Greci Industria Alimentare, S.p.A v Pronto E Fresco Pty Ltd [Sec=Unclassified]

[2009] ATMO 77

TRADE MARKS ACT 1995

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

Re:Opposition by Greci Industria Alimentare, Societa per Azioni to registration of trade mark application 1023704(29) - PRONTO E FRESCO ITALIAN STYLE - filed in the name of Pronto E Fresco Pty Ltd

Delegate:	Terry Williams
Representation:	Opponent: Simon Williams, solicitor, of Spruson and Ferguson, patent attorneys Applicant: Chris Round, solicitor, of Middletons, solicitors
Decision:	2009 ATMO 77 S 52 opposition:  s 60 not established for restricted goods, 44(1) established but registration proceeding, on conditions, in view extensive use.

Background

1. Pronto E Fresco Pty Ltd (“the applicant”) has applied to register a trade mark in class 29 in respect of:

   Meat, fish, poultry, game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products: edible oils and fats

2. The application, 1023704, has a priority date of 6 October 2004.  The applied-for trade mark (“the applicant’s trade mark”) is as follows:

   The application has been examined and accepted for possible registration.  It is endorsed as follows: 

   The applicant has advised that the ITALIAN words appearing in the trade mark may be translated as QUICK/READY and FRESH.

3. A further endorsement shows that the application was accepted for registration under the provisions of sub-section 41(5) of the Trade Marks Act 1995 (“the Act”).  Very simply, that provision allows the acceptance of trade marks that are, among other things, descriptive.  Such an acceptance would require evidence of use or other circumstances showing that the trade mark was, in fact, capable of distinguishing the applicant’s goods from those of other traders.

4. Additional endorsements read: “Provisions of paragraph 44(3)(a) applied.  Provisions of paragraph 44(4) applied.”  Those provisions, put simply, allow the acceptance of a trade mark application under certain circumstances, despite an earlier and apparently conflicting trade mark in the name of another party.  I will come, shortly, to a detailed consideration of those provisions.

5. Registration of the applicant’s trade mark has been opposed by Greci Industria Alimentare, Societa per Azioni (“the opponent”), an Italian company.  The opponent is the owner of registered trade mark 922404 (“the opponent’s trade mark”), which has a priority date of 3 May 2002.  

6. The registration of the opponent’s trade mark, which is as shown below, gave rise to the endorsements to which I referred in paragraph 4:

7. The opponent’s trade mark is registered in classes 29 and 30 for the following goods:

   (class 29) Hors d'oeuvres, pickles, foods prepared from fish, preserved vegetable products, vegetable juices, salad dressings, soups, canned food, tomato juices, tomato purie, tripe, preserved fruits, stewed fruits, fruit jellies, fruit pulp, preserved meat, meat jellies, meat extracts, meat gravies, parmigiano-reggiano cheese, all the above for cooking purposes.

   (class 30) Seasonings and sauces; farinaceous foods

8. The parties have used the opposition process set out in part 5 of the Trade Mark Regulations 1995 to file (and serve copies of) evidence in support, answer and reply.  In addition, the opponent has requested, and a Deputy Registrar of Trade Marks has issued, a notice under s 202, requiring the applicant to produce certain documents (the s 202 documents) relevant to the adoption of its trade mark.  I will set out, below, the relevant parts of the evidence and the s 202 material.

9. Ultimately, s 55 requires the Registrar of Trade Marks to decide the opposition after giving the parties an opportunity to be heard.  Both parties requested to be heard and I conducted a hearing in Canberra, under delegation from the registrar.  At the hearing, the opponent was represented by Simon Williams, solicitor, of Spruson and Ferguson, patent attorneys.  The applicant was represented by Chris Round, solicitor, of Middletons, solicitors.

