Grape Co Australia Pty Ltd v Grapeco Pty Ltd
[2022] ATMO 203
•15 November 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Grape Co Australia Pty Ltd to registration of trade mark application 2062377 (31) – GRAPECO (Figurative) – in the name of Grapeco Pty Ltd
Delegate:
Nicholas Smith
Representation:
Opponent: Ian Horak of Counsel instructed by Phillips Ormonde Fitzpatrick
Applicant: Herbert Smith Freehills
Decision:
2022 ATMO 203
Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered – ground established – registration refused
Background
This decision concerns an opposition brought by Grape Co Australia Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Grapeco Pty Ltd (‘Applicant’):
Application Number:
2062377
Filing Date:
13 January 2020
Goods:
Class 31: Fresh fruits and vegetables; Raw and unprocessed agricultural, aqua cultural and horticultural products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; fruit trees; nuts
(‘Applicant’s Goods’)
Trade Mark:
(‘Trade Mark’)
2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
3. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed on 21 October 2020 by a Statement of Grounds and Particulars, later amended (‘SGP’). The SGP as amended raised grounds of opposition under ss 41, 42(b), 60 and 62A. The Applicant filed a Notice of Intention to Defend on 19 January 2021.
Evidence
The Opponent filed the following evidence in support of its opposition:
·Declaration made on 22 April 2021 by Adrian Caia, the Managing Director of the Opponent, with Annexures AC-1 to AC-15 (‘Caia 1’).
·Declaration made on 26 July 2021 by Adrian Caia, with Annexures AC-16 to AC-47 (‘Caia 2’).
·Declaration made on 26 April 2021 by Rodney Ian Lindsay Cruise, Principal, Phillips Ormonde Fitzpatrick, the representatives of the Opponent, with Exhibit RIC-1 to RIC-2 (‘Cruise 1’).
5. The Applicant filed the following evidence in answer:
·Declaration made on 17 September 2021 by Bruno Costantino, the Managing Director of the Applicant, with Exhibits BC-1 to BC-19 (‘Costantino declaration’).
The Opponent filed the following evidence in reply:
·Declaration made on 19 November 2021 by Adrian Caia, with Annexures AC-48 to AC-54 (‘Caia 3’).
·Declaration made on 22 November 2021 by Rodney Ian Lindsay Cruise, with Annexure RIC-3 to RIC-5 (‘Cruise 2’).
The entirety of the evidence filed by the Applicant, including publicly available information such as the public use of the Trade Mark is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:
The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.
This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]
[1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).
I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity. If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.
9. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing in this matter or a decision without hearing. On 22 December 2021 the Opponent requested an oral hearing. The matter was set down for a hearing by video-conference on 18 October 2022 and the matter was allocated to me. In line with usual practice, an email was sent to the parties on 1 August 2022 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 4 October 2022 (‘Opponent’s Submissions’). At the hearing Ian Horak of Counsel represented the Opponent. The Applicant did not file submissions nor did it appear at the hearing.
10. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.
In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.
The Opponent
The Opponent is an Australian company based in Victoria that supplies fruit and vegetables under the mark GRAPECO AUSTRALIA, both with and without a logo (‘Opponent’s Trade Marks’).
12. The relevant claims/statements in Caia 1 and Caia 2 can be summarised as follows:
· The Opponent supplies fresh and dried fruit in Australia under the Opponent’s Trade Marks. The Opponent’s Trade Marks have been used since 1 January 2014, with the declarant having designed the marks in 2013. Initially the marks were used by the Opponent’s predecessors in title but a business re-organisation took place in 2017-18 with all subsequent use having been by the Opponent.
· Grapes sold under the Opponent’s Trade Marks are sold throughout Australia to retail and wholesale customers, including through Woolworths and Coles. The Opponent’s Trade Marks are displayed extensively on the packaging, labels, supply trucks and are promoted on the Opponent’s website, Instagram and Facebook pages. The Opponent’s products are also frequently discussed in the media and the Opponent has advertised its products at Australian and international trade fairs.
