Hatton Holdings (Vic) Pty Ltd as Trustee for the Hatton Holdings (Vic) Trust v Knead (Holding) SAL

[2023] ATMO 20

TRADE MARKS ACT 1995

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

Re:Opposition by Hatton Holdings (Vic) Pty Ltd as trustee for the Hatton Holdings (Vic) Trust to registration of trade mark application number 1982635 (class 43) – ZAATAR W ZEIT - in the name of Knead (Holding) SAL

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: Frances St John of counsel, instructed by Michelle Eadie and Tim Burn-Francis of Simpsons Solicitors

Decision:

2023 ATMO 20

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58 and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Hatton Holdings (Vic) Pty Ltd as trustee for the Hatton Holdings (Vic) Trust (‘Opponent’) to registration of the following mark:

Trade mark number:      1982635

Trade mark:   ZAATAR W ZEIT (‘Trade Mark’)

Applicant:   Knead (Holding) SAL (‘Applicant’)

Filing Date:   10 January 2019

Specification:  Class 43: Restaurant services; services for providing food and drink; takeaway food and drink services; food and drink catering; bakery services; cafe services; coffee shop services; restaurant reservation services; temporary accommodation (‘Applicant’s Services’)

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

2.     The Trade Mark was examined, accepted for possible registration and acceptance advertised on 29 August 2019.

3.     The Opponent filed a Notice of Intention to Oppose on 29 October 2019, followed by a Statement of Grounds and Particulars (‘SGP’) on 29 November 2019.  On 18 December 2019, a Notice of Intention to Defend the opposition was filed by the Applicant.

4.     The parties then had the opportunity to file evidence.  The Opponent filed Evidence in Support (‘EIS’) of the opposition on 19 March 2020.  After a cooling off period and extension of time, the Applicant filed its Evidence in Answer (‘EIA’) on 23 November 2021.  The Opponent did not file any Evidence in Reply.

5.     Following the conclusion of the evidence stages, the Applicant requested a hearing by video conference and I heard this matter as a delegate of the Registrar of Trade Marks on 3 February 2023.  The Applicant filed a written summary on 27 January 2023 and at the hearing, Ms Frances St John of counsel, instructed by Simpsons Solicitors, appeared on behalf of the Applicant.  The Opponent did not ask to be heard.  I have made this decision based on the particulars set out in the SGP, evidence of the parties and submissions of the Applicant.

Grounds of opposition, onus, and relevant date

6.     In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 44, 58 and 60.  

7.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

8.     The date at which the rights of the parties are to be determined is 10 January 2019 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Evidence

9.     The following evidence was filed:

·     EIS:

Declaration of Mr Charbel Elrahi, director of Opponent, made on 19 March 2020, with Annexures CE-1 to CE-37 (‘Elrahi Declaration’).

·    EIA:
Declaration of Mr Donald Daccache, Chairman-General Manager of Applicant, made on 16 November 2021, with Annexures DD 1 to DD 15; and

Declaration of Ms Michelle Eadie, lawyer at Simpsons Solicitors, made on 22      November 2021, with Annexures SS1 to SS8.

EIS

10.   Mr Elrahi attests that the Opponent has been in the restaurant business since at least 2009 when its predecessor in title, Wagway Group (‘Wagway’) began operating a café/restaurant, bakery and food wholesaling business named ‘Zaatar Middle Eastern Food’ in Coburg, Victoria (‘Opponent’s Business’). 

11.   Since commencement of the Opponent’s Business, the Opponent has used the marks below  in connection with the Opponent‘s Business (collectively ‘ZAATAR Marks’):

ZAATAR
(‘Opponent’s Unregistered Mark)

12.   Mr Elrahi declares that, at the time of his declaration, the Opponent was the owner/applicant of registered trade mark number 1511172 and pending trade mark numbers 1991325 and 1992127, which applications have since lapsed.   Details of registration 1511172 are below:

Trade Mark Number	Trade Mark	Priority Date	Specification
1511172	(‘Opponent’s Registered Mark’)	29 August 2012	Class 30: Pizza Class 43: Restaurants, cafes (‘Opponent’s Goods and Services’)

13.   In March 2015, the Opponent and two other entities acquired the Opponent’s Business and these entities were licensed to use the ZAATAR Marks. Ownership of the ZAATAR Marks was later transferred to the Opponent in March 2016. Mr Elrahi states that the Opponent’s licensee, BBLB Pty Ltd (‘BBLB’), has been granted rights to use the intellectual property of the Opponent’s Business, including a formal licence granted in February 2017 to use the Opponent’s Registered Mark and the Opponent’s Unregistered Mark. Mr Elrahi declares that since March 2015 BBLB has been running the Opponent’s Business under and by reference to these marks.