   Grounds considered

10. The opponent relies on a number of grounds but pressed, at the hearing, only the grounds under sections 44, 60 and 42(b).  Mr Williams conceded that the opponent bore the onus of establishing at least one ground of opposition but argued, in my view correctly[1], that this need be done only on the balance of probabilities.  For reasons which will become apparent, it will not be necessary to deal with all of the grounds of opposition.  Mr Williams’s written submissions dealt firstly with s 60, on which the s 42(b) ground is contingent.  However, it will assist readers of this decision if I deal first with the ground under s 44.

    [1] See Pfizer v Karam (2006) 70 IPR 599 and, more recently, Chocolaterie Guylian v Registrar of Trade Marks [2009] FCA 891 at paras 22-26.

    Section 44

11. The relevant parts of s 44 read as follows, leaving aside s 44(2).  I have, in the interests of brevity, set out the terms of the provisions referred to in the Notes, and added my own comments.

    Identical etc. trade marks

    44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

    (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

    (i) a trade mark registered by another person in respect of similar goods or closely related services; or
    (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

    Note 1:  For deceptively similar see section 10:  For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. Mr Round conceded that the applicant’s trade mark was deceptively similar to the opponent’s trade mark.

    Note 2:  For similar goods see subsection 14(1):  Similar goods are either the same goods, or goods of the same description.  Again, this element is not in dispute.
    Note 3:  For priority date see section 12.  The opponent’s trade mark has an earlier priority date than the applicant’s trade mark.

    (3) If the Registrar … is satisfied:

    (a) that there has been honest concurrent use of the 2 trade marks; or
    (b) that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose.  If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

    Note:  For limitations see section 6.

    (4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

    (a) beginning before the priority date for the registration of the other trade mark in respect of:

    (i) the similar goods or closely related services; or
    (ii) the similar services or closely related goods; and

    (b) ending on the priority date for the registration of the applicant's trade mark;

    the Registrar may not reject the application because of the existence of the other trade mark.

    Note 1:  An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

    Note 2:  For predecessor in title see section 6.

12. Those things being as they are, it is common ground that the opponent has an earlier registration, for a deceptively similar trade mark, for similar goods.  Thus, the fate of the application depends, initially, on the applicant being able to satisfy the provisions of s 44(3) and/or 44(4). 

    Section 44(3)

13. As I have already noted, the applicant’s trade mark was accepted for registration under the provisions of s 44(3)(a), the terms of which involve, fundamentally, honest concurrent use by the applicant.  At the hearing, I put it to Mr Round that I was far from satisfied that the applicant had established, for the purposes of s 44(3)(a), the honesty of the adoption of its trade mark. 

14. Mr Round noted the material constituting the s 202 documents, from which he argued the history of the matter could be gleaned.  The s 202 documents show that, in September 2008, the name PRONT (sic) FRESCO had been one of 19 possible options that would form the heart of the name of a company that would, ultimately, become the applicant.  (It appears that, from the beginning, the trade mark and the applicant’s name were intended to have a common core.)  Various names had been suggested but at that point, to quote from one of the documents, “none have won general approval from the group of 7 individuals who constitute the board”.  While the outcome of that process is obvious, the s 202 documents do not reveal how the short list was drawn up, or how the matter was finalized.  It seems, in fact, that the initial candidate for the name of the applicant company was to be “Devine Fresh”.  Be that as it may, by 10 October 2000, the s 202 documents show that the necessary application for registration as a proprietary company had been made under the name Pronto e Fresco Pty Ltd.  On that date the decision was apparently made to discard the one other alternative name, Pronto Alfresco Pty Ltd, but no reason for this is shown.  Subsequently, development of graphic elements to go with the words PRONTO E FRESCO was commenced.  The final artwork for what appears to be the original batch of 5000 “Pronto Brochures” was emailed to the applicant by the designers on 13 May 2002 to be approved for printing.  

