HJ Heinz Company v Scorpio Meats

[2002] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by HJ Heinz Company to registration of trade mark 835304 (29, 30) – Classico (Label) – in the name of Scorpio Meats.

Background

This issue arises out of the filing, on 17 May 2000, by Scorpio Meats, (to whom, for convenience, I will refer as ‘Scorpio’) of Dandenong, Victoria, of application 835304 in Classes 29 and 30 of the International (Nice) Classification of Goods and Services to register the CLASSICO label, appearing below, in respect of goods which now read:

Class: 29 

Meat products, meat extracts, cooked fruits and vegetables, edible oils and fats

Class: 30 

Pasta, preparations made from cereals, vinegar

 

“the opposed trade mark”

Relevant to these Reasons, during examination of the application, the examiner offered Scorpio opportunity to delete the goods “sauces” from the previously existing specification in Class 30 to avoid conflict with registration 745131, details of which are:

Number:         745131
Priority Date:  29 September 1997
Owner:  BFC Investments LP
Class:              30
Goods:           Sauces including pasta sauces
Trade Mark:   

“the Heinz trade mark”

(A request has been received by the Trade Marks Office to record the assignment of the above registration to HJ Heinz Company).

Following the amendment of the specification of this opposed application, it was accepted by a delegate of the Registrar of Trade Marks for registration and advertised as such in the Australian Official Journal of Trade Marks, on 14 September 2000.

On 12 March 2001, after seeking and receiving an extension of time in which to do so, BFC Investments, LP (‘BFC’) of Delaware in the United States of America, filed Notice of Opposition (‘Notice’) to the registration of the trade mark.  The opposition now proceeds in the name of HJ Heinz Company, (‘Heinz’).  Heinz acquired all right, title and interest of BFC in registered trade mark 745131 by Deed of Assignment dated 16 July 2001 and, with those, it states, the right to conduct these proceedings against the registration of the opposed Scorpio trade mark.  For convenience, I will refer to the opponent throughout the entire proceedings as being Heinz.

The Hearing

The hearing was before me, as a delegate of the Registrar of Trade Marks in Sydney on Tuesday, 12 March 2002.  Heinz was represented by Mr Gerard Skelly of Spruson & Ferguson of Sydney.  Scorpio elected not to be represented and put in written submissions by Mr Gordon Armstrong of Scorpio.

Evidence

Heinz and Scorpio have respectively served and filed evidence in support and evidence in answer as provided for by the Act and regulations.

Heinz’s evidence in support comprises two statutory declarations and exhibits thereto.  The first is by Jelena Kragovic, paralegal, of Spruson & Ferguson.  The other is by Jenny Markovic who is a solicitor employed by Spruson & Ferguson.  Scorpio’s evidence in answer comprises a statutory declaration and exhibits thereto by Gordon Duncan Armstrong who is a partner in the business that trades as Scorpio Meats.

The Opponent’s Evidence

Jelena Kragovic attests that she visited five supermarkets and one delicatessen in central Sydney.  These are:

·     Woolworths Metro Supermarket  - Town Hall Sydney,

·     Coles Supermarket – Bay Street, Broadway,

·     BI-LO Supermarket - Bay Street, Broadway,

·     Big Fresh Supermarket, Marion Street, Market Tower, Leichhardt,

·     Woolworths Supermarket, Marion Street, Market Tower, Leichhardt; and

·     D & K Continental Deli - Marion Street, Market Tower, Leichhardt.

Ms Kragovic states that, at each of the stores she visited she found that pasta products were sold side by side with pasta sauces.  The exhibits to her declaration are photographs that Ms Kragovic took at each of the above locations to support her observations.  Two representative examples are shown below:

 

“The shelves photograph”

“The refrigerator photograph”

The photographs were taken at the Big Fresh Supermarket, referred to above.

Ms Kragovic also appends packaging from examples of pasta and pasta sauces sold under the same trade mark.  These are, Barilla, Tortiglioni, Naked Foods, Delverde, la Molisana, Freedom Foods and Home Brand pastas and sauces.