· The Applicant has, in the metatags for its website, made reference to the Opponent, its sub-brands, and the declarant, indicating an intention to associate itself with the Opponent. The Applicant has also sought to amend the Opponent’s Google Business Listing to change the address and website from the Opponent to the Applicant. These actions have caused confusion between the businesses of the Opponent and the Applicant.
13. The annexures to Caia 1 and Caia 2 display images showing use of the Opponent’s Trade Marks as well as details of the sales of grapes under the Opponent’s Trade Marks. The sales figures provided contain gaps between the figures in 2014, which are not significant, and the figures in 2020, which are significant but mostly occurred after the date the Trade Mark had been applied for. This gap is addressed in Caia 3 which provides evidence of sales in 2017 and 2018 which are substantial. The Opponent does provide evidence of advertising expenditure between 2015 and 2020 which after 2017 is reasonably significant. The Annexures also contain evidence of confusion between the parties, including e-mails received by the Opponent intended for the Applicant.
14. Cruise 1 contains a report conducted on the Applicant’s website at which confirmed that prior to the application date the Applicant’s website contained metatags referring to the Opponent’s director and sub-brands.
15. In reply, Caia 3 contains the relevant claims/statements summarised below:
· The Applicant’s given evidence that it has used the GrapeCo Mark since 2005 should be treated with suspicion and a close read of the Costantino declaration does not show any evidence of the Applicant having used either the Trade Mark or the word GRAPECO as a trade mark prior to 2018. Nor is their any evidence of who created the Trade Mark or when.
· The declarant has been aware of the Applicant since 2015 when it purchased grapes from the Applicant. At the time the Applicant did not trade under the GRAPECO name and the declarant was not aware of the Applicant’s use of the Trade Mark until 2020.
· The Applicant has given evidence that the design and operation of its website was outsourced to a third-party corporation since 2008. The Applicant has neglected to give evidence that the third-party corporation’s sole director is Steven Costantino, Bruno Costantino’s son.
· The evidence of Cruise 2 is that the image file of the Trade Mark used on the Applicant’s website was created on 28 September 2018, which indicates that the Trade Mark was created after the Applicant became aware of the Opponent.
· The declarant believes that the Applicant adopted the Trade Mark to take advantage of the success of the Opponent in 2017 and 2018 and has engaged in a pattern of conduct in attempting to mislead the public and associate itself with the Opponent.
16. The annexures to Caia 3 provide further evidence of the Applicant’s actions in respect of the meta tags on its website.
17. Cruise 2 states that the Trade Mark was first displayed on the Applicant’s website on 26 February 2019 and the file displayed had a creation date of 28 September 2018. The declarant has also reviewed the Applicant’s evidence of the creation of the Trade Mark earlier and dismisses that, noting that the supposed earlier versions are in .pdf format with the date format not able to be established from the document itself.
The Applicant
The Applicant is an Australian company based in Victoria established in 1992 and claims to have traded under the GRAPECO brand since 2005.
19. The relevant claims/statements in the Costantino declaration can be summarised as follows:
· The Applicant has under the GRAPECO brand and the Trade Mark (‘Applicant’s Marks’) offered a variety of grapes and other fruit to consumers since 2005. It has developed a considerable reputation in the Applicant’s Marks since 2005 with considerable sales and advertising of the Applicant’s Marks.
· The Applicant supplies its products under the Applicant’s Marks to various retail suppliers including Coles, Woolworths, IGA and Harris Farm. It extensively advertises and promotes its products, including through its website at which it has operated since 2008. The Applicant’s website has featured the Applicant’s Marks since 2008.
· The Applicant has not attempted to trade off the reputation of the Opponent and has used the Applicant’s Marks, including the Trade Mark, since 2005. It has outsourced the operation of the Applicant’s website to a third-party provider and upon being made aware of the use of the meta tags, has directed their removal. The changes to the Opponent’s business listing were not made by the Applicant.
