Golden Crumpet Co A'sia (Extended) Pty Limited v David Innes Pty Ltd

[2012] ATMO 38

TRADE MARKS ACT 1995

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

Re:Opposition by Golden Crumpet Co A'sia (Extended) Pty Limited to registration of trade mark application 1276989 (30) - Golden Food Kitchen - filed in the name of David Innes Pty Ltd

Delegate:	Michael Kirov
Representation:	Opponent: Celia Davies of Freehills Patent & Trade Mark Attorneys Applicant: Neil Young of NA Young & Co
Decision:	2012 ATMO 38 Section 52 opposition: s 60 considered – confusion likely because of reputation of Opponent’s trade marks – opposition successful and registration refused. Costs awarded against the Applicant.

Background

1. This is an opposition brought by Golden Crumpet Co A'sia (Extended) Pty Limited (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark Golden Food Kitchen subject of application number 1276989 in the name of David Innes Pty Ltd[1] (“the Applicant”).

   [1] As to which name, see paragraph 7 of this decision.

2. Details of the opposed application are as follows:

   Application Number:             1276989
   Priority Date:    19 December 2008                 (“the Priority Date”)

   Goods:Class 30: Bread

   Trade Mark:      Golden Food Kitchen           (“the Trade Mark”)

3. The Opponent filed its Notice of Opposition (“the Notice”) on 30 July 2009.

4. The Opponent’s Evidence in Support consists of a Statutory Declaration by Peter McKinney made on 19 October 2010, with Annexures 1 to 36[2] (“the McKinney declaration”).  A copy of the McKinney declaration and accompanying Annexures was served on the Applicant on or about 21 October 2010.

   [2] Of which Annexures 2, 3, 5-14, 19, 20, 22, 27, 32 and 35 are claimed to be confidential.

5. The Applicant’s initial deadline for serving a copy of its Evidence in Answer on the Opponent was 21 January 2011.  The Applicant’s attorneys, NA Young & Co, successfully applied for a two month extension of this deadline, until 21 March 2011, on the grounds that “The Trademark Applicant requires further time to reply to the material filed by the Opponent”.  In the event, however, the Applicant’s attorneys did not serve or file any evidence by the extended deadline and, following a request by the Opponent on 2 May 2011, the matter was eventually set down for hearing in Sydney on 19 October 2011.

6. On the morning of 19 October 2011 NA Young & Co emailed to IP Australia (and to the Opponent’s attorneys) a copy of a Statutory Declaration made on 18 October 2011 by David William Innes, a director of the Applicant, “for filing in support of the application being heard today in Sydney” (“the Innes declaration”).  I will deal with the admissibility of the Innes declaration in due course below.

7. The Innes declaration aside, there is no formal evidence before me from, or concerning, the Applicant.  According to information proffered by Mr Young in his oral submissions at the hearing, nevertheless, the Applicant has apparently operated a bakery business in Victoria for some 20 years.  My own enquiries of the publicly available online records of the Australian Securities & Investments Commission (“ASIC”) indicate that the Applicant was incorporated in Victoria in 1983 under the name Karingal Computing Services Pty Limited, that its name changed to David Innes Pty Ltd some time later and that notification of a further name change, to Golden Food Kitchen Pty Ltd, was lodged with ASIC on 19 January 2009[3].  At the hearing Mr Young claimed that the Applicant was also the owner of a Victorian business name registration for the name “Golden Food Kitchen” dating from 1993 which nominated its business as “Bakers”.  He said that this business name had appeared for many years on many of the Applicant’s products sold under the trade marks GOLDIES, NATUREEN, COUNTRY GRAINSTORE and FRUITELLA.[4]

   [3] I note in passing that the Applicant has not notified IP Australia of this change of name and, indeed, that the Applicant filed six further trade mark applications in 2011 in its former name, David Innes Pty Ltd.

   [4] It is perhaps germane here to note that, as Lander J said in Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278 at [73], “There is a clear distinction…between conducting a business under a particular name and using a mark in respect of goods or services”.

8. For its part the Opponent was incorporated in Australia more than 50 years ago “as a baking company” and is now a wholly owned subsidiary of George Weston Foods Limited, which Mr McKinney describes in his evidence as “a leading bakery company in Australia…well known for its iconic brands”.  As at the Priority Date the Opponent 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”.  Notably, too, 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 the Opponent 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, 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 the Opponent’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.