Turning to Jenny Markovic’s evidence, she attests that, in late May 2001, she phoned a number of food manufacturers and/or distributors and requested their price lists which she received shortly afterwards and are exhibited to her declaration.  The relevant information on these order forms is summarised below:

Supplier	Address	Pastas	Sauces
The Pasta Factory (Exhibit JM-1)	413 Parramatta Rd Leichhardt  NSW 2040	Ribbon, angel hair, linguini, fettuccine, lasagne, spaghetti, shells, rigatoni, ravioli, cannelloni, tortellini, gnocchi.	Alfredo, Napolitan, Siciliana, Bolognese, Matriciana, Boscaiola, Fresh pesto, Rocket pesto, Red pesto
Golden Wheat Fresh Pasta (Exhibit JM-2)	3/55 Railway Pde Kogarah NSW	Spaghetti, fettuccine, tagliolini, angel hair, pappadelle, lasagna sheets, ravioli. Tortellini, agnolotti, gnocchi, lasagne, cannelloni.	Bolognese, Napoletana, tomato and cream, Boscaiola, tomato and basil, cream and mushroom, pesto.
Il Pastaio (Exhibit JM-3)	PO Box 286 Concord NSW 2136	Fettuccine, spaghetti, ravioli, tortellini, cannelloni, gnocci, lasagne,	Pesto and cream, chunky vegetable, Matriciana, Boscaiola, Bolognese, Carbonara, Napoletana.
Berlay Holdings Pty Ltd (Exhibit JM-4)	Unit 11 1 Bennelong Rd Homebush NSW 2140	Spaghettini, spaghetti, linguini, bucatini, ziti, semi di cicoria, stelline, tubetti, perlini, anelli, ditali, ditali rigati, canneroni, lumachine, stivalettini, gomiti, gnocchetti sardi, tofette, ruote, eliche, pennette, penne zita, penne rigate, sedamini rigati, zita tagliati, fusilli, tortiglioni, rigatoni, casarecce, farfalle, fusilli tricolori, mafaldine, conchiglioni, lasagne da forno, barbine, fettuccine, tagliolini, angel hair, pappadelle, lasagna sheets, ravioli. Tortellini, agnolotti, gnocchi, lasagne, cannelloni	Homestyle ready made sauce, putanesca ready made sauce, sorrentina ready made sauce.
Viva Pasta (Exhibit JM-5)	14/1 Atkinson Rd Taren Point, NSW 2229	Lasagne, cannelloni, penne, ravioli, tortellini, fettucinni, linguini, spaghetti gnocci, panzotti, sorentini, tortellini, raviolini.	Bolognese, Napolitana, cream and mushroom, alfredo sauce, pesto.
Fina Foods Pty Ltd (Exhibit JM-6)	63 Crown St Wollongong NSW 2500	Cannelloni, linguine, tagliatelle, fettuccine, pappardelle, gnocci, lasagne, rigatoni, spaghetti, ravioli, conchigli, farfaile, maglie, penne, spirals.	4 seasons mild, Bolognese (beef or chicken), Boscaiola, Marinara, Napolitana, Primavera.
Anatolis Pelmeni Pasta (Exhibit JM-7)	1 Hudson St Hurstville NSW	Ravioli, tortellini, gnocchi, fettuccini, penne, bowtie, spirelli, rigatoni, linguine, cannelloni, taghliatelli.	Bolognese, Napolitana, Boscaiola, Cream mushroom, Matruchiana, Arabiata, pesto, Napolitana pesto.
Ravioli Lasagna Kitchen Pty Ltd (Exhibit JM-8)	65 Spit Rd Mosman NSW 2088	Lasagne, pappardelle, tagliatelle, linguine, tagliolini, angel hair, tortellini, ravioli, agnolotti, gnocchi,	Bolognese, Napolitana, Matriciana, Provinciale, Pesto, Walnut, mushroom.
Corrado & Frank Wholesale Distributors Pty Ltd (Exhibit JM-10)	121-127 Jardine St Fairy Meadows NSW 2519	Farfalle, fettucine, lasagne.	Pesto, tomato paste.