15. Mr Round also noted a copy of a declaration made by Michele Pizza, who is (or was) the General Manager and a director of the applicant.  The applicant relied on the Pizza declaration, which was made in August 2005, at the time the presently-opposed application was before the examiner of trade marks before being accepted for possible registration.  However, the copy of the Pizza declaration that is in evidence in the present proceedings was introduced by the opponent, who obtained it in slightly redacted form under the Freedom of Information Act 1982 (the FOI Act). That copy thus forms an exhibit to the declaration of Giorgio Greci, the Managing Director of the opponent.

16. The Pizza declaration shows that the presently-opposed application is not the first time the applicant has applied to register the applicant’s trade mark. On 16 November 2001 the applicant filed application 895121 (“the lapsed application”) for goods identical to those listed in the presently-opposed application. The lapsed application did not proceed because, for whatever reason, the applicant did not respond to the examiner’s objection raised under s 41(5). Mr Round noted that, had the applicant prosecuted the lapsed application successfully, the applicant, rather than the opponent, would have been the first to register a relevant trade mark.

17. My concern, however, is with the subsequent matters set out in the Pizza declaration.  It is clear from reading this material that the applicant was well aware of the opponent’s trade mark by at least August 2005 and Mr Pizza has appended to his own declaration a copy of a relevant declaration by Mr Greci.  Mr Pizza accepts, in the declaration, that there has been concurrent use of the applicant’s and opponent’s trade marks “for almost 5 years”.  He uses the name Greci to identify the opponent.  He sets out his knowledge of the examination of the opponent’s trade mark, which he refers to as “the Cited Mark”, and declares:

    In order to overcome the Examiner's objection under section 41, Greci submitted a statutory declaration which detailed its use of the Cited Mark. The Statutory Declaration and exhibits are annexed and marked Annexure M.

    The statutory declaration refers to Greci having used the Cited Mark in Australia since 1997. To support the statement of use, Greci exhibited examples of the packaging of its goods sold by reference to the Cited Mark, provided sales figures for the goods and referred to its attendance at the Fine Food Exhibitions in March and September 2002. Greci was able to overcome the Examiner's section 41 objection solely through this declaration and its limited exhibits.

    The statutory declaration states that Greci's products are designed specifically for the professional catering industry (see paragraph 3 of Annexure M). The products are provided directly by Greci's Australian agents to various catering businesses in Australia (see paragraph 6 of Annexure M).

18. Mr Pizza goes on to make light of any risk of confusion, declaring:

    I believe that the goods sold by reference to each of the Trade Mark and the Cited Mark are sold through distinctly separate and different trade channels.  As mentioned above, Greci's products are sold direct to the catering industry at a retail level, while the Applicant's products are wholesaled to distributors.  Once the Applicant's products have left the hands of its distributors, 70% of products no longer bear the Trade Mark but rather the mark of the distributor.  Consumer recognition of the Trade Mark is therefore mainly in relation to the wholesale purchasers rather than the end retail customer as is the case with the Greci products.

    As a reflection of the above, the Applicant is unaware of any instances of confusion between the Trade Mark and the cited mark number 922404 PRONTOFRESCO which have been in concurrent use for almost 5 years.

19. However, the evidence of the opponent shows that, well before Mr Pizza made his declaration, the opponent’s former lawyers wrote a letter of demand to the applicant, requiring it to, inter alia, cease using the applicant’s trade mark.  An exchange of correspondence between law firms forms part of the opponent’s evidence in reply, and is illuminating.  Writing to the applicant’s lawyers, on 10 September 2004, the law firm then acting for the opponent said:

    We have been instructed by our client that notwithstanding the matters contained in our letter to each of your clients dated 5 August 2004 your clients have participated in the currently held Food and Wine Festival at the Melbourne Exhibition Centre.  We put you on notice that our client has advised us that during the exhibition, a number of traders/retailers have approached our client and enquired as to whether or not our client is holding two stores at the Exhibition Centre.  You will obviously appreciate the confusion being expressed in the market place concerning the carrying on of business by your client under the name "Prontoefresco".