14.   The EIS annexes various examples of purported use of the ZAATAR Marks including on food and catering menus, pizza boxes, packaging, labels, store signage, merchandise, uniforms, social media, the Opponent’s website at third party websites such as and third party publications such as Jetstar Australia’s magazine.  The Elrahi Declaration includes the Opponent’s approximate annual advertising expenditure for financial years 2016-2020 and a digital marketing report showing customer reach and engagement with the Opponent’s social media platforms.

15.   Further, Mr Elrahi declares that the Zaatar Business has been frequented by a number of celebrity chefs prior to the Relevant Date, has been featured on the television show ‘Postcards’ in 2016, and is involved in a popular food tour called ‘Flavours of Coburg’. In addition, the Opponent has been involved in the Good Friday Appeal between 2016-2019 which resulted in 10,000 people attending the Opponent’s restaurant for one day each year in support of the appeal.

16.   Mr Elrahi declares that the Zaatar Business ranks on TripAdvisor as #7 of 96 restaurants located in Coburg (based on 57 reviews) and was a TripAdvisor ‘Certificate of Excellence 2017 Winner’. Further, Mr Elrahi attests that the Opponent’s restaurant has a rating of 4.4 out of 5 based on 929 Google reviews.

EIA

17.   Mr Dacccache attests that the Applicant and its sister company, Breakfast & Co. S.A.L. (‘B&C’), both incorporated in Lebanon, have established and operate an international, fast growing, urban restaurant franchise under the brand ZAATAR W ZEIT (‘ZWZ Business’) specialising in Lebanese street food. Mr Daccache states that B&C is licensed by the Applicant to use trade marks protecting the ZAATAR W ZEIT brand in certain territories.

18.   Mr Daccache declares that ‘Zaatar’ (or ‘Za’atar’ in Arabic) is a thyme-based spice mix used in Middle Eastern cuisine, and the term ‘Zeit’ means ‘oil’ in Arabic. Accordingly, the Trade Mark translates to ‘spice mix and oil’ in English.

19.   The Applicant’s first restaurant operating under the Trade Mark opened in Lebanon in 1999 specialising in traditional Lebanese dough-based foods such as manousheh, a Lebanese version of pizza.  In 2003, the Applicant started expanding and now has 65 restaurants operating under the Trade Mark in 7 countries including Canada.  By 2030, the Applicant plans to have 30 restaurants in Australia and 400 restaurants in North America as well open a further 175 restaurants in the Middle East.

20.   The ZWZ Business is promoted on the Applicant’s website at (‘Applicant’s Website’) and on its social media accounts (Facebook, Instagram and Twitter).  The ZWZ business is also referenced on TripAdvisor, Zomato and Wikipedia. 

21.   The Daccache Declaration annexes a Google Analytics report showing that between 1 September 2017 and 5 February 2018, the Applicant’s Website was visited over 300 times by Internet users based in Australia and evidence that over 1,800 people in Sydney are fans of the Applicant’s Facebook page. Further, Mr Daccache declares that Australian customers frequently visit ZAATAR W ZEIT restaurants in Lebanon, as evidenced by Australian mobile numbers that customers must enter in order to access WiFi in the restaurants. Mr Daccache also attests that there has been some online targeting of Australian consumers, particularly inviting Australians to order ZAATAR W ZEIT food and beverages for their mothers in Lebanon on Mother’s Day.

22.   Mr Daccache notes that the Applicant is the owner of the following Australian trade marks:

Trade mark number	Trade Mark	Specification	Priority Date & Status
1906670	(‘ZAATAR W ZEIT Logo’)	Class 29:  Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats Class 30:  Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice Class 35:  Advertising; business management; business administration; office functions Class 41:  Education; providing of training; entertainment; sporting and cultural activities Class 43:  Services for providing food and drink; temporary accommodation	13/2/2018 Registered
1907489	ZAATAR W ZEIT	Class 29:  Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats Class 30:  Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice Class 35:  Advertising; business management; business administration; office functions Class 41:  Education; providing of training; entertainment; sporting and cultural activities	16/2/2018 Registered

23.   Mr Daccache declares that in 2018, Australian consumers contacted the Applicant via its Facebook page advising of a restaurant opening under the name ZAATAR W ZEIT in Sydney. One consumer asked the Applicant whether this restaurant was ‘part of the same company’. The Applicant and B&C commenced legal action and obtained an interim injunction against the third party restaurant using a logo identical to the ZAATAR W ZEIT Logo on the basis of copyright infringement.