9. At the heart of the current opposition is the claimed similarity of the Trade Mark to the trade marks containing or consisting of the word “golden” which had been used and/or registered by the Opponent for bakery products in Australia as at the Priority Date.

10. I heard the matter as delegate of the Registrar of Trade Marks on 19 October 2011 in Sydney.  Neil Young of NA Young & Co appeared for the Applicant.  Celia Davies of Freehills Patent & Trade Mark Attorneys, assisted by Sara Chapple of the same firm, appeared for the Opponent.  Ms Davies’ oral submissions before me were supplemented by written submissions tendered at the hearing (with a copy made available to Mr Young).

    Grounds of Opposition and Onus

11. While the Notice lists a number of grounds corresponding to various provisions of the Act, the Opponent’s attorneys advised via email on the eve of the hearing (with a copy to the Applicant’s attorneys) that the Opponent would only be pressing the grounds in the Notice based on sections 44 and 60 of the Act. I treat the remaining grounds listed in the Notice as abandoned.

12. To succeed in its opposition the Opponent bears the onus of establishing at least one of the two grounds pressed at the hearing. As will become apparent, I have not found it necessary to address the Opponent’s s 44 ground in this decision and thus only the s 60 ground is discussed below. Of course should this decision be appealed, it would always remain open to the Opponent to plead any ground it chose in proceedings before the Court.

    Standard of Proof

13. I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities [6].

    [6] 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] and, most recently, Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011) per Stone J at [11] to [12] and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10].

14. 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

    Admissibility of the Innes declaration

15. As mentioned above, despite successfully requesting an extension to 21 March 2011 of its initial 21 January 2011 deadline for preparing and serving Evidence in Answer, the Applicant did not actually serve or file any evidence until it purported to serve and file the Innes declaration via email almost seven months later on the morning of the hearing itself.  The Opponent’s attorneys emailed Canberra based staff of IP Australia shortly after receiving a copy of the declaration, (being some three and a half hours before the hearing, which was scheduled to commence at 2.00 pm), submitting that it should not be allowed into evidence.  The Opponent’s attorneys’ email continued:

    We also submit that this Statutory Declaration should not be made available to or seen by the hearings officer.  Even if the Statutory Declaration is not allowed into evidence, it could, if read by the hearings officer, subconsciously affect his or her decision making.  Accordingly, given that the opponent has effectively been ambushed with the evidence on the morning of the hearing and has been given no opportunity to respond to its contents, we submit that it would be highly prejudicial for it to be admitted or seen by the hearings officer.

    Section 54 of the [Act] provides that opposition proceedings must be in accordance with the regulations. Under regulations 5.9 and 5.10 of the Trade Marks Regulations 1995 the date by which David Innes Pty Ltd was required to serve evidence in answer was 22 January 2011. This date was 3 months from 22 October 2010 which was the date on which the Golden Crumpet Co served evidence in support of its opposition.[7]

    David Innes Pty Ltd has provided no explanation for this delay.

    The matters contained in the Statutory Declaration were all available in January 2011 when the applicant’s evidence in answer was due.  There is no justification for the delay.

    The applicant has not properly sought to put this Statutory Declaration into evidence.  And the opponent has been given no opportunity to properly consider and make submissions on the late evidence.

    Please confirm therefore that the evidence will be disallowed and will not be viewed by the hearings officer.

    [7] In fact, in the absence of advice to the contrary from the Applicant, the Opponent’s Evidence in Support was officially deemed to have been served on 21 October 2010.  The Applicant’s initial deadline for serving a copy of its Evidence in Answer was accordingly 21 January 2011 and, as mentioned, the Applicant successfully requested a two month extension to 21 March 2011.

16. I mention that by the time this email reached me in Sydney I had already received and read a copy of the Innes declaration[8] and I indicated to Ms Davies and Mr Young at the commencement of the scheduled hearing my preliminary view that, whether it was admitted or not, I did not believe its contents were likely to affect my decision in relation to the Opponent’s s 44 or s 60 grounds. I accordingly proposed that I firstly hear their submissions as to the declaration’s admissibility and that I “provisionally” allow its admission for the sake of expediency, albeit reserving my formal determination of the issue. I would then hear their submissions on the opposition grounds themselves. If, after considering the parties’ substantive submissions, it turned out that the contents of the Innes declaration were likely to affect my decision adversely from the Opponent’s point of view, (and I then determined to allow the declaration into evidence), then rather than issue a decision I would give the Opponent time to prepare and serve Evidence in Reply and, if necessary, the opportunity for a further hearing.  Both parties’ representatives agreed to this course.