20. None of this was mentioned by Mr Pizza when he made his declaration some 10 months later and submitted it to the examiner of trade marks.  Even so, Mr Round argued resolutely that his client’s adoption and use of the trade mark in Australia had been entirely honest.  At the hearing, I put it to him that his client had not explained when the applicant had first learned of the use in Australia of the opponent’s trade mark, or how the applicant’s trade mark came to be coined in the first place.  With those interlocking failures in mind, Mr Round was unable to identify anything in his client’s evidence that established, positively, the honesty of his client’s actions in adopting and using the trade mark, though he maintained that I could infer honesty from the facts of the case.  He asserted that, if the applicant had been aware of the opponent’s trade mark, the name would not have been thrown up in the exercise to which I have referred in paragraph 14, and which he categorized as a brainstorming session.  Had the board of the (yet to be incorporated) applicant been aware of the use of the opponent’s trade mark, he argued, PRONTO E FRESCO would not have been considered as an option.  He noted, moreover, that the opponent’s trade mark was first used in Australia only four years prior to the brainstorming session, and the opponent’s application for registration was not filed until two years after the session.  Mr Round noted that, in 2000, the opponent’s Australian annual sales were around $440,000.  This figure, from the Greci declaration in the opponent’s evidence in support, Mr Round characterised as “not overwhelming”.  However, the opponent’s claimed wholesale figure for 1997 is $192,000 and by 2000 the opponent had accumulated total wholesale sales of over a million dollars of sales under its trade mark.

21. Aside from this, I note that Mr Pizza declares only to use of the trade mark in respect of “antipasto”. 

22. In the present proceeding, the applicant has relied on a declaration by Sam Di Virgilio made in August 2007.  Mr Di Virgilio made his declaration in answer to the declarations in the opponent’s evidence in support.  Those are the declarations of Mr Greci, and Messrs Licastro, Fuscaldo and Triglia, distributors of the opponent’s products in various parts of Australia.  The applicant was also aware of the claims made by the opponent in prosecuting its own trade mark application, as I have previously set out.  Mr Di Virgilio’s declaration sets out a number of bases on which his company’s business could be distinguished from the trade conducted by the opponent.  He refers to the applicant’s goods as “vegetable antipasto”.  There is some tension between his declaration and that of Mr Pizza on that question.  However, exhibit C of Mr Di Virgilio’s declaration shows that some of the applicant’s antipasto mix products include cheese, and that it has offered a Marinara antipasto mix which includes baby octopus, scallops, calamari strips, shrimps and mussels as well as tomato.  It would appear that Mr Pizza, who appended a similar list to his own declaration, is thus correct.

23. Mr Round, for his part, was adamant in saying that his client had not knowingly adopted a foreign trade mark and sought to trade off its reputation.  As he said, moreover, “there is no evidence that the applicant selected the trade mark in anything but an honest fashion”.  Be that as it may, nowhere in Mr Di Virgilio’s declaration, or in the earlier one of Mr Pizza, is there any explicit support for Mr Round’s written submission that:  “The applicant was unaware of the Opponent’s Trade Mark at the time the (applicant’s) trade mark was adopted.”  I stress, in saying this, that I make no positive finding of dishonesty on the applicant’s part but, as I said to Mr Round at the hearing, the onus is on a party relying on the terms of s 44(3)(a) to demonstrate the honesty of its use including, critically, the adoption of the trade mark.  When, in the opposition forum, that party is on notice of another party’s extensive sales over a period of four years, I do not see how it can meet the necessary onus without divulging its own knowledge and motivations at the time it adopted its trade mark.