24.   Mr Daccache opines that the word ZAATAR is commonly used in connection with Middle Eastern food, and therefore no one party can claim exclusive rights over it in relation to food and beverage goods and services. Mr Daccache also states that he is not aware of any instances of confusion between the parties and their respective marks.

25.   Ms Eadie attests to conducting a range of online searches including of the Australian trade marks database, the Australian Business Register, the Australian Securities and Investments Commission online business and company name database, White Pages and Yellow Pages telephone directories, and Google. Some of the more relevant search results include:

• Trade mark registration number 1786692 Zaataria in classes 30 and 43 registered from 31 July 2016 and 1928393 ZAYT & ZAATAR covering restaurant services registered from 22 May 2018.
• Various business name registrations including (with location): Zaatar and Juice (NSW), Mr Zaatar (NSW), Zaatar (Vic), Zaatar Bakery (Qld), Zaatar Express (Vic), Zaatar House (Vic), Zaatar Pizzeria (NSW), Zaatar Bakery (NSW), zaatar and dough (NSW), Zaatar Lebanese Bakery (NSW), Zaatar Bakery and Café (Vic), Za’atar Middle Eastern Kitchen (NSW), Zaatar Middle Eastern Bakery (Vic) and Zaataria (NSW).
• Various current company names including Zaatar Bake Pty Ltd, Zaatar Coffee Pizza Pty Ltd, Zaatar Hut Pty Ltd, Zaatar on West Pty Ltd, Operation Zaatar Pty Ltd, Zet & Zaatar Pty Ltd, Zesty Zaatar Pizzeria Pty Ltd and Zaatar Lebanese Bakery Pty Ltd.
• Telephone directory listings for ‘Zet & Zaatar Bakery’ (Fawkner, Victoria) and Zaatar Café Pty Ltd (Rydalmere, NSW).
• Facebook, Trip Advisor and Internet website pages for various restaurants/caterers, namely: Mr Zaatar (Wollongong, NSW), Zaatar Lebanese Bakery (Dural, NSW), Operation Zaatar (Eastwood, NSW), Za’atar (Brunswick, VIC), and Zayt & Zaatar (Campbeltown, SA).

Discussion

Section 44

26.   Section 44 relevantly provides:

(2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)  it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of   similar services or closely related goods; or

(ii) a trade mark whose registration in respect of similar services   or closely related goods 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 services is not earlier than the priority   date for the registration of the other trade mark in respect of the   similar services or closely related goods.

27.   To succeed on this ground, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services or closely related goods.

28.   In the SGP, the Opponent nominated the Opponent’s Registered Mark as the basis for this ground of opposition.

29.   The Opponent’s Registered Mark is held in a name other than the Applicant and has a priority date which is earlier than the Relevant Date.  Further, the services of this registration are clearly similar to the Applicant’s Services.  Accordingly, the relevant question is whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Registered Mark.

30.   The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

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.[4]

[4] [1963] HCA 66, [12].

31.   It is apparent from a side by side comparison of the Trade Mark and the Opponent’s Registered Mark that there are obvious differences such that there is not a total impression of similarity.  Whilst the two marks have the word ZAATAR in common, the Trade Mark includes the distinctive and memorable element ‘W ZEIT’ whereas the Opponent’s Mark incorporates a distinctive device and descriptive phrase.  Hence, the Trade Mark is not substantially identical with the Opponent’s Registered Mark.

32.   I turn now to a consideration of whether the Trade Mark is deceptively similar to the Opponent’s Registered Mark which involves the application of a broader test namely whether the Trade Mark so nearly resembles the Opponent’s Registered Mark that it is likely to deceive or cause confusion.[5]

[5] Act s 10.