Exhibit JM-9 is, I believe, not relevant to these proceedings, as it is a general food catalogue.

The Applicant’s Evidence

Save for the exhibits to Gordon Armstrong’s declaration, the applicant’s evidence in answer consists largely of submission and I weight it accordingly.   The exhibits are photographs of the front and rear labels which the parties use or propose to use in relation to the goods.  I reproduce the photographs of the goods, below:

 

(“the goods photographs”)

The rear panel of the packet of spaghettini shows an alternative version of the trade mark in the upper right corner of the panel.  This version comprises the word CLASSICO above the words PRO DEL GOLFO in an ellipse or lozenge.

Mr Armstrong avers that the rear label clearly shows that the goods are being distributed in a number of overseas countries.  The rear label shows that the goods are made by an Italian company called Corex SpA.  A website is given on the rear label, This website contains the following information:

Corex SpA is proud to present its newest range : Classico Italiano. Developed for the Australian market but steadily gaining interest in many other world markets. Comprised of all core Corex products, the range boasts a host of Mediterranean specialities including pasta, canned tomato and vegetable products, antipasti in glass jars and pasta sauces.

I also note that the trade mark on the front of the packet of spaghettini is not the same in all details as the trade mark that Scorpio has applied to register.  The Heinz label differs from that which is registered as the representation of mushrooms, to reflect Siciliana pasta sauce, has replaced the tomato used in respect of the Napoli sauce.

Submissions

At the hearing, Mr Skelly abandoned all grounds of opposition other than that under section 44 of the Act.  In broad terms, he argued that the trade marks of the parties are deceptively similar and the goods, in large part, are of the same description.  The applicant, in Mr Armstrong’s written submissions, takes a stand contrary to this and says that the adjectival word CLASSICO is a common word in the Italian language.  Mr Armstrong states that “We have a relationship with the overseas manufacturer who has distributed the product elsewhere in the world under the trade mark applied for.”  However, Mr Armstrong does not state whether the trade mark has been registered elsewhere in the world, or by whom; or, if the trade marks of the parties co-exist on trade mark registers elsewhere in the world.

Reasons

As Scorpio has not shown evidence of use of the opposed trade mark in relation to the goods of its application, section 44 relevantly provides:

44  Identical etc. trade marks

(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.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

There is no issue that the priority date of registration number 745131, the Heinz label, is earlier that that of the opposed trade mark.

Section 10, referred to in Note 1, above, provides:

10  Definition of deceptively similar

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.

Subsection 14(1), referred to in Note 2, above, provides:

14  Definition of similar goods and similar services

(1)For the purposes of this Act, goods are similar to other goods:

(a)if they are the same as the other goods; or

(b)if they are of the same description as that of the other goods.

Issues

At the hearing of the matter, Mr Skelly conceded that the trade marks are not substantially identical and that the goods are not the same goods.  There are, therefore, two issues for me to discuss; whether:

·     the trade marks are deceptively similar; and,

·     the goods are of the same description.

In Registrar of Trade Marks v Woolworths [1999] FCA 1020, French J said at paragraph 39:

The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

The logic that French J refers to also applies where the specifications of both parties are goods.  I will therefore discuss the goods of the parties before considering the similarity of the trade marks.

Goods – Evidence

Trade Channels
The goods of interest here are predominantly pastas and pasta sauces.  I consider that the evidence shows that there are three major ways in which pasta and sauces, including pasta sauces, come onto the market.  Two of these sales channels are through supermarkets.  The shelves photograph, above, shows dry pasta and jars of preserved pasta sauces on shelves of the Big Fresh supermarket at Leichhardt; this represents one sales channel – that from the maker of such goods to the consumer.  The refrigerator photograph, above, shows recently prepared pastas and plastic containers of pasta sauce (also at Big Fresh) which, due to their perishable natures, are kept in refrigerator cabinets; this represents a second sales channel.  As the evidence shows, these sales channels may reach the consumer in either a supermarket or a delicatessen.  I would add that the other photographs in evidence show similar arrangements of the goods.

