads in this class; all the foregoing containing soya bean oil'. The test for a successful ground of opposition, from Hicks (supra), is that the goods must be the 'same kind of thing'. This expression has been discussed in various Office decisions under both the 1955 Act and the current 1995 legislation. Section 33 of the 1955 Act dealt with prior conflicting marks to an application that were either already registered or were pending, as does the current s.44. In both of those sections the similarity of goods must be tested. Under the repealed legislation reference is made to the goods being of the 'same description' whereas the current legislation uses the word 'similar' goods. Some decisions of delegates of the Registrar simply equate the 'same kind of thing' from Hicks with either goods of the 'same description' or 'similar' goods. In other instances, delegates of the Registrar drew a distinction between the terms. In this regard, in both Wilding v Toyota Motor Corporation Australia Ltd (1997) AIPC ¶91-375 at 39,895/6 and Silverstone Tire and Rubber Co Sdn Bhd v Bob Jane Corporation Pty Ltd (an unpublished decision of a delegate of the Registrar of Trade marks), Hearing Officer Terry Williams took the view that 'the same kind of thing' covers a narrower set of goods than either goods of 'the same description' or 'similar' goods. In Silverstone (supra) Mr Williams commented on his decision in Wilding (supra) with the words:

I refused to accept that the words of Holroyd J used in Re Hicks's Trade Mark, more than 100 years ago, were broad enough to necessarily include competing claims arising from use on goods that were merely goods of the same description.

I am in agreement with this approach. I believe that it is significant that the term 'same description of goods' appeared in s.16 of the Victorian Trade Marks Act of 1890, yet Justice Holroyd chose the term 'same kind of thing' as a test for similarity of goods when considering ownership of a trade mark. A consideration of some decided cases for items that have been found to be 'goods of the same description' produces some conclusions that I believe would have great difficulty qualifying the goods as being 'the same kind of thing' according to a normal use of the English language. In particular, in my opinion, knitting wool and articles of clothing (Goode, Durrant & Co Ltd's Application (1932) 2 AOJP 677) and bandeaux for hats and busks for corsets (Shreeve's Trade Mark (1914) 31 RPC 24 (Ch. D)) would not qualify as the 'same kind of thing' despite having been found to be 'of the same description of goods'. Goods that I may consider to be 'different kinds of things' could still be found to be 'of the same description' or 'similar', on the basis of tests based on such items as the origin of the goods, whether they are usually produced by a single manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons 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 (Ref. John Crowther and Sons (Milnsbridge) Ltd's Application 65 RPC 369 at 372). In summary, I believe that the relevant test concerning the degree of similarity of the goods in order for an opponent to succeed under s.58, viz. 'same kind of thing', is a stricter test, leading to a narrower range of conflicting goods, than that required for an opponent to succeed under s.44, viz. 'similar' goods.

Having drawn this distinction, I am left with deciding what goods I would consider the 'same kind of thing' as the opponent's bread, crispbread and muffins. Whilst I would be prepared to consider foods such as buns, biscuits, rolls, crumpets, croissants and similar bakery products as being sufficiently similar, I do not believe that any of the goods claimed in the present application offend in the same manner.

As a result of the foregoing, I find that the opposition is not successful in terms of s.58.

(b) Section 44 - Identical etc. trade marks

The relevant legislation in connection with a possible conflict of trade marks under s.44, where the application is made in respect of goods but not services, is covered by s.44(1). This sub-section reads:

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 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.

Thus, Section 44 provides a block to the acceptance of a trade mark application if three factors are met. These factors occur where another trade mark: (1) is either substantially identical or deceptively similar to the mark of the application, (2) has a specification of goods and/or services considered similar to the application and (3) has a claim to a prior date of registration.

The opponent's SOY-LIN trade mark, number 731884, has been registered from 9 April 1997. The present application claims a date of 7 October 1997. A representation of the mark is shown above in the Submissions section of this decision. I have found, in the above material in relation to s.58, that the present mark is substantially identical with the opponent's registration 731884. Clearly, two of the above three conditions have been met by the opponent's mark. The remaining leg for consideration is the similarity or otherwise of the goods both of the applicant and of the opponent.

For the purposes of s.44, all of the goods claimed in both the opponent's registered mark and in the application must be tested against each other for possible conflict. The test is fair, notional use of the trade mark(s) on all of the goods claimed by both parties, irrespective of what can or cannot be shown concerning actual use in the marketplace.

The opponent's goods for its registered mark are 'bread, bread rolls, bread crumbs, yeast goods, and other bakery products included in this class.' The application specifies 'edible oils and fats; liquid vegetable oil; solid vegetable oil; oil blends in this class, margarine, spreads in this class; all the foregoing containing soya bean oil'.