    [8] That said, had I not read it, it would have been impossible to know how relevant it might be and therefore to form a view as to whether it ought be admitted.

17. Mr Young submitted there were three reasons why the Innes declaration should be admitted.  Firstly, he said its contents were “not novel” in that it “contains facts that should have been known to the Opponent” because, he said, “they are things the Opponent could have found out by their own enquiries”.  Secondly, he said the declaration “stands just as well as a submission”, because it contains information “of which one could almost take judicial notice” such as claims that the bakery products of interest to the respective parties were not “similar goods”[9] or that the parties’ relevant trade marks were not “deceptively similar” because, it was claimed, in use the parties rendered them in different scripts.  Thirdly (and essentially rephrasing his first submission), Mr Young said that although the declaration was served late it nevertheless did not contain any information which should “surprise” the Opponent.

    [9] As defined in s 14(1) of the Act, namely the same goods or goods “of the same description”.

18. For the Opponent, Ms Davies emphasised the matters mentioned in the above quoted email, in particular that s 54 of the Act states that “the proceedings for dealing with [an] opposition must be in accordance with the regulations” and that the Applicant had neither complied with regulations 5.9 or 5.10, nor had it made an appropriate application for an extension of time so to comply as specified in regulation 5.15. She pointed to the fact that the Applicant had requested a two month extension of its initial 21 January 2011 evidence deadline as confirming that the Applicant, (which has been represented by Mr Young’s firm throughout the proceedings), must have been aware of its obligations in this regard.  She noted, too, that Mr Young had not put forward any reason why the Innes declaration could not have been made and served within time.  Finally, she submitted that it could “severely prejudice” the Opponent if the declaration were admitted because the Opponent might be “denied its procedural right to consider it and file Evidence in Reply”.

19. Although the Registrar has considerable latitude in the conduct of hearings (provided procedural fairness is accorded to the parties)[10], IP Australia has long had procedures in place in relation to late applications for extensions of time to serve evidence in oppositions.  Indeed, (unbeknownst, I believe, to the Opponent or its attorneys), Mr Young’s firm explicitly acknowledged it was aware of this as long ago as 8 April 2011 when it wrote to IP Australia stating:

    We note that the time within which to file evidence expired on 21 March 2011.  We intend to file additional (sic) evidence and therefore require additional time within which to do so.

    Please note that we shall make the necessary application with supporting material urgently.  In the interim we request that IP Australia make no ruling on the substantive issue.

    [10] See in particular regulations 21.15 (7), 21.15 (8), 21.15 (10) and 21.19.

20. Moreover, a Senior Examiner at IP Australia responded to this 8 April 2011 letter by email on 12 April 2011 in the following terms, reminding Mr Young’s firm of what was required:

    I note that you intend to apply for an extension of time to serve evidence in answer to the opposition.  A late application for extension of time must be supported by a declaration giving the reasons for the extension and why the extension was applied for after the expiry date.  An indication of the progress made so far in preparing the evidence and when you anticipate serving the evidence would also be helpful.  The fee for extending time to serve evidence is $150 per month.

    Do not hesitate to contact me if you wish to discuss the matter further.

21. This exchange of correspondence notwithstanding, no further contact from the Applicant or from Mr Young’s firm is recorded on IP Australia’s file until Mr Young’s email on the morning of the hearing more than six months later, which I quote in full:

    Dear Madam Registrar of Trade Marks

    I attach Statutory Declaration of David William Innes declared 18 October 2011, for filing in support of the application being heard today in Sydney.

    There will not be any other submission in writing.

    Kind Regards

    Neil Young

22. If the Applicant had requested an extension of time to serve the Innes declaration which complied with procedural requirements under the Act and Regulations, of course, this still would not necessarily mean the extension would be granted. In this regard long established case law indicates[11] there are three major issues that the party concerned should address in relation to its extension application, namely:

    ·Could the evidence, with reasonable diligence, have been obtained earlier?

    ·Is the evidence, if admitted, likely to have an important influence on the outcome?