The declaration and exhibits thereto of Jenny Markovic also point to a third trade channel.  The fact that many of the distributor/manufacturer price/order forms in evidence allow orders of 10 kilo packs suggests that these freshly prepared pastas and pasta sauces are bought by caterers such as bistros, restaurants and the like for the preparation of meals.  The overlap, if any, between this third trade channel and the second, ‘refrigerator’ trade channel is not clear but ultimately, this distinction does not affect the outcome of these Reasons.

Nature of the Goods

In informing myself of the nature of the goods, I rely on information which is not in evidence.  Regulation 21.15(8) provides:

(8)     The Registrar is not bound by the rules of evidence but may inform himself or herself on any matter that is before him or her in any way that the Registrar reasonably believes to be appropriate.

Regulation 21.19 further provides:

21.19   Registrar may use information available

(1)If:

(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and

(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and

(c)the Registrar proposes to take the information into account in making a decision in the proceedings;

before making the decision the Registrar must:

(d)provide the information to the party; and

(e)give the party a reasonable opportunity to make representations about the information.

(2)For the purposes of paragraph (1) (e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

I believe that my reliance on this material extraneous to the evidence is appropriate since it concerns sauces, including pasta sauces, which goods are included in the specification of goods of Heinz and were (and arguably remain) included in the specification of goods of Scorpio.  The parties must, I believe, be presumed to know the nature of their own goods and business and, hence, my reliance on this material is a reliance on information which is, or should be, known to both parties.

It is convenient to start this discussion with some definitions:

Sauce: n 1. any liquid or semiliquid preparation eaten with food to enhance its flavour.  2. anything that adds piquancy.  3. US stewed fruit.  4. US dialect vegetables eaten with meat.

(Collins English Dictionary).

Sauce: noun 1. any preparation, usually liquid or soft, eaten as a relish or appetising accompaniment to food. 2. something that adds piquancy. 3.  Colloquial impertinence; impudence. --verb (t) (sauced; saucing) 4. to dress or prepare with sauce; season: meat well sauced. 5. to give zest to. 6. to make agreeable or less harsh. 7.  Colloquial to speak impertinently to. [Middle English, from Old French, from Vulgar Latin: salted]

Tomato:  noun (plural -toes) 1. a widely cultivated plant, Lycopersicon esculentum, bearing a slightly acid, pulpy fruit, commonly red, sometimes yellow, used as a vegetable. 2. the fruit itself. 3. any plant of the same genus. 4. its fruit. [Spanish, from Nahuatl (South American Indian)]

Pasta  noun any of the several preparations made from a dough or paste of wheat flour, salt, water, and sometimes egg, such as spaghetti, macaroni, tagliatelle, etc. [Italian, from Late Latin: dough, PASTE]

Aubergine  noun 1.  eggplant. --adjective 2. of the colour of the dark-fruited eggplant, ranging from reddish-purple to bluish-purple. [French]

(Macquarie Concise Dictionary).

It is also convenient, now, to look at the general composition of pasta sauces.  Bolognese sauce is comprised of meat; onion; garlic; carrot; celery; tomato; tomato paste; sugar; oregano; basil; salt; pepper; dry red wine.  Napolitan sauce is made up out of olive oil; onion, tomato sauce; cloves, garlic; olives, capers; fresh parsley; and, celery.  Matriciana sauce contains red onion; pancetta; olive oil; fresh tomatoes; hot red pepper flakes; salt and freshly ground black pepper.  Boscaiola sauce ingredients include tomatoes; eggplants; mushrooms; cooking oil, such as corn oil; garlic, Parmesan cheese; basil; and, black pepper.  Other pasta sauces, such as carbonara, contain cream with vegetables and meat.