The expression 'similar goods' found in s.44 has been equated to 'goods of the same description' under the repealed Act and decisions made concerning either of these expressions are relevant in the present case.

In relation to the similarity of the goods Ms Freeman, in her submissions, referred me to Jellinek's Application (1946) 63 RPC 59, John Crowther (supra) and to Southern Cross (supra). In Jellinek (supra), at 64 Romer J outlined three tests for similarity of the respective goods in terms of their nature, their respective uses and the trade channels through which they are bought and sold. The British Assistant Comptroller in John Crowther (supra) further sub-divided these categories. At 372 he sets out the factors he considered with the words:

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 (63 R.P.C. 59), 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.

Ms Freeman's reference to Southern Cross (supra), was to emphasise the point that the respective goods may be found to be 'similar', without the necessity that all three criteria from Jellinek (supra) are fulfilled. In a joint judgment of the Full Bench of the High Court, comment concerning this factor was made in Southern Cross at 606:

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.  …  There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made.

Turning to a consideration of the 'nature' of the respective goods I am of the opinion that it is necessary to consider the question more closely than to simply state that both are foods and therefore have a similar nature. The applicant approached the subject from the viewpoint of the differences in chemical composition between the respective goods. The opponent looked at the similarity of the goods from the reality that bread products are very often eaten together with goods claimed in the present application such as margarine, other edible fats or oils and various spreads.

I believe, however, that it is quite possible to find sufficient exceptions to both of these views to reduce them to the status of supporting arguments only. For instance, food items that have quite different chemical compositions may still clearly be considered 'similar' goods. Here I have in mind egg substitutes and egg products (Egg Products Ltd's Application 39 RPC 155), semolina and custard powders and corn flour (Creamoata Ltd's Application 27 AOJP 174), cocoa and coffee (Hanson's Trade Mark 5 RPC 130). In my opinion, butter and margarine provide another example that may fall into the category of 'similar' goods despite a lack of chemical similarity. On the other side of this argument, I also do not agree that bread and margarine need be eaten together. Many people eat bread without a spread, such as with soup, or on occasions, spread with a vegetable such as mashed potato. Bread is also often toasted and eaten with heated canned food such as spaghetti or baked beans. Margarine, too, does not need to be eaten with bread. It can be used directly on hot vegetables, or added to some hot soups or similar beverages.

The 'nature' of the goods involved encompasses the inherent properties or essential qualities of the goods, thereby giving those goods their fundamental character. The chemical composition is one factor involved in this, a consideration of how readily the applicant's goods could be substituted for the opponent's goods is another. Fundamentally, however, the question to be decided is how similar or dissimilar are the 'natures' of the respective goods? Despite the fact that the opponent's bread and crispbread products are often eaten with goods such as those claimed by the applicant in the present application, I am of the opinion that on any other test that I could formulate concerning the 'nature' of the goods - properties, qualities or character - that the respective goods would differ.

The uses of the respective goods of the applicant and the opponent also differ. Bread, crispbread and muffins generally form a 'carrier' for some other food. They are goods that can readily be directly handled or sliced into edible portions. They can act as a 'container' for other foods and be packed and carried to another location. The uses of the applicant's goods generally form the other half of the equation. They are not goods that can be directly handled or sliced into portions but, generally, rely on a 'carrier', sometimes bread or similar, sometimes cooked or uncooked vegetables or similar. They do not act as a 'container' for other foods. For those that plan such things, the respective goods of the applicant and of the opponent perform quite different functions in the overall construction of a meal.

When it comes to an analysis of the trade channels, I accept the opponent's argument here that the goods do finish in reasonably close proximity. All supermarkets sell such items, albeit in different aisles. Another factor that convinces me to consider that the trade channels are the same is the modern day ability that large multi-national companies enjoy in diversification of their goods of interest. The evidence submitted by the opponent contained the opponent's 1996 Annual Report. Within this report, the company detailed business activities that included interests as diverse as bakery products, cereal industries (particularly aimed at commercially supplying the bakery industry), adhesive products, meat and dairy products (including butter), cleaning products (including goods for commercial cleaning), starches and some sundry other items including fruit products and frozen foods. The opponent markets both butter and cheese. This is not, of course, under the SOY-LIN mark, but it does illustrate that the trade channels from producer to supermarket in such instances follow extremely similar routes.

Despite finding some similarity in trade channels, I believe that the different natures of the respective goods and their different uses outweigh this factor. As such, I find that the goods are not 'similar' in the manner necessary for s.44 to operate in favour of the opponent. Thus, I find that the ground of opposition in terms of s.44 has not been made out.

(c) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The relevant section of the legislation reads:

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in those goods or services, had 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.