    ·Is the evidence credible?

    [11] The seminal case is generally considered to be the UK case of Ladd v Marshall [1954] 1 WLR 1489; 3 All ER 745, followed in that country in relation to a trade mark matter in Oxon Italia SpA’s Trade Mark Application [1981] FSR 408 and in Australia by, inter alia, Link Recruitment Pty Ltd v Link Employment and Training Inc (2006) 69 IPR 614.

23. As discussed recently by the Hearing Officer in Morarp Pty Limited v Transference Trading Pty Limited [2012] ATMO 27 (at [16]), these general principles do nevertheless need to be considered in light of the decision in Studio Srl v. Buying Systems (Australia) Pty. Limited (1991) 22 IPR 580 (“Studio”).  In particular, favourable consideration should be given to an application for leave to serve evidence out of time, if possible, if the effect of a refusal was likely “to force an unsuccessful party to the opposition before the Registrar into an appeal to the court where the evidence, if admissible, would not be excluded”[12].

    [12] Studio at 22 IPR 585.

24. That said, in the matter before me I have little hesitation in refusing to allow the Innes declaration into evidence. Not only did the Applicant make no attempt to comply with well established procedural requirements (of which its attorneys were undeniably aware since at least 8 April 2011), but Mr Young was unable to offer any reason why nothing was done until the day of the hearing some six months later. Nor did he suggest any reason why the information contained in the Innes declaration could not, with reasonable diligence, have been obtained earlier. Indeed, his submissions, as mentioned above, centered on the fact that the information in the declaration was “not novel”, that it merely contained “things the Opponent could have found out by their own enquiries” or “of which one could almost take judicial notice”. Perhaps most significantly, I do not consider any of the information contained in the declaration would have any bearing on my decision in relation to the Opponent’s s 60 ground of opposition in any event.

25. I accordingly turn now to a consideration of the s 60 ground based solely on the evidence contained in the McKinney declaration.

    Section 60

26. The ground based on s 60 is indicated in the Notice as follows:

    Another trade mark has, before the priority date for the Application, acquired a reputation in Australia; and because of that reputation, use of the Trade Mark in relation to the goods or services claimed in the Application would be likely to deceive or cause confusion: section 60.

27. Section 60 of the Act is reproduced below:

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

    60. 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.

1. Rather than nominate a particular trade mark which had acquired the requisite reputation as at the Priority Date, Ms Davies instead referred to the Opponent’s use of its registered trade marks generally for bakery goods, submitting (based on the McKinney declaration) that:

   [The Opponent] is the proprietor of a family of registrations containing or comprising the word GOLDEN.  These registrations cover a wide range of bakery goods, including bread, crumpets, pikelets, pies, and various bread products in Class 30.

   [The Opponent] has used its GOLDEN marks in Australia for 60 years since 1951.

   Because of [the Opponent’s]…reputation in the GOLDEN marks in relation to bakery products, [the opposed application] should be refused.

2. A selection of the registered marks of the Opponent which the McKinney declaration indicates had enjoyed significant use in Australia before the Priority Date are set out in the table below and I will refer to them collectively hereafter as “the GOLDEN Marks”.  As mentioned, Mr McKinney says the Opponent has continuously used and/or licensed the use of these trade marks over many decades for a range of bakery products.  While the (very significant) sales and advertising figures that Mr McKinney provides show that the principal goods sold over the years under one or more of the GOLDEN Marks were crumpets, pikelets and pancakes, he attests to regular (and, in the main, apparently successful) marketing efforts which have extended the range of goods sold to garlic bread, bread crumbs, English muffins, muffins (cakes), croissants, flap jacks, hot cakes, waffles, honey buns and toast.

