Greenpeace Australia Pacific Limited v Taylor

[2004] ATMO 7

TRADE MARKS ACT 1995

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

Re:Opposition by GREENPEACE AUSTRALIA PACIFIC LIMITED to registration of trade mark application 880904(1) - GREENPIECE - filed in the name of ROBERT DENIS TAYLOR and MARGARET VIVIENNE TAYLOR.

Date of Decision:

30 January 2004

Delegate:

Claudia Murray

Representation:

Opponent
Cameron Moore, of Counsel, instructed by Maurice Blackburn Cashman, Lawyers.
Applicant
Julia Baird, of Counsel, instructed by Griffith Hack Patent and Trade Mark Attorneys.

Decision:

1. Section 52 Opposition: registration refused - s 55(a)

2. Costs awarded against applicant

Background

1. Robert Denis Taylor and Margaret Vivienne Taylor (the applicants) filed trade mark application number 880904 on 29 June 2001. The subject of the application is the word trade mark:

   GreenPiece

2. The application was filed in class 1 of the International (Nice) Classification of Goods and Services, in respect of:

   Chemicals for use on/with plants; fertilisers and plant nutrients including, but not limited to liquid fertilisers and liquid nutrients for plants.

3. No grounds for rejection under the Trade Marks Act 1995 (the Act) were raised against the application during examination, which was expedited at the applicants' request. The application was advertised accepted for registration in the Australian Official Journal of Trade Marks on 1 November 2001.

4. On 1 February 2002, Greenpeace Australia Pacific Limited (the opponent) filed notice of opposition to registration of the trade mark. Six grounds of opposition were listed in the notice.

5. The parties' evidence in support, answer and reply was duly served and filed. At the end of the process, the opponent requested a hearing upon the matter. This was held before me, as a delegate of the Registrar, in Sydney, on 27 October 2003. Mr Cameron Moore, of Counsel, instructed by Ms Rebecca Gilsenan of Maurice Blackburn Cashman, Lawyers, Sydney, represented the opponent. Ms Julia Baird, also of Counsel, instructed by Mr Rohan Wallace of Griffith Hack Patent and Trade Mark Attorneys, Perth, represented the applicant.

   Evidence

   Evidence in support

6. The opponent's evidence in support of its opposition comprises a statutory declaration by Adam Foster, dated 30 May 2002. The declaration is supported by a comprehensive, indeed voluminous, collection of exhibits, Exhibits AF 1 to AF 65.

7. Mr Foster is the opponent's Finance and Administration Manager and Company Secretary. His declaration provides a brief history of the worldwide Greenpeace organisation. Mr Foster explains that the opponent is the Australia-Pacific arm of Greenpeace, which is an international association of national and regional non-government organisations. It is a company limited by guarantee, incorporated on 12 August 1983. Stichting Greenpeace Council, a foundation incorporated on 19 November 1979 under the laws of the Netherlands, coordinates the international activities of various Greenpeace organisations. It is the registered proprietor of several GREENPEACE trade marks, which the opponent is licensed to use in Australia.

8. Mr Foster further explains that Greenpeace is dedicated to protecting, preserving and enhancing the environment. He says it is the most internationally prominent organisation within the environmental movement, engaging in a multitude of campaigns and other public awareness raising activities under the trade mark GREENPEACE. The first Greenpeace organisation was formed in Canada in 1971, for a protest against US nuclear testing in Alaska. An Australian Branch was formed in 1978, originating from a campaign opposing whaling in southern Australia.

9. Mr Foster's declaration, together with its exhibits, provides a picture of the opponent as a highly motivated, well organised body, which at the date of filing of the applicants’ trade mark, had over 130,000 supporters, and seven branches in Australia. It is funded by donations from supporters, (which run into many millions of dollars), and does not seek or receive funding from governments, political parties or corporations. In addition to more traditional awareness-raising activities, it uses telemarketing and direct mailing techniques in order to attract new supporters to its ranks. It uses the services of media monitors to track the publicity it receives in the media, and engages consultants to conduct regular "Brand Health Reviews" of its trade mark. One such review, conducted in 2001, found that 985 of the 1001 people interviewed claimed to have heard of Greenpeace. 68 percent of those people claimed to be hearing something about Greenpeace every 1-3 months.