24. I note Mr Round’s reference to the other factors that are to be considered in deciding whether a trade mark that has been used honestly and concurrently despite the existence of a prior application or registration ought to be accepted[2].  Leaving aside the issue of honesty, I quote from his submissions:

    [2] Fitton's Application (1949) 66 RPC 110 applying the decision of the House of Lords in Alexander Pirie & Sons Ltd’s Application (1933) 50 RPC 147 (at 159-160 per Lord Tomlin). This test has been applied in Australia in McCormick & Co Inc v McCormack (2000) 51 IPR 102 (Federal Court) and ABB Asea Brown Boveri Ltd v ABB Grain Ltd (2001) 54 IPR 398 (Registrar of Trade Marks)

    The Applicant had nearly 3 years use at the time it filed the application for registration of the Trade Mark in October 2004.  If the Opponent's evidence is believed, it was concurrently using the Trade Mark for all of that time.  The Applicant has continued to use the Trade Mark and now has concurrent use in Australia of the Trade Mark for over 8 years. This is a long period of concurrent use.

    The Applicant has sold goods in Australia in greater volumes than the Opponent (Di Virgilio paragraph 14 and Greci II paragraph 16) although it is not essential that the Applicant's volume of sales be greater (Lyle and Kinahan Ltd's application (1907) 24 RPC at 259 (CA UK) see also Aromas Pty Ltd v Aroma Coffee & Tea Co Pty Ltd (1997) 40 IPR 75 (Reg)). The Applicant's volumes are steadily increasing each year.

    Sales of the Applicant's products bearing the Trade Mark have been made throughout Australia (see Di Virgilio para 12).

    Likelihood of confusion

    This is not a case of triple identity.  The Trade Mark is a device that also includes the words "Italian Style". The Opponent's Trade Mark is a word mark depicted in a stylised font. Registration should not therefore be any more difficult to achieve (sic).

    There is no reason for the Hearings Officer not to adopt the words of Graham J (Buler Trade Mark [1975] RPC 275 at 289) and find that "the degree of likely confusion is relatively unimportant … provided the honesty of the applicant is established and it is otherwise just in all the circumstances that the mark should be registered"

    Evidence of instances of confusion

    The Applicant is unaware of any instances of actual confusion. The Opponent can point to a solitary instance of confusion which occurred in late 2006[3]. It could not be said that the public has been inconvenienced when instances of confusion are so minimal.  In this respect Mr Licastro's bald assertions of confusion that are not backed up with names and dates must be discounted by the Hearings Officer.  If confusion between the Opponent's products and the Applicant's products was so great, Mr Licastro would have made notes of the instances of confusion. In this case he says "he does not recall all the details of all such instances of confusion" (Licastro paragraph 12)

    In the 3 years since this opposition commenced, the failure to accurately record alleged instances of confusion should result in the Hearings Officer giving this evidence little weight.

    Relative inconvenience

    The inconvenience to the Applicant of having to change its name and cease use of the Trade Mark would be enormous.  The Applicant would need to change its company name, signage, stationery, brochures and marketing materials, its website and its packaging.  The Applicant would need to re-educate its customers as to its new name which would be extremely inconvenient for a relatively small Australian business.

    The parties have co-existed for 8 years together with little difficulty.  The Applicant submits that this case is similar to the decision of Hearings Officer Farquhar in KMart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149 at 160[4] where she said "the opponent appears to have been able for 12 of those years to trade alongside the applicant with no apparent difficulty".  In this case the relevant period is 8 years.

    [3] Here Mr Round refers, not to any confusion alleged in the letter from the opponent’s former lawyers, which I have quoted above, but to another instance, set out in the evidence in support and to which I will come in due course.

    [4] It should be noted, however, that the competing elements of the respective trade marks in that case were A MART and K-MART, considerably less close than those now at issue

1. While I accept the generality of Mr Round's arguments, the applicant has not met the onus under s 44(3)(a) to give an account of its knowledge and motivations at the time it adopted the trade mark.  Even so, the applicant’s turnover has risen progressively and its current turnover is very substantial.  The opponent, for its part, has not seen fit to take legal action.  Simple pragmatism might well urge, therefore, that the applicant be granted the registration it seeks, albeit for suitably restricted goods.  

2. In my view, the provisions of s 44(3)(b) would potentially have been appropriate in the circumstances I have set out above.  I will leave further consideration of this aspect, pending my testing of the opponent’s case in terms of s 60, where the likelihood of deception or confusion as at the priority date of the opposed application will be critical.    