The expression 'pasta sauces' therefore describes a broad range of sauces, prepared from a wide variety of ingredients; some, such as Bolognese, are predominantly meat-based, others are composed mainly of fruit, such as tomatoes and aubergine (eggplant), and vegetables such as celery and onion.

Goods of the Same Description

In Southern Cross Refrigerating Co v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592, at 606, Dixon, McTiernan, Webb, Fullagar and Taylor JJ said of the expression 'goods of the same description':

The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. (1945) 70 CLR 84, at p 90 . There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek's Application (1946) 63 RPC 59 . Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (1946) 63 RPC 59, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are 'of the same description'": In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372 . Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 when he said: "What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments" (1945) 70 CLR, at p 94 . (at p607)

In Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, Heerey J explained the application of the above-discussed principles in McCormick & Company Inc v McCormick [2000] FCA 1335.

Kenny J had to consider whether spices, condiments, seasonings, extracts and essences for flavouring foods, herbs, sauces and gravies were goods of the same description as instant batter.  Her Honour made an affirmative finding after relying, amongst other things, on expert evidence from chefs that both the former category of comestibles and batter had a function of enhancing or changing the flavour of food so that batter performs the same function as herbs, spices, seasonings, marinades in that they are added to food before cooking to improve the food’s taste.  Her Honour said (at par 26):

“I find, on the evidence, that batter not only protects foods but, like herbs, spices and seasonings etc, it may be added to food to enhance the food’s flavour.  I accept, of course, that batter is different from herbs, spices, seasonings and the like in that herbs, spices and seasonings may serve additional and different functions from those fulfilled by batter (and vice versa).  I also accept that, as the respondent contended, there are other parts of the cooking process which affect food flavour yet cannot be compared to battering at all.  The question is not, however, whether instant batter and herbs, spices, seasonings etc correspond precisely and exclusively in their uses and functions, but whether they are goods ‘of the same description’ according to the wide construction of that expression adopted by the authorities.  The overlap in functions is one factor indicating that they are.”

Her Honour also relied on the fact that the instant batter product and the rival party’s products were bought and sold in the same trade channels.  They were sold in the retail trade in supermarkets ordinarily in close proximity to each other.

Further, I am to consider the specifications of goods of the parties at their widest - considering any similarity of the goods within the full breadth of the specifications: Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.

The goods in question here are on the one hand, "Sauces, including pasta sauces" and, on the other, "Meat products, meat extracts, cooked fruits and vegetables, edible oils and fats; pasta, preparations made from cereal, vinegar".

After close consideration of the issues and the evidence before me, I am satisfied that the Heinz goods, “sauces, including pasta sauces” are of the same description as “cooked fruits and vegetables; pasta, preparations made from cereal” within the Scorpio specification of goods.  The reasons for this are explained below.

Cooked Fruits and Vegetables

There is some difficulty in understanding what breadth of goods is apprehended within the expression “cooked fruits and vegetables”. It is not clear whether the expression should be read disjunctively or conjunctively - or, indeed, if it could be read in either way.  The expression is one used within the Class 29 Heading in the International (Nice) Classification of Goods and Services and the Explanatory Notes within that publication do not shed any light on the issue.  A Class Heading provides generalised guidelines as to the type of goods (or services) included within a class and, while being typical (or indicative) of the nature of the goods included in a class, is not an exhaustive list.  Applying the general principle that questions of this kind should be pragmatically treated in terms of business reality, I treat these words as meaning "fruits and vegetables which have been cooked either separately or together".

I think that the dictionary definitions of the word ‘sauce’ and the lists of ingredients, above, which are contained within various pasta sauces make it clear that, while not all cooked fruit and vegetables are pasta sauces, many pasta sauces are fruits and vegetables, such as tomatoes, eggplants, onions, celery and the like, which have been cooked together.  A sauce, the definitions show, is ‘any preparation, usually liquid or soft, eaten as a relish or appetising accompaniment to food’ - some fruit and vegetables, when they are cooked separately or together, may be used in this way and are therefore sauces.  These sauces include pasta sauces.