10. The six areas upon which the opponent focuses its campaign energies are Oceans, Forests, Climate, Nuclear, Toxics and Genetic Engineering. It is involved in advisory bodies, scientific committees and commissions for development of policy and legislation concerning better environmental practices. Between 1987 and 1997 it conducted a merchandising program, which sold a wide range of "environmentally friendly" products, for example a hand operated washing machine with detergent and various soap products, under the GREENPEACE trade mark. This marketing has now ceased.

    Evidence in answer

11. The applicant's evidence in answer to the opposition comprises four declarations. The first declaration is by one of the applicants, Robert Denis Taylor, dated 2 December 2002. Exhibits RT1 to RT8D accompany his declaration.

12. Mr Taylor's declaration provides a history of the adoption and use of the trade mark GREENPIECE by the business Flairform Products (Flairform), jointly owned by his wife and co-applicant, Margaret Vivienne Taylor. (While it is true that the applicants' trade mark appears in a very slightly stylised manner as GreenPiece on the application form, I will refer to it in basic capital letter form from this point. This is for convenience, and also in light of the manner in which the evidence shows the applicants often use it themselves.) Flairform manufactures chemicals, nutrients and fertilisers for the horticultural industry and primarily for use in the hydroponics industry. Mr Taylor declares that he and his wife chose the GREENPIECE name in 1991, in accordance with their policy to choose product names that attempted to be concise and suggest a claim relevant to the product. Their choice was in no way influenced by the existence of the Greenpeace oganisation, and they saw no connection between that organisation and their products.

13. Mr Taylor explains that the couple's first choice for a fertiliser name, FLOWERPOWER, had to be abandoned when they found another party, with whom they had discussed the name, had already filed a trade mark application for it. Then, after several weeks of consideration, the combination of "Green" and "Piece" was chosen, because it alluded to the effects of a fertiliser in creating a lush "piece of greenery", and made a compatible combination of syllables.

14. Mr Taylor's declaration gives details of sales and advertising which demonstrate a solid and continuing use of the trade mark since 1994, (older documentation having been discarded).

15. The remaining three declarations comprising the applicant's evidence are made by Peter Calleja (dated 2 December 2002), Kim Geoffrey Brown (dated 28 November 2002, with Exhibit KB1), and Graeme Plummer (dated 28 November 2002, with Exhibit GP1). These declarants, all with long experience in the hydroponics trade, attest to their knowledge of both the applicant's use of its GREENPIECE trade mark, and the use of GREENPEACE by the opponent, and also to the absence of any association drawn by them, or by their customers, between the two.

    Evidence in reply

16. The opponent's evidence in reply comprises a single declaration by Rebecca Gilsenan, solicitor, employed by Maurice Blackburn Cashman, for the opponent. The declaration is dated 4 March 2003, and accompanied by Exhibits RG-1 to RG-18. Responding to the previous declarants' comments that any confusion between the applicant's and opponent's use of their trade marks is unlikely because Greenpeace is not engaged in the manufacture or sale of chemicals or fertilisers, Ms Gilsenan gives example of other organizations, such as Planet Ark and the World Wildlife Fund, which currently associate their names with various products. 

    Grounds of opposition

17. At the hearing, Mr Moore explained that the opponent intended to press four out of the six grounds it had listed in its notice of opposition, although it was "not abandoning" the other two. The two grounds it would not be pressing were those under sections 43 and 58. Regarding the former, Mr Moore indicated that a recent reading of Virgin Enterprises Limited v Defiance Energy Pty Ltd [2003] ATMO 13 (26 February 2003), had led him to suspect that his arguments based on that ground may fall on less-than-receptive ears. Grounds under sections 44 and 60 were the primary grounds being actively pursued by the opponent, with arguments canvassed in relation to section 41 to be weighed by me only if I found the section 60 ground unsuccessful. Arguments raised by Mr Moore in terms of section 42 were also secondary to the opponent's case under section 60. I will deal with the grounds of opposition in the order in which the opponent raised them.