Number	Trade Mark
194183
247418
247419
308146
355429	GOLDEN
600919
601000	GOLDEN FINGERS
614062	GOLDEN SQUARES
680349
702693
704717
827315	GOOD AS GOLDEN
896573
896575
1092439	NOTHING’S AS GOOD AS GOLDEN
1094482
1106551

1. As far as the reputation of the GOLDEN Marks (as a whole) is concerned, Ms Davies referred to the judgment of Kenny J in McCormick & Co Inc v McCormick (2002) 51 IPR 102, where her Honour said at [86] to [88]:

   [86] In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd(1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson(1998) 42 IPR 473; and RS Components Ltd v Holophane Corp(1999) 46 IPR 451. This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd(2001) 51 IPR 1, Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd(1997) 38 IPR 495 (Nettlefold), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [87] It is true, as Mary McCormick's counsel points out, that the evidence does not establish what proportion of sales was made under or by reference to any particular mark. It is also true, as he points out, that, apart from the evidence as to sales and advertising expenditure, there is little or no evidence about the effect of advertising upon consumers. There were no consumer surveys in evidence, nor was there evidence about the marketing of McCormick & Co's products. There was also no evidence to connect whatever international reputation McCormick & Co might have with the reputation of the McCormick & Co marks in Australia.

   [88] I accept that those were important omissions and, in another case, might have proved fatal. Still, none of the factors pointed to by counsel for Mary McCormick are essential requirements for a finding of reputation under s 60. The sales and advertising of the order of magnitude involved in this case are, in my view, a sufficient basis for establishing reputation along the lines of the approach indicated in Gymboree and Nettlefold and other relevant authorities. Contrast Lee v Korean Air Lines Co Ltd (2000) AIPC 91-557; Winglide Pty Ltd v Corporate Express Inc(1999) 46 IPR 627; Aktion Zahnfreundlich v Suntory Ltd(1998) 42 IPR 593; Somers v Greenbelt Pacific Pty Ltd(1998) 42 IPR 587 and Clissold v Amalgamated Television Services Pty Ltd (2000) AIPC 91-566. Without speculating on what the threshold level of sales or promotional expenditures might be (if, indeed, one exists), McCormick & Co have clearly passed it. Bearing in mind all the circumstances to which I have referred, I am satisfied that McCormick & Co have established that the mccormick & co marks had acquired a reputation in Australia before March 1992.

2. As far as the present opposition is concerned, I am also of the view that “the sales and advertising of the order of magnitude involved in this case are … a sufficient basis for establishing reputation along the lines of the approach indicated in Gymboree and Nettlefold and other relevant authorities”.  As Ms Davies highlighted, 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.

3. 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[13], 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.

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

4. Bearing the foregoing matters in mind, then, I am satisfied the requisite reputation in the GOLDEN Marks contemplated by s 60 existed as at 19 December 2008. The question remains as to whether, in light of that reputation, use of the Trade Mark for bread “would be likely to deceive or cause confusion”.

5. In arguing that it was not, Mr Young pointed to the fact that in many of the GOLDEN Marks the word “golden” is rendered in a particular cursive script and that the McKinney declaration confirmed that the word was generally (although not always) stylised in this manner when used over the years on the packaging for the Opponent’s bakery goods and in its associated advertising.  He submitted that this was a significant distinguishing feature between the Trade Mark and (many of) the GOLDEN Marks and that it was thus unlikely consumers would be deceived or confused if the Trade Mark were used rendered in plain, unstylised letters, that is in the form applied for, in relation to the Applicant’s bread.

6. As is also the case with s 44 of the Act, however, what needs to be considered in the case of s 60 is the notional use the Applicant might make of the Trade Mark, assuming use in a “fair and reasonable manner”[14] for bread.  The question is thus not limited to whether the Applicant’s past or proposed use of the Trade Mark would give rise to deception or confusion, (as Mr Young’s submission in effect assumes), but rather “must be based upon what the [A]pplicant can do if registration is obtained[15]”.  The Applicant might, for example, render the Trade Mark in a fancy script which resembles that used by the Opponent or which might highlight the word “golden” appearing in the Trade Mark.  It might simply use the mark in the form GOLDEN food kitchen, thereby highlighting the relative distinctiveness of the word “golden” and the apparently descriptive nature of the words “food kitchen”.  The issue is thus whether such notional use of the Trade Mark for bread would be likely to deceive or cause confusion in the relevant market as at 19 December 2008 in light of the reputation of the GOLDEN Marks at that time.

   [14] 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.

   [15] Southern Cross per Kitto J at 595. See also s 7(1) of the Act.

7. Moreover, some of the GOLDEN Marks are registered and, the evidence shows, are in fact used on packaging or in advertising, in plain script in any event.  These include the word “GOLDEN” solus, the words “GOLDEN FINGERS” and “GOLDEN SQUARES” and the slogans “GOOD AS GOLDEN” and “NOTHING’S AS GOOD AS GOLDEN”.  As mentioned, too, the Opponent’s advertising of goods bearing the GOLDEN Marks extends to radio and television, where the manner in which the relevant trade marks may be rendered is not of principal significance[16].