20. The exhibits to the Costantino declaration display images showing use of the Applicant’s Marks as well as details of the sales made by the Applicant under the Applicant’s Marks between 2015 and 2018 which are not unimpressive.
Grounds of Opposition, Onus and Standard of Proof
21. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 41, 42(b), 44, 60 and 62A. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established the s 60 ground of opposition. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.
22. The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the filing date 13 January 2020 (‘relevant date’), which is also the priority date for the purposes of s 60.[4]
Discussion
Section 60
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).
Section 60 is reproduced below:
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[5]
[5] The present paragraph and the following paragraphs summarising the requirements under s 60 are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[6] Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[7]
[6] [2000] FCA 1335, [81].
[7] (1992) 33 FCR 302, 343.
On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[8]
[8] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.
As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[9] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:
What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[10]
[9] (2000) 50 IPR 1.
[10] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
The Opponent has particularised the ground of opposition in the SGP in the manner set out below:
The Opponent has used the trade mark “GrapeCo Australia” as a trade mark in Australia since at least 2014 and has acquired a significant reputation in that mark in relation to the production and sale of fresh grapes. In light of that reputation, use of the Opposed mark would be likely to deceive or cause confusion as to the origin of the claimed goods:
I am satisfied on the evidence before me that the mark GRAPECO AUSTRALIA (in word and device form) had, before the relevant date, acquired a limited reputation in Australia for grapes and other fruit, sufficient for the requirements under s 60(a) under the relevant date. I reach this conclusion noting the that the Opponent had, at the relevant date, used the mark for 6 years, had very significant sales from 2017-2020 and had not insignificant marketing expenditure at the same time. The Opponent’s GRAPECO AUSTRALIA grape products had been sold through most of Australia’s leading supermarkets and the GRAPECO AUSTRALIA mark had been prominently displayed on the bags, tags and display boxes.
It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation, the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[11]
[11] (1937) 58 CLR 641, 658.
In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:
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.
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]
[12] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[13]
[13] [2012] ATMO 124, [40] (Hearing Officer Thompson).
While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[14]
[14] [2016] FCA 729, [142] (Yates J).
Finally I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Mark by the Applicant, rather than actual use or any reputation in the Trade Mark held by the Applicant.[15]
[15] See, for example, McCormick & Company Inc v McCormick [2000] FCA 1335 where it was established that the fact that the Applicant might have been an honest concurrent user is not relevant to the operation of s60.
In the present case, the trade marks are undoubtedly similar, each containing the same word ‘grapeco’. They are used for identical goods; the parties are direct competitors and the products sold are likely to be displayed (potentially and in reality) side by side at supermarket and fruit stores. The average consumer, when viewing grapes (and other fruit) bearing the Trade Mark is likely to discount the minor stylisation and grape device, with the word GrapeCo being the essential feature of the Trade Mark. Equally, consumers viewing the GRAPECO AUSTRALIA mark are likely to discount the ‘Australia’ element as geographically descriptive. In the context of the Applicant’s Goods being fast moving consumer products purchased by a large, non-specialist market across Australia, and the similarities between the respective marks, I consider it likely that consumers familiar with the Opponent’s GRAPECO AUSTRALIA mark would see the Trade Mark used for the Applicant’s Goods and be caused to wonder whether it might not be the case that goods bearing the GRAPECO AUSTRALIA mark and goods bearing the Trade Mark come from the same source or that the Applicant’s Goods were marketed under the license of the Opponent.
36. I find that, because of the reputation acquired by the GRAPECO AUSTRALIA mark, the use of the Trade Mark in connection with the Applicant’s Goods would be likely to deceive or cause confusion. The Opponent has established the ground of opposition pursuant to s 60 of the Act.
Decision and Costs
37. I have found the Opponent has established the ground of opposition it raised pursuant to s 60. As the Delegate of the Registrar, I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.
The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
15 November 2022
0
13
6