33.   The marks in question are to be compared as wholes taking into consideration the size, prominence and stylisation of words and device elements used in the marks and their relationship to each other, and any essential feature that emerges.[6]  This comparison is to be made by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class of services are provided.[7]  A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source’.[8]  There must be a real tangible danger of confusion; a possibility of confusion is not sufficient.[9]  It is not necessary that the confusion persist up to, or contribute to inducing, a sale.[10]  The use to be considered is notional use.[11]

[6] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9, [334] (Burley J).

[7] Australian Woollen Mills v F S Walton and Co Ltd (‘Australian Woollen Mills’) [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

[8] Ibid.

[9] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 [50] (French J).

[10] TiVo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105] (Dodds-Streeton J).

[11] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353, 362 (Mason J).

34.   It may be relevant that an element of the mark is descriptive.  Whilst this does not preclude a finding of deceptive similarity,[12] the Full Court noted in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel:

It is correct to observe, as his Honour did, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead’s Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.[13]

[12] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates and Mortimer JJ).

[13] [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

35.   The only similarity between the Trade Mark and the Opponent’s Registered Mark is ZAATAR which refers to a spice mix common in Middle Eastern cuisine.  Accordingly, this term has some descriptive significance in relation to the provision of food that is or contains ‘zaatar’.  It is apparent from the Applicant’s evidence that as a result of the meaning of ‘zaatar’, this is a term which other traders wish to use in relation to their services involving the provision of food.  The Applicant has referred me to a number of cases where a shared element(s), particularly with some descriptiveness, was not sufficient to support a finding of deceptive similarity.  One such recent case is Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) where O’Bryan held that the word ‘CORNER’ was so ubiquitous in the hotel and hospitality industry that ‘almost any adjective added to that word is likely to create a distinct impression to an ordinary member of the public’.[14]

[14] [2021] FCA 328, [249].

36.   I do not believe that the word ZAATAR is as ubiquitous as CORNER but nor do I consider that the commonality of the word ZAATAR is sufficient to give rise to a real and tangible danger of confusion between the Trade Mark and the Opponent’s Registered Mark given the other differences.  The font and device element of the Opponent’s Registered Mark reinforces the impression that the Opponent’s Registered Mark relates to the Middle Eastern food ‘zaatar’ which is confirmed by the descriptive slogan.  The Trade Mark does not emphasise the word ZAATAR over the element ‘W ZEIT’ which means ‘with oil’.  The additional element ‘W ZEIT’ renders the Trade Mark visually and aurally distinct from the Opponent’s Registered Mark.  Even taking into consideration the possible imperfect recollection of consumers, given the overall differences in the marks, descriptive nature and common use of ZAATAR for the provision of food, I do not believe that consumers would be caused to wonder whether the Trade Mark and Opponent’s Registered Mark are related.

37.   The Opponent has not established that the Trade Mark is deceptively similar to the Opponent’s Registered Mark and hence the s 44 ground is unsuccessful.

Section 60

38.   Section 60 provides:

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.

39.   For the s 60 ground of opposition to be established, the Opponent must:

i.demonstrate that another trade mark had acquired a reputation in Australia before the Relevant Date; and

ii.that because of the reputation of that trade mark, use of the Trade Mark would cause deception or confusion.

40.   In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[15]

[15] [2019] FCA 923, [83] (O’Bryan J).

41.   To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.

42.   In the context of s 60, reputation refers to ‘recognition of [the mark] by the public generally’.[16]   Reputation cannot be assumed and must be established by the Opponent as a matter of fact.[17] 

[16] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J).

[17] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

43.   The reputation of a trade mark may be demonstrated in various ways including by demonstrating a significant number of people are exposed to a trade mark.  In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

44.   The reputation relied on by the Opponent need not be Australia wide, but it is a factor to take into account in determining whether there is a likelihood of confusion.

45.   In support of this ground, the Opponent relies on both the Opponent’s Registered Mark and the Opponent’s Unregistered Mark. These two marks differ from each other only by the inclusion in the Opponent’s Registered Mark of the descriptive words ‘Middle Eastern Food’, I consider that the two marks relied on by the Opponent are substantially identical and use of one would constitute use of the other.[18]

[18] Act s 7(1).