   [16] See s 7(2) of the Act.

8. Mr Young also argued that the likelihood of deception or confusion was low because the word “golden” might reasonably be seen as common to the trade in relation to bakery goods generally.  In support he pointed to the fact that there were already many third party registrations in Class 30 covering bakery goods for trade marks containing this word.  While there is no evidence before me concerning the current state of the Trade Marks Register[17], (or, more importantly, of what trade marks third parties may be using for their similar goods), I do accept that, as Ms Davies herself conceded in her written submissions, “[T]he word ‘golden’ is not the most distinctive of terms”.  Nevertheless, Mr Young’s submission must be considered in the context of the Opponent’s substantial use of the word in Australia over many decades and in light of the role the word appears to play in the opposed Golden Food Kitchen trade mark.  As Ms Davies put it:

   All of [the Opponent’s GOLDEN Marks] involve “GOLDEN” as a core element.  Some of these marks include other words or devices (eg CRUMPET BREAKS, SQUARES, TOASTA, CROISSANTS, WAFFLES, FINGERS, GOOD AS, NOTHING’S GOOD AS and cartoon images).  Each 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 [the Opponent’s] marks, it is clear that it has a claim to a family of marks all deriving from the core word GOLDEN.  …  The family of GOLDEN marks and the use of, and reputation in, that family significantly heighten the likelihood of confusion between [the Trade Mark] and any one or more of the family of GOLDEN marks, especially the GOLDEN word mark.

   …

   The visual likeness of GOLDEN to [the Trade Mark] is readily apparent.  GOLDEN is the essential element of both.  The GOLDEN mark is wholly contained within and, relevantly, is at the beginning of [the Trade Mark].  And GOLDEN is the most distinctive part of it.  “Food” and “kitchen” are not unexpected or significant words on the packaging of breads or other baked goods.  They do not add anything to the trade mark.  These goods are food and do come from a kitchen.

   …

   …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 nevertheless 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[18].

   …

   Here [the Opponent] has varied its trade marks with the addition of devices and other words so consumers are accustomed to seeing the GOLDEN [M]arks in a variety of ways.  This means that the average consumer may consider that [the Trade Mark] is an expansion of the GOLDEN family and the GOLDEN brand.

   [17] I mention in passing that admission of the Innes declaration would not have been relevant to this issue since it does not address the state of the Trade Marks Register.

   [18] (1964) 111 CLR 511.

9. I think it is significant, too, that as long ago as 1981 the Opponent was able to satisfy IP Australia that the word “golden” solus was at least “capable of becoming distinctive”[19] of “Crumpets, pikelets, pies, flapjacks, muffins and doughnuts”, as evidenced by its registration 355429 GOLDEN.

   [19] Being the words used in s 25(1) of the then current Trade Marks Act 1955.

10. I note too that in the WYANDRA GOLDEN CRUMPETS case referred to earlier[20] Chief Assistant Registrar Farquhar considered a similar submission concerning the distinctiveness of the word “golden” for relevant goods, particularly in relation to those of the GOLDEN Marks which feature the word “golden” in combination with a device element.  I find I am in general agreement with her conclusion at IPR 154[21] on this point:

    I think that as well as the device component of the opponent'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 the opponent'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.

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

    [21] Quoting from Dixon and McTiernan JJs’ judgment in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658

11. As Kitto J noted in Southern Cross, quoted with approval by French J (as he then was) in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 428:

    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.

12. As to what constitutes “confusion” in this context, (which the relevant case law indicates has a considerably lower threshold than “deception”), Kitto J said in Southern Cross at 595:

    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.

13. It is enough, then, if persons of ordinary intelligence and memory[22] likely to come into contact with the parties’ respective bakery products would be caused to wonder, or be left in doubt about, whether the Applicant’s Golden Food Kitchen branded bread, and the bakery goods sold by the Opponent since 1951 under the GOLDEN Marks, come from the same source.  The “ordinary person” in this regard clearly includes anyone who shops in supermarkets and/or is a purchaser of bakery goods.

    [22] See Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 1b IPR 523, per Windeyer J at 529.