Further, the word "sauces" in the Heinz specification also embraces in its meaning plain fruit sauces such as tomato paste, tomato pulp, apple sauce and cranberry sauce which do occur within Class 29.  (Sauces that are condiments, such as tomato ketchup or Worcestershire sauce, occur in Class 30.  The point of distinction between Class 29 and Class 30 sauces is between the one being in the nature of a preserve (29) and the other being a condiment (30)).  Plain fruit sauces in Class 29 are, at the very least, of the same description as "cooked fruits".

Pasta, preparations made from cereal

As pasta is a preparation made from cereal, I will discuss only pasta here and my conclusion will apply to foods falling within the description, "preparations made from cereal".

The evidence shows that both pasta and pasta sauces come onto the market together in three distinct ways.  Fresh prepared pastas and pasta sauces are sold through refrigerator cabinets in supermarkets and delicatessens.  Fresh prepared pastas and pasta sauces are also sold together to the owners of bistros, restaurants and the like for the preparation of meals.  Dried pastas and tinned, or bottled, preserved pasta sauces are available adjacent from the shelves of supermarkets and delicatessens.

The order forms/price lists in evidence show that the trade channels for freshly prepared pastas and pasta sauces (whether they come onto the market through bistros or supermarkets) are the same.  Pastas and pasta sauces are commonly ordered by the same caterer or retailer on the same form at the same time from the one manufacturer or specialist distributor.  Fresh prepared pastas and pasta sauces are sold (whether to caterers or from supermarkets) at the same time, to the same customer for the same purpose.  It is very common, the evidence shows, for fresh prepared pastas and sauces to carry the one trade mark, which indicates a common source in trade.

The shelves photographs in evidence show that dried pasta and preserved pasta sauces are sold from the same, or adjoining, supermarket shelves.  The packaging and photographs in evidence show that it is common for the one manufacturer to make, or put onto the market under its aegis, both dried pastas and preserved pasta sauces under the same trade mark.  Accordingly, it may be inferred that the trade channel for dried pastas and preserved pasta sauces, from manufacturer to consumer, is identical.

I would also observe, although this is not determinative, that pasta and pasta sauce have very little use without each other and that either could be regarded as being made for consumption with the other and of little use in the absence of the other.

I am aware that the two groups of goods, “pasta and cooked fruit and vegetables” and “sauces, including pasta sauce” are different from each other; they are certainly as different as the spices and batter considered to be goods of the same description by Kenny J in McCormick, above.  However, the commonality of pasta sauces together with pasta in the same trade channels, in particular, and combined with the co-existence and relationship of these goods both on supermarket shelves and the dinner plates of consumers makes an affirmative answer to the question inevitable.

I therefore find that “sauces, including pasta sauces” are goods of the same description as “cooked fruit and vegetables and pastas”.  As this is so, the expression “preparations made from cereals” must, in the absence of qualification, also comprehend goods of the same description as pasta sauces.

Heinz did not provide any evidence, or pursue any argument, concerning the balance of the goods on the opposed application.

The Trade Marks

The expression ‘deceptively similar’ is, via section 10, considered in terms of the likelihood that the trade marks will deceive or confuse.  There are three inter-related aspects to this consideration: the comparison of the trade marks themselves; secondly, the surrounding circumstances, including those of the trade in which the trade marks are, or will be, used; and, thirdly the consideration of the likelihood of deception and confusion under the tests that stem from Southern Cross, above, as adapted to the new Act by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020.

In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described the comparison of trade marks as follows:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The 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, then similarities both of sound and of meaning play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

Also, Windeyer J said in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions."

Windeyer J added, at 416, "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances".

Thus, the market context of the comparison is important.  These factors which are to be taken into consideration were stated by Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), where he said:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

People take more care in purchasing goods which are expensive than they do when purchasing goods which are cheap: - LANCER- Trade Mark Application [1987] FPC 303 [LANCER versus LANCIA for cars].  The purchase of goods in a supermarket is more hurried than in a boutique that sells clothes: see, for example, Re: Stuart Alexander And Co. (Interstate) Pty. Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel N.V. and Blenders Pty. Limited (1981) 53 FLR 307 No. G117 of 1981 [the 'Apothecary Jars' case].