   Section 44(4)

3. Mr Williams was dismissive of the applicant’s case under s 44(4).  The Di Virgilio declaration is cast in the present tense and talks about what the applicant “does”.  The declaration baldly asserts that first use occurred in October 2000 but, in view of the history set out in the s 202 documents, I cannot accept that this was a commercial use of the trade mark to indicate the applicant’s goods available in the course of trade.  Mr Williams argued that such evidence could not establish prior continuous use in terms of s 44(4).  Mr Round argued that, taking the Di Virgilio and Pizza declarations together, a case had been made under s 44(4) albeit not for the entire range of goods claimed.  I note that, for the opponent, Mr Licastro gives evidence tending to confirm that both trade marks were in use at trade shows “from 2002”.  Consistently, Mr Di Virgilio quotes a turnover for the year ended 30 June 2002 of over 2 million dollars.  He goes on to declare that:

   I consider that 100% of the applicant’s revenue is derived exclusively from the goods to which the Trade Mark relates.

4. I find this qualification somewhat puzzling.  In the context of Mr Di Virgilio’s declaration, “The goods to which the Trade Mark relates” are the entire class heading for class 29.  I can only assume that, for reasons that he has not explained, Mr Di Virgilio was having some difficulty apportioning the applicant’s sales revenue accurately.  Leaving aside an inference based on the extent of the 2002 sales, there is nothing that would directly establish that the applicant was either selling, or advertising for sale, antipasto products under the applicant’s trade mark on or before 3 May 2002[5].  It might be said to defy common sense if I assume that sales of this magnitude could have arisen after 3 May but before 30 June 2002.  None the less, responsibility for demonstrating the date of first use of its trade mark falls on the applicant, who could and should have been able do so very easily.  I am not prepared to make an inference in the applicant’s favour on that absolutely critical question, particularly given the cautious terms in which Mr Di Virgilio has articulated the matter, and the inaccuracy with which he has typified the applicant’s goods as vegetable products.  Accordingly, s 44(4) is not applicable.

   [5] I discount, here, assertions made in The Age newspaper in an article in 2004.  The journalist appears, as Mr Williams noted, to have been relying on assertions made by Mr Pizza.

   Section 60

5. It is common ground that the unamended form of s 60 applies[6].  This provided:

   [6] As to the effects of the amending legislation, see Apple Computer Inc v Todaytech Group Ltd (2007 ATMO 40)

   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) 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 respect of 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.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For priority date see section 12.

6. This ground is potentially fatal to the applicant, since the provisions of s 44(3) are no answer to an opponent who can establish a ground under s 60.  Here I refer to the decision of Kenny J in McCormick & Co Inc v McCormick (2000) 51 IPR 102 at para 96.

7. Mr Williams, in his written submissions, dissected the opponent’s evidence and listed the specific products on which, I accept, the opponent has established use before the priority date of the presently-opposed application.  He argued that the opponent has established use in respect of a wide range of meat, fish, fruit and vegetable products, including what he called “gourmet antipasto products”.  A more detailed view of this comes from the evidence of Messrs Greci and, in particular, Triglia, to whom I have referred above.  Properly seen, the evidence shows that the opponent has exported to Australia a wide range of relevant dried or processed vegetables, substantially all of them in tins.  From the Greci declarations, these include peppers in olive oil, grilled artichokes, roasted peppers; baby aubergines; dried tomatoes, meadow mushrooms, baby artichokes, all in olive oil, and so on.  As Mr Di Virgilio pointed out, the opponent’s products are all imported from Italy, unlike the applicant’s, which require refrigeration. 

