Goeie Peer B.V. v Ariana Holdings Pty Ltd

[2018] ATMO 174

TRADEMARKSACT 1995

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

Re:      Opposition by Goeie Peer B.V. to registration of trade mark application no. 1800168

(31) – SWEET SENSATION - in the name of Ariana Holdings Pty Ltd

DELEGATE:

Bianca Irgang

REPRESENTATION:

Opponent: Kellie Stonier of Griffith Hack Lawyers

Applicant: Not present at hearing

DECISION:

2018 ATMO 174

Trade Marks Act 1995 - Section 52 opposition: sections 42, 44, 58, 60 and 62A pressed – Section 44 ground of opposition established – evidence insufficient to overcome section 44 ground of opposition.

Background

1. Ariana Holdings Pty Ltd (‘the applicant’), filed trade mark application number 1800168 on 30 September 2016 in class 31 of the International Classification of Goods and Services. Current details of the application are set out below.

2. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 23 February 2017. Subsequently Goeie Peer B.V. (‘the opponent’) filed its Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars1.

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and the applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

1 which together constitute ‘the Notice’

1. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 24 August 2018. The applicant was not present at the hearing. The opponent was represented by Kellie Stonier of Griffith Hack Lawyers.

Grounds of Opposition

1. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) however, only those grounds of opposition under sections 42(b), 44, 58, 60 and 62A were pursued at the hearing. The onus is upon the opponent to establish one or more of

   its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd2 affirmed the approach in Pfizer Products Inc. v Karam3 where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

Evidence

1. The evidence in these matters consists of the following declarations:

Evidence in Support

·Declaration of Phillip Limvers ( ‘Limvers 1’) dated 21 September 2017 with Exhibits PM-1 to PM-19

·Declaration of Phillip Limvers ( ‘Limvers 2’) dated 21 September 2017 with Exhibits PM-20 to PM-23

·Declaration of Kellie Stonier (‘Stonier’) dated 25 September 2017 with Exhibit KAS-1

Evidence in Answer

·Declaration of Omid Rad (‘Rad’) dated 30 November 2017 with Exhibits OR-1 to OR-11

Evidence in Reply

·Declaration of Phillip Limvers ( ‘Limvers 3’) dated 7 February 2018 with Exhibits PM-24 to PM-25

2 [2015] FCAFC 156, [133]

3 [2006] FCA 1663, [26]

·Declaration of Phillip Limvers ( ‘Limvers 4’) dated 7 February 2018 with Exhibit PM-26

Discussion

Section 44 – Deceptive similarity

1. Subsection 44(1) of the Act is relevant in this case and reproduced below:

   (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.

1. To establish a ground of opposition under section 44 of the Act, the opponent must show all of the following:

   Øa trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

   Øthe trade mark in the name of the other person must be in respect of similar goods or closely related services; and

   Øthe priority date of the trade mark of the other person is earlier than the priority date of the applicant’s trade mark.

1. The opponent has two trade mark registrations which it has put forward in support of the section 44 ground of opposition. The details of these registrations are as follows:

1. I note that the opponent’s trade mark and the opponent’s device trade mark both have an earlier priority date than the Trade Mark. Now I need to determine whether or not any of the opponent’s respective trade marks are substantially identical or deceptively similar to the Trade Mark.

1. It is clear that the Trade Mark is substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd4.

Trade Mark	Opponent’s trade mark
SWEET SENSATION	SWEET SENSATION

1. The respective trade marks are both in plain text for the words SWEET SENSATION. The trade marks are identical.

1. In view of my finding that the Trade Mark is substantially identical to the opponent’s trade mark.  I  have  not  addressed  whether  the  opponent’s  device  trade  mark  is  substantially

4 (1963) 109 CLR 407 at 414

identical or deceptively similar as it will not change the outcome of the matter. However, I will now consider the goods specification of the trade marks and determine whether the concurrent use of the respective trade marks in relation to the relevant goods in class 31 is likely to result in a real and tangible danger of confusion or deception. I believe that it will.

1. The opponent’s goods include pears. The applicant’s goods are pomegranates. I consider that the respective goods are similar to each other. There have been many submissions made by the opponent as to why use of an identical trade mark on pomegranates and pears is likely to cause deception or confusion in the marketplace with consumers considering that the fruits both came from the same trade source. The applicant has argued that pomegranates and pears are different fruits and that confusion is unlikely to take place because the goods are different. I cannot agree with the applicant’s argument.

1. Both pears and pomegranates are fruits which will likely be sold through the same trade channels, in the same area of a shop or supermarket to the same end consumer – namely the average Australian who would be likely to purchase fruit. I do not believe that the average Australian consumer is likely to mistake a pear for a pomegranate, but I do believe that a consumer, witnessing an identical trade mark on two pieces of different fruit, is likely to be deceived and confused to believe that the fruit originated from the same trader.

1. While pears and pomegranates have different farming requirements and are grown as different crops, the likelihood that the average Australian consumer would be aware of the current, differing farming practices for pomegranates and pears so as to differentiate them as likely being from different traders, is slim. It is likely that an Australian consumer would see two different fruits bearing identical trade marks and be deceived into believing that the fruits originated from the same source.

1. Therefore, I find that there is a real and tangible danger that Australian consumers would recall the opponent’s trade mark and be deceived or confused as a result on encountering the applicant’s goods bearing the Trade Mark. Section 44 is subject to paragraphs 44(3) and (4) of the Act which make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior continuous use, honest concurrent use or other circumstances which would make registration proper. I now turn to the applicant’s evidence.

1. The applicant’s evidence is very limited in establishing the use it has made of the Trade Mark on its pomegranates. There is much discussion on how pears and pomegranates are different and have different environments to grow in so will be distinctive from each other. Mr Omir Rad points out the history of his involvement with fruit from melons to pomegranates and it is impressive. I do not doubt that Mr Omir Rad is very well regarded within the horticultural industry for his collection of pomegranates and his investment in the fruit, however, without evidence of use of the Trade Mark within Australia or any other circumstances which would allow me to accept the Trade Mark I find that the opponent has established the section 44 ground of opposition and that the applicant has been unable to overcome it.

Decision

1. Section 55 of the Act provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, 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.

1. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 44. Accordingly I refuse to register trade mark application no. 1800168.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

Bianca Irgang Hearing Officer

Oppositions and Hearings 29 September 2018