As discussed above, I believe that the applicant's trade mark is substantially identical with the opponent's trade mark (registered under number 731884 and depicted in the Submissions above). The similarity of the respective goods involved is not a critical factor in order for s.60 to operate. Obviously the greater the nexus between the respective goods, the more easily deception or confusion will occur. However, the similarity of the goods involved does not provide an independent 'hurdle'. An investigation in terms of s.60 is only triggered if the opponent can provide sufficient evidence of its reputation in the mark in Australia prior to the date of application. This reputation must be sufficient to produce the likelihood of deception or confusion concerning the source of the goods in the minds of a substantial number of purchasers (Smith Hayden & Co Ltd's Application (1946) 63 RPC 97 at 101). In a decision under the Trade Marks Act 1905, Justice Kitto, in Southern Cross (supra), on discussing s.114 of that Act (which broadly corresponds to s.60 of the current Act), stated at 595:

It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring.

If s.60 is to operate in favour of the opponent, I must be convinced that the danger of confusion is real - not merely a possible set of circumstances that may lead to confusion.

The opponent indicated in the evidence provided that it enjoyed a sizeable reputation as at the date of the present application in its SOY-LIN mark. The applicant, through the written submissions indicated that some doubt existed in relation to the consistency of the sales figures submitted by the opponent in the evidence. However, I am of the opinion that the figures are entirely consistent with a trial use of the mark from November 1996 and general use of the mark from March 1997 as claimed by the opponent. The only full year of use that could be provided in early 1998 was the calendar year of 1997. For that reason, the figures were summarised in terms of calendar years rather than financial years.

An attachment to the Timmis declaration, 'IHT8', consisted of a copy of an article from the June 1998 issue of the magazine 'Functional Foods'. This article stated that 'by early April 1997 Burgen Soy-Lin accounted for 5.3% volume share of the total bread market, and 23.4% of the grain (including deposited breads) bread category'. The source listed for these figures was Scanpath Info-Fusion, week 6/4/97. Given that the opponent's Soy-Lin line of bread was first marketed from November 1996, the sales growth of this line is remarkable. The opponent's reputation in this mark, particularly for bread, but also for crispbread and muffins, is correspondingly significant. The total sales of the opponent's Soy-Lin bread throughout 1997 are also impressive. The present application was made on 7 October 1997. No indication is available concerning a breakdown of figures to allow me to see exactly how much of the 1997 sales had been made by 7 October, however, there is no indication of a major variation throughout the year. Taken together, I accept that the evidentiary material provides a substantial reputation for the opponent in use of the mark SOY-LIN in relation to bread, crispbread and muffins.

The opponent also put to me that the goods of both parties involved in this matter were common foods, not expensive items or items that a prospective purchaser would spend a great deal of time to select.

I have found above that the respective goods of the applicant and of the opponent are not 'similar' (for the purposes of s.44). However, I also believe that they are not of such a separation that prospective purchasers would simply ignore any possible connection between the source of the goods either. If I was required to compare a possible conflict between say, bread and motor vehicles I would have difficulty accepting that use of identical marks on the respective goods could produce any confusion concerning the source of the goods for purchasers. In the present instance, however, the goods are bread products versus various edible oils and fats, margarine and spreads in class 29, all containing soya bean oil. These items may not be found next to each other in supermarkets but bread, margarine and a spread may well be purchased by one individual on the one shopping trip in a single supermarket. The nominated goods of both parties are found in a sufficiently close proximity, in my opinion, to cause many prospective purchasers to be confused, given that substantially identical trade marks are involved and the opponent has established a significant reputation in its mark. I accept that the opponent makes use of both of its registered marks 731883 and 731884 in relation to its bread products as discussed above in respect of s.58. I also accept that some major companies do manufacture and market both bread and also edible fats and oils. I note in this regard that the opponent itself does market a variety of goods under assorted trade marks, including both bread and butter. I believe that I should also consider these general market conditions. Today, I believe, there is a perception by the general public that large companies, particularly those in the food industry, often engage in the practice of brand extension across a diverse range of goods. From all of these background circumstances, and the opponent's reputation in the mark, I am of the opinion that there is a real, tangible danger of deception or confusion occurring concerning the source of the applicant's goods for a substantial number of persons, if the applicant is granted registration and uses the mark in a fair and reasonable manner.

All of the conditions outlined in s.60 having been met, I find then, that the opponent is successful in terms of this ground of opposition.

Conclusion

From the foregoing, I have found that the opposition has not succeeded under the grounds involving s.58 or s.44 but has succeeded under s.60. Therefore, as a delegate of the Registrar, and subject to an appeal from this decision, I refuse to register this trade mark. As I see no reason why costs should not follow the decision, I make an award of costs in the matter in favour of the opponent.

Don Nancarrow
Acting Hearing Officer
8 October 1999.