46.   The Opponent’s evidence demonstrates that it has used the Opponent’s Registered Mark and the Opponent’s Unregistered Mark in relation to its restaurant in Coburg, Victoria serving Middle Eastern Cuisine for about a decade.  The Opponent has also offered catering services since 2015.  For a single venue business, a reasonable number of people follow the Opponent’s social media accounts but there appears to be limited engagement with the Opponent’s posts.  The Opponent’s Business has featured in some third party articles and would have received a surge in interest due to publicity from the celebrity chef visits and ‘Postcards’ television show as well as its involvement in the Good Friday Appeal and participation in the ‘Flavours of Coburg’ tours.

47.   However, as the Applicant points out, the Opponent has not consistently used the Opponent’s Registered Mark or the Opponent’s Unregistered Mark since 2012.  A number of examples of use in the evidence show variations being used.  More problematic is that the Opponent uses the term ‘Zaatar’ descriptively on its menus which the Applicant contends diminishes any reputation in the Opponent’s marks.  The Opponent has not provided revenue figures.  The Opponent’s advertising expenditure is limited as the Opponent attests that it primarily relies on word of mouth for promotion.  There is a lack of detail about the nature and extent of the catering aspect of the business, in particular whether its customer base for these services extends beyond the local area.  Also, whilst the Opponent claims to offer wholesale services, the only evidence of this is a mention of this offering on its Facebook account.

48.   On balance, I am satisfied that the Applicant has likely developed a reputation in the Opponent’s Registered Mark and Opponent’s Unregistered Mark for restaurant services but that the reputation is geographically limited to Coburg and closely surrounding suburbs.  Given the descriptive nature of the common element ZAATAR, common use of ZAATAR for the provision of food and differences in the marks, I am satisfied that despite the Opponent’s reputation, use of the Mark is not likely to cause confusion amongst a substantial number of persons.

49.   Accordingly, the s 60 ground of opposition is not established.

Section 42(b)

50.   Section 42(b) prevents registration of a trade mark that would be contrary to law.

51. In its SGP, the Opponent claims that use of the Trade Marks will breach s 18 and/or s 29 of the Australian Consumer Law (‘ACL’) being Schedule 2 to the Competition and Consumer Act 2010 (Cth), as well as constitute passing off.

52. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[19]

[19] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J); Hasbro Inc v Imagination Holdings Pty Ltd (2005) 66 IPR 636; [2005] ATMO 43.

53. As already established in respect of s 60, I am not satisfied that use of the Trade Mark in respect of the Applicant’s Services is likely to deceive or cause confusion. It therefore follows that under the stricter test requirements of the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.

54. Where a trade mark does not contravene s 18 of the ACL, it is unlikely to amount to passing off.[20]  Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation[21]that:

The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[22]

[20] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer R.Wilson).

[21] [1989] FCA 771.

[22] Ibid, [40].

55. Sections 52 and 53 of the Trade Practice Act 1974 (Cth)were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.

56.   For the above reasons, the ground of opposition under section 42(b) has not been established.

Section 58

57.   Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

58.   The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is the earlier.

59.   To succeed under this ground of opposition, the Opponent must establish that:

·     the trade mark relied upon by the Opponent is identical or substantially identical with the Word Mark;[23]

·     the Applicant’s Services are the ‘same kind of thing’ as the goods or services for which the trade mark relied upon by the Opponent has been used;[24] and

·     a person (other than the Applicant) has the earlier claim to ownership based on use, of the trade mark relied upon by the Opponent, prior to the application to register the Trade Mark or any actual use of the Trade Mark (whichever is the earlier).[25]

[23] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

[24] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

[25] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

60.   In the SGP, the Opponent relies on use of the mark ZAATAR since 2012 for a wide range of food related goods and services including, but not limited to cafe and restaurant services.

61. The test for whether two marks are substantially identical is outlined at [30] above. The relevant marks are shown side by side below:

ZAATAR ZAATAR W ZEIT

62.   It is immediately apparent that the Trade Mark includes the additional elements ‘W ZEIT’. These additional components mean the Trade Mark is visually, phonetically and connotatively different from simply ZAATAR. 

63.   I am satisfied that the Trade Mark is not substantially identical with the mark ZAATAR solus which the Opponent relies on and therefore, the s 58 ground of opposition is not established.

Decision and costs

64.   The Opponent has not established any of the grounds of opposition. Accordingly, trade mark application number 1982635 may proceed to registration one month from the date of this decision.

65.   If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.

66.   The Applicant has requested an award of costs. Costs generally follow the event. As there is no reason to depart from the general rule, I award costs against the Opponent in the applicable amounts listed in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

15 February 2023