    Section 60 - trade mark with a reputation in Australia

18. To satisfy section 60, the opponent must demonstrate that at the time of filing of the opposed application, it had a reputation in a substantially identical or deceptively similar trade mark, such that use of the applicant's trade mark would likely cause the public to be deceived or confused. The definition of "deceptively similar" in section 10 is that "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". The mark relied upon need not be the subject of a trade mark application or registration, or be used in relation to similar goods or services, (as provided for under section 44).

19. Arguing that the trade marks in question, GREENPIECE and GREENPEACE, were substantially identical, Mr Moore cited the standard test in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at page 415:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106.

20. He argued that the "total impression of resemblance" between the marks was strong, because the composite word GREENPIECE did not suggest a "piece of green", as its component elements may do, but instead was a "novel and interesting word substantially identical to GREENPEACE.

21. Mr Moore observed that the trade marks were aurally substantially identical. He said that, although this factor may not appear relevant to Windeyer J's visually-based test for substantial identity, it was certainly a factor for consideration in the classic test for deceptive similarity, set out in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641, page 658. He then cited Registrar of Trade Marks v Woolworths Limited 45 IPR 411 at page 428, where French J summarises (allowing for the onus being on the opponent, rather the applicant, under the Trade Marks Act 1995), the essential elements for determining deceptive similarity between trade marks. This test was first set out in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at pages 594-5.

22. Mr Moore argued that, allowing for the normal and fair use of the applicant's trade mark after registration, GREENPIECE plant chemicals, fertilisers and nutrients may be sold in the ordinary course of retail trade in hardware stores, garden shops and the gardening sections of stores such as K-Mart and Woolworths. Consumers purchasing products in these environments should not be assumed to be giving trade marks close or careful consideration, they may spot and select goods quickly. They may also make telephone enquiries to such stores, in which case they would have no means of differentiating between the trade marks at all. Taking into account all the circumstances, said Mr Moore, it followed that the trade marks in question were deceptively similar.

23. In response, Ms Baird argued that the same tests cited by the opponent in fact supported her contention that the trade marks were neither substantially identical nor deceptively similar. She submitted that the visual differences between the spelling of the two trade marks and the very different idea thereby conveyed greatly diminished the likelihood of any real tangible danger of confusion. She said:

    The central ideas conveyed by the trade marks are vastly different. The central idea engendered by the [applicant's] Mark is directed by the word 'PIECE' in relation to plants (the goods qualifier in the Specification), namely that the particular plants in respect of which goods under the Mark are used will be healthy and grow. The central idea engendered by the [Greenpeace] Marks is of cessation of hostilities in the environment... In each mark, the components are used to different effect.

24. Turning to the opponent's reputation, Mr Moore argued that the evidence established an "extraordinary public awareness of GREENPEACE" and an "extraordinary level of publicity generated by [the opponent] under the mark GREENPEACE". Further, he submitted that there is a close connection between the applicant's goods and the campaigns waged by the opponent against environmental degradation by such chemicals as plant fertilisers and nutrients. He also pointed to the evidence that the opponent itself had, for a long period, promoted environmentally friendly versions of products such as detergents and laundry powder, otherwise known to be destructive to the environment. Although this was no longer the case, other organisations, such as Planet Ark, continue the practice today. Taking all these factors into account, said Mr Moore, it followed that consumers would expect that a fertiliser or nutrient product marketed under the GREENPIECE trade mark was made by, or endorsed by, the Greenpeace organisation.

25. Ms Baird responded that the opponent's evidence had not demonstrated it had the requisite reputation for success under section 60. She said the evidence showed the "narrow focus" of the opponent's existence, to conduct specific environmental campaigns and to raise public awareness of those campaigns. It had not expanded its activities into any horticultural products, or commercial products generally. Further, she said:

    Espousing the aims of environmental protection and "treading lightly on the Earth", whilst they may be associated with using less toxins and more organic originated products have no real relationship with the production of plant fertilisers, chemicals and nutrients.

26. Finally, Ms Baird cited the applicant's evidence of a lack of deception and confusion between the trade marks over ten years, as attested to by the four trade declarants, as being persuasive that there was no tangible danger of deception having occurred, or being likely to occur in the future.