8. The opponent’s total sales, up to the priority date of the opposed application in October 2004, were somewhat over $1 million dollars.  It is perhaps reasonable to infer from those sales figures a quite significant reputation but Mr Round argued that the opponent’s reputation did not rise to a level sufficient to establish the s 60 ground as at the priority date.  He argued that, despite the sales values, the opponent had a limited presence in the Australian market, and that there was insufficient evidence on which I could be satisfied of what Kenny J called, in McCormick, supra “the recognition of the McCormick & Co marks by the public generally”.  Mr Triglia, originally the opponent’s sole agent for the entire of Oceania, he likened to a “one-man band”.

9. Section 60 requires me to consider what would happen if the applicant obtains registration for the goods set out in its application and proceeds to make ordinary and fair use of its trade mark for any of those goods.  That range of options is to be tested against the opponent’s actual use and reputation as at the priority date.  But in approaching that test I think I am entitled to ask, as Mr Round did at the hearing, why there is so little cogent evidence of confusion.  The applicant’s total sales for the period up to the priority date of the opposed application were at least $9 million dollars.  Its annual sales, in recent times, have been in excess of this.  Clearly, with such substantial sales, the lack of evidence of confusion suggests that there is some subtlety to the situation. 

10. One factor at work may be the precise nature of the applicant’s goods.  Mr Di Virgilio declares that the applicant produces only fresh antipasto products that need to be refrigerated.  This is sold either in large trays or in bags, in contrast to the tinned vegetable products of the opponent.  He says that the applicant does not conduct business with retailers.  It sells to its wholesalers, who in turn sell to retailers and to caterers and restaurants.  As to retailers, 70% of the applicant’s product is sold by the retailers with another trade mark (that of the distributor, not that of the applicant) applied.  For the remaining 30% of the product that is sold to retailers, the applicant’s trade mark is applied to the trays in which the goods are displayed.  Mr Di Virgilio declares that “The retail customers who brand the applicant’s goods with (the applicant’s) trade mark are limited and must be approved by the applicant.  In light of the above, it is primarily customers within the wholesale industry who identify the applicant’s product by reference to the trade mark.”  He does not quantify the volume of goods that is sold to the general public, under the applicant’s trade mark, via retailers.  But, as Mr Williams noted at the hearing, both the applicant’s and opponent’s products do make their way, to what I find to be an unquantified degree, to the counters of delicatessens, and from there are sold to the general public.

11. At the hearing, Mr Round was very critical of the single declaration that brings into evidence what the opponent argues is a clear instance of confusion.  This is set out in the Licastro declaration.  Mr Licastro is the proprietor of a firm that distributes the products under the opponent’s trade mark in Western Australia.  He is clearly a busy man, dealing with up to 25 customers a day.  He is therefore, so he has declared, unable to recall the details of the instances of confusion (“perhaps once a month”) that he alleges have occurred since 2003 when he says that the applicant started to promote its product in Western Australia.  Mr Licastro can recall, however, that “approximately 8 weeks ago … a man called Graham” rang to request samples and prices of the opponent’s PRONTOFRESCO products.  Mr Licastro sent the requested samples.  His declaration continues:

    About a week later I received a further telephone call from Graham, during which the following words, or words to the same effect were spoken:

    Graham said: I have received the products you sent.  I also contacted "Blue Cow Cheese" [which, I was aware to be another wholesale distributor of antipasti products (among other products) in Western Australia] for samples and prices of their PRONTOFRESCO products, however, their products are different from yours.  Why is that?

    I said: "Blue Cow Cheese" doesn't sell PRONTOFRESCO.  It sells PRONTO E FRESCO.  Our PRONTOFRESCO products and the PRONTO E FRESCO products are produced by different companies.

    Graham said: Oh, I see.  I thought "Blue Cow Cheese" sold PRONTOFRESCO products as well. I didn't realise there were two different products on the market.

    I recall that there have been other similar instances of confusion between the PRONTOFRESCO Products and the PRONTO E FRESCO Products since about 2003.  In particular, I recall that buyers from hotels, casinos and restaurants (which customers form my main market) have regularly said to me the following words, or words to the same effect:

    "Doesn't "Blue Cow Cheese" sell PRONTOFRESCO?" [by which I understood them the (sic) be referring to the PRONTOFRESCO Products].