14. Mr Young submitted that the particular bakery goods for which the Opponent has mostly used the GOLDEN Marks, namely crumpets, pikelets and pancakes, were sufficiently different from the Applicant’s bread as to obviate the risk of deception or confusion amongst such consumers.  In this regard he sought to draw a relevant distinction between the bakery goods of the Opponent, which he said were produced on a hotplate, and bakery goods produced in an oven, such as the Applicant’s bread.  Moreover, he said, the Opponent’s goods are mixed with a beater or whisk and use baking powder as their raising agent, while the Applicant’s bread is mixed with a dough hook and contains yeast.

1. However distinctions of this sort, and thus detailed consideration of whether the respective natures, uses and trade channels of the parties’ bakery goods are substantially the same, are not critical to a finding under s 60 of the Act[23].  Moreover, I agree with Ms Davies that such fine distinctions are unlikely to be of particular significance to the average consumer.  As she pointed out, the evidence before me contains several photographs showing both kinds of bakery goods displayed side by side in typical supermarket layouts and I believe the fact that this is usually the case is a matter of common general knowledge.  Any relevant distinction is if anything further diluted when the Opponent’s “toast” product is considered, this as mentioned earlier being a form of the Opponent’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.  What is more, there is in any event evidence before me that the Opponent has from time to time over the years sold goods under one or more of the GOLDEN Marks that have been baked in ovens and/or which contain yeast, such as croissants and English muffins.

   [23] See the discussion in Shanahan’ Australian Law of Trade Marks and Passing Off (4^th edition) (“Shanahan”) at [50.2415] on this point and the cases there referred to.

2. I mention, too, that whether or not the parties’ goods are direct substitutes the one for the other, or are in direct competition, is not necessarily of particular relevance to the Opponent’s s 60 ground. In this regard the authors of Shanahan point out in their discussion of s 60 at [50.2415] that:

   Goods or services may be thought of as “associated” in some way because of some close trade connection between them.  …  [S]uch an association [was seen] between cosmetics and women’s clothing [Prestige Ltd v Potter and Moore Ltd (1939) 9 AOJP 3311 (Reg.)] on the basis that cosmetics are used as accessories in the advertising of clothing; carpets and rugs and textile machinery [HJ Lees & Sons (London) Ltd’s Application (1955) 72 RPC 75 (Ch D)], it being considered that the applicant’s goods might be thought of as having been produced by the opponent’s machinery; laxatives and chocolates [Hack’s Application (1941) 58 RPC 91 (Ch D)], chocolate being a common flavouring for laxatives; cigarettes and cigarette-shaped confectionery [“Players” Trade Mark [1965] RPC 366 (UK Reg); and see the similar “Woodies” Trade Mark [1965] RPC 366 (UK Reg)].

3. The final matter Mr Young raised was the lack of evidence from the Opponent of any instances of actual confusion or deception amongst relevant consumers. This is not however crucial to establishing the Opponent’s s 60 ground, nor does the absence of such evidence in this case surprise me. There is in fact no evidence before me indicating the nature, scale, duration or geographic extent of the Applicant’s use of the Trade Mark[24], if any[25], and I am thus unable to say whether the parties’ respective goods have been sold from the same outlets to any significant extent in any event.  Even if they were, given the cost of the goods in question is so relatively minor, it is perhaps unlikely a buyer, having realised his or her mistake, would make the effort to return the goods.

   [24] Again, I mention that admission of the Innes declaration would not have altered this assessment since the declaration did not address these issues in any but a cursory manner at best.

   [25] As mentioned in footnote 4 to paragraph 7 above, use of the words “Golden Food Kitchen” as a business name is not the same thing as use of those words as a trade mark for bread.

4. To conclude, I find I am satisfied on balance that because of the reputation of the GOLDEN Marks as a whole as at the Priority Date, use of the Trade Mark for bread was likely to at least cause confusion (in the sense discussed in paragraphs 41 and 42 above) amongst a significant number of relevant consumers.

5. The Opponent has accordingly established its ground of opposition under s 60.

   Decision

6. Section 55(1) of the Act provides:

   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.

7. I have found the opposition to be successful on the ground raised pursuant to s 60 of the Act. I accordingly refuse to register trade mark application number 1276989.

   Costs

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

   Michael Kirov
   Hearing Officer
   Trade Marks Hearings
   17 April 2012