27. Applying the authorities cited by both parties, I agree with Ms Baird that a side-by-side comparison of the trade marks reveals differences in appearance and attendant meaning in the essential components PIECE and PEACE that militate against a finding that the marks GREENPIECE and GREENPEACE are substantially identical. However, in terms of deceptive similarity, when the aural identity of the trade marks, and the surrounding circumstances of notional use that may be made of the applicant's mark are taken into account, my finding must be different. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, say, at page 658:

    The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

28. Here, I agree with Mr Moore. The meaning, "piece of green", contained within the applicant's trade mark is somewhat obscure. The fact that it requires a thought process (however short) to be arrived at, would not assist people making a quick purchase, and coming across GREENPIECE for the first time, to make a strong association with that meaning, which might later assist them in differentiating it from the opponent's mark. Instead, they may be more likely to jump to the conclusion, as Mr Moore suggests, that the mark GREENPIECE is simply a “play” on the more familiar word GREENPEACE. The difference in spelling and associated meaning would, of course, be invisible to anyone conducting a purely aural transaction involving the trade mark. I find the trade marks are deceptively similar.

29. The above observation leads me to the final component of section 60, which relates to the opponent's reputation. An opponent's trade mark may be deceptively similar to that of an applicant, as here, and yet that trade mark may not have had a sufficient reputation at the relevant date to result in the applicant's use of its own mark causing deception and confusion of the public. The applicant has relied upon its trade evidence as demonstrating that the opponent's reputation does not in fact make the grade. However, as Mr Moore pointed out, this evidence is "at best unhelpful and at worst positively misleading". The three declarants are familiar with the applicant's product, have a commercial relationship with the applicant, and are retailers in a specialist field. They cannot be fairly deemed representative of the ordinary person that Dixon and McTiernan JJ had in mind.

30. That ordinary person, by the opponent's evidence, (and confirmed by my own experience) is overwhelmingly likely to have heard of Greenpeace and its activities, indeed, is likely to be accustomed to hearing of it at least every three months. A fundamental focus of the movement is monitoring and acting to combat the effects of toxins on the environment. The applicants’ goods are chemicals for use on plants. There is a connection to be drawn here which, taking into account the familiarity of the Australian community with the name GREENPEACE, must be almost inevitable. I am convinced that the applicant's use of its trade mark, even in its own specialised field, and certainly in the broader field encompassed by the goods of its application, must inevitably result in a substantial number of customers wrongly assuming some sort of connection with the opponent.

31. It may well be true, as Mr Taylor has declared, that the applicants saw no connection between their goods and the Greenpeace organisation when they adopted and began to use their trade mark in the highly specialist field of hydroponics, in 1991. However, the operation of section 60 goes only to the elimination of deception and confusion of the public where that confusion is established to result from the reputation (at the relevant date) of a substantially identical or deceptively similar trade mark relied upon by an opponent. It takes no account of long use by an applicant of its trade mark, however honestly made. (See: McCormick &Co v Mary McCormick (2001) 51 IPR 102 at 132.) I find the opponent's ground of opposition under section 60 to be successful.

    Section 44 - substantially identical or deceptively similar trade marks

1. Subsection 44(1), applied to the present circumstances, provides that an application for registration must be rejected if it is substantially identical, or deceptively similar, to another person's trade mark application or registration that has an earlier priority date, and covers services that are closely related to the applicant's goods. While subsection 14(2) provides that services are similar to other services if they are the same as, or of the same description as, those other services, the legislation provides no further elaboration upon how services that are "closely related" to particular goods may be determined.

2. Mr Moore indicated that the opponent had a number of registrations, in respect of both goods and services. However, for the purposes of its arguments under section 44, it would rely only upon the following service registrations, all of which have a priority date earlier than that of the subject application. Details of the registrations are:

TM No.	Trade Mark	Filing Date	Class	Statement of Services
429054	GREENPEACE	28 June 1985	35	Providing advices relating to advertising in the field of environment protection; furnishing and delivery of facts and information relating to advertising with regard to the subject of environment protection
429055	GREENPEACE	28 June 1985	41	Providing educational advice with regard to environmental problems and in the field of environment protection; furnishing and delivery of facts and information for educational purposes with regard to the subject of environment protection
429056	GREENPEACE	28 June 1985	42	Advisory services regarding environment protection and nature conservation

1. Mr Moore referred to his previous arguments under section 60 that the trade marks were substantially identical or deceptively similar. He further argued that the goods of the GREENPIECE application, being goods "which concern the control or development of plants", were closely related to the various advisory services regarding environmental problems covered by the opponent's registrations. The opponent's evidence did not touch upon any such relationship between the goods and services. Ms Baird responded that the public would simply not expect the same business to supply both the opponent's educational and advisory services and the applicant's horticultural chemicals.