    I also recall being asked similar questions by such buyers in relation to the products sold by Pisconeri Wholesalers, which wholesaler I am aware also sells the PRONTO E FRESCO Products.  For example, I recalling (sic) being asked by my customers in the following words, or words to the same effect:

    "Pisconeri sell "PRONTOFRESCO" too, don't they?" [by which I understood them the (again, sic) be referring to the PRONTOFRESCO Products].

12. Mr Round was rightly critical of the substance of this evidence.  It showed, he argued, that Graham was confused about the products sold by Blue Cow Cheese.  This was not, Mr Round said, necessarily indicative of confusion as to the trade mark in question.  Graham, for whatever reason, had an idea that products bearing the trade mark PRONTOFRESCO were sold in a particular store.  He does not explain how he came by that idea, and did not know that there were two different products on the market.  On a careful reading it does not appear that he has necessarily confused one trade mark with another.  Consistently, Mr Round noted that the trade marks in question are not identical.

13. There is more to it than this.  Aside from the fact that, so far as I can see, all of the opponent’s products that might be described as antipasto[7] are sold in tins, all of them bear, in addition to the opponent’s trade mark, the trade mark GRECI, the house mark of the opponent.  This appears to have been the case when Mr Greci made a declaration in 2005 in connection with the opponent’s own application to register its trade mark, 922404.  That usage is consistent with Mr Greci’s later declaration and with that of Mr Licastro, made in 2007.

    [7] I exclude, from that definition, the dried mushrooms sold in what appear to be heat-sealed bags and the tomato ketchup sold in tubs and in cardboard boxes containing sealed sachets of single-serve portions.

14. It would appear that, if there was confusion in 2007, the opponent has not done much to investigate its precise nature or to document it.  In summary, this is a case where careful testing in the market shows that the risks of confusion, while on the face of it quite real, are not in practice significant for the precise goods for which the applicant actually uses its trade mark.  Within those limits, the opponent has not established its s 60 ground.

    Decision

15. Section 55(1) reads as follows:

    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.

16. I find that the opponent has established a ground of opposition under s 44(1) and that the applicant has not established that it is entitled to the application of s 44(3)(a) or 44(4).  Beyond this, no other grounds have been established.  In particular, the opponent has not satisfied me that the proposed use of the applicant's trade mark in respect of antipasto would give rise to any significant risk of deception or confusion if suitably restricted.  I have also said previously, in paragraphs 25 and 26, that provisions analogous to s 44(3)(b) ought to be available to the applicant in respect of antipasto products, subject to suitable conditions. 

17. Those things being so, I refuse to register the application as it stands but if it is amended to relate only to “antipasto” it may proceed to registration.  Such registration would be need to be subject to necessary conditions to prevent the applicant expanding into precisely the sort of tinned or bottled commodities in which the opponent has traded.  Therefore, if registration proceeds, it will be on condition that:

    It is a condition of registration that the trade mark will not be used on any antipasto product that is not sold refrigerated.  The trade mark will not be used on any tinned or bottled antipasto products.

18. If registration proceeds, rather than simply amending the endorsements to refer to the provisions of s 44(3)(b), as has been done administratively in a number of instances over time, I will add a further endorsement to correctly reflect both the history of this matter and the decison that I am making, now, under s 55.  That endorsement will read:

    Registered after decision under s 55, in view of evidence of extensive use making such registration proper.

19. The trade mark application may, if the goods are suitably restricted, proceed to registration on those terms after one month from the date of this decision.  If the registrar has been served with a notice of appeal before that time, I direct that the application not be amended and that registration not occur until either a court so orders or until the appeal has been discontinued.

20. Even so, the opponent has succeeded to a considerable extent and I award costs against the applicant to the extent of the scale in the regulations.

    Terry Williams
    Hearing Officer
    30 September 2009