2. The issues here are different from those covered by section 60, where the opponent's reputation is a paramount consideration. I have already found, above, that the trade marks at issue are deceptively similar. I must now consider whether the goods and services in question are closely related.

3. In Kellegg Co v Exxon Corp (2001) 53 IPR 177 at page 183, Hearing Officer Williams indicated that the appropriate course for the Registrar's delegate is to proceed on the assumption that goods and services are not closely related unless the contrary is established to the necessary degree. The Full Federal Court in Registrar of Trade Marks v Woolworths Limited, supra, explored the question of reversed onus under the new legislation in some detail. In Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 (27 August 2003), a recent case before a single judge of the Federal Court, Bennett J dismissed the appeal, finding that the appellant had not adduced any convincing evidence to support its opposition case. Citing Woolworths, she observed at paragraph 129:

   In oppositions (and appeals from them) the question of onus is particularly important.

4. It appears to me that, for practical purposes, the goods and services in question here are not closely related. The opponent has not discharged the onus upon it to make its case to the contrary, having directed most of its energies into arguments under section 60, where it has succeeded. Here, I find its ground of opposition under section 44 to be unsuccessful.

   Section 42 - use of trade mark contrary to law

5. Subsection 42(b) of the Act provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. Mr Moore submitted that the applicant's use of its trade mark on the goods in its application would be contrary to law under section 42, because such use would contravene section 10 of the Fair Trading Act (1987) (WA), and equivalent legislation in other States. This legislation is equivalent to section 52 of the Trade Practices Act 1974 (the TPA), but relates to persons rather than corporations. Section 52 of the TPA provides:

   (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

6. Mr Moore cited Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 and Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431 (Equity Access). He quoted from these cases several principles to be applied in determining whether a breach of the TPA or equivalent legislation has occurred. These included that, for conduct to be misleading or deceptive in terms of the TPA, it must convey a misrepresentation. Further, there must be a real or a not remote chance or possibility of the relevant consumers being misled or deceived.

7. A finding under section 42 of the Trade Marks Act 1995 requires, in effect, two separate, consecutive findings to be made. Only the second of these is within the Registrar's actual jurisdiction. The first is, to quote Madgwick J in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, at paragraph 22, merely an "expression of an opinion upon a hypothesis". However, the threshold to be met under section 52 of the TPA is higher than that set by section 60 of the Act. Shanahan's Australian Law of Trade Marks and Passing Off, 3^rd Edition, 2003 at page 598 states: "Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice". In Equity Access, Hill J quotes at paragraph 77, an earlier summary by Lockhart J:

   Section 52 is not concerned with conduct where the risk of infringement is remote. The risk must be a real risk in a practical sense and in all the circumstances.

8. I have found above that the opponent has made its case in terms of section 60. Its evidence did not go to a case meeting a higher threshold of misleading or deceiving, and Mr Moore's brief submissions have not convinced me. Under these circumstances, whether or not I might postulate that the applicant has engaged in conduct that could be contrary to law, I am not able to form a view that there has been conduct that would be so contrary. (Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd, supra, paragraph 28.) The opponent's case under section 42 has not been successful.

   Decision

9. I have found the opponent to have succeeded upon the section 60 ground argued at the hearing. As the opponent argued its ground under section 41 on the proviso this be considered only if it was found not to have made its case under section 60, I do not need to deal with it here. For completeness, and as I have no basis to be satisfied that the other grounds not pursued at the hearing have been made out, I find those grounds to be unsuccessful. Subject to a successful appeal from my decision, I refuse to register trade mark application number 880904.

   Costs

10. The opponent has sought and is entitled to its costs in this matter. Accordingly, I award costs, according to the official scale, against the unsuccessful trade mark applicants, Robert Denis Taylor and Margaret Vivienne Taylor.

    Claudia Murray
    Hearing Officer
    Trade Marks Hearings
    30 January 2004