The market context of the comparison is, here, of particular relevance.  Two of the main ways in which the evidence shows that pastas and pasta sauces are sold occur within supermarkets where the customer self-selects the goods and no sales person is interposed who might have knowledge of the origin of the goods.  The goods are sold in close proximity to each other and the word CLASSICO is the most prominent feature in each trade mark by which either trade mark can be recognised.  As the applicant's evidence shows, per the goods photographs above, a trade mark label may vary when in use from that on the Trade Marks Office data-base: the Heinz label as used varies from that as registered.  And, that of Scorpio, as applied for, also varies from those in the product photographs: the depiction of the ear of wheat and descriptive words are absent from the trade mark as used on the rear panel on the goods; the words other than the word CLASSICO differ on the front panel of the goods photographs from those in the opposed trade mark.  The trade marks of the parties in use vary from those as registered or as applied for in some descriptive matter.  However, the word CLASSICO is neither varied nor diminished.

In the comparison of the trade marks, I note that each trade mark has in common the word CLASSICO with an indication of origin in close proximity to that word.  Further, both trade marks have in common a pictorial reference to the Italian food within the container or package on which the trade mark is, or will be, used: that in the Heinz trade mark is a tomato; that in the Scorpio trade mark is an ear of durum wheat.  The evidence shows that the pictorial element in the Heinz trade mark is varied according to the type of pasta sauce on which the trade mark is used.  There is no evidence whether the pictorial element in the Scorpio trade mark is varied in accordance with the application of the trade mark to goods other than pasta in the specification - however, it is, the evidence shows, omitted in some usages of the trade mark.  The trade marks of the parties are, accordingly, strongly similar thematically (apart from the word CLASSICO which they possess in common).

The goods in question are not expensive and they are, within supermarkets, sold in close proximately to each other and, the evidence shows, amongst the similar goods of other traders who do use the same trade mark in relation to both pastas and pasta sauces.

In his submission, Mr Armstrong states that the word CLASSICO is an ordinary Italian adjective that is used in everyday conversation and that it is not unique as a brand or company name.  By this, I understand that Scorpio's submission may be that the word CLASSICO lacks inherent capacity to distinguish the goods and, as such, no trader can claim rights in it.  However, I have no evidence before me as to the meaning of the Italian word CLASSICO, whether it is in fact equal in meaning to the English word CLASSIC and whether the words are equivalent both in language and in trade usages in Italy and Australia.  The Scorpio proposition may thus be along the lines of that in Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 59 RPC 127, whereby part of a trade mark may be ‘discounted’ from the comparison if it is common to the trade. In the light of the meaning of the English word CLASSIC, and the decision of Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks 2000 [FCA] 177 in which he found the words CRANBERRY CLASSIC to lack inherent distinctiveness in relation to fruit juices, this argument might have some weight.  However, I refer to regulations 21.15(8) and 21.19(1), above, and also to regulation 21.17(1) which provides:

21.17   Evidence in proceedings

(1)     Evidence that is given in writing in any proceedings before the Registrar must be in the form of a declaration.

I observe that if the applicant wishes me to make bricks with this argument, it should provide the evidentiary straw.  There is no evidence before me as to the meaning of the word CLASSICO, it is not a word of the Italian language with which I have familiarity and I am not aware if it is in fact interchangeable with, or equivalent in meaning to, the English word CLASSIC or whether it is one which is needed by others in relation to Italian food.  While there may be a presumption that the opposed trade mark is registrable, there is also an evidentiary onus on an applicant, when challenged, to support its position with facts.

The view that the word CLASSICO is an ordinary adjective and is not unique as a brand name might also be countered with the observation that the opposed trade mark, as filed, also contains the English words ‘Italian Experience’.  This reflects the fact that majority of the market for the goods in Australia is English speaking and for whom the word CLASSICO may have no special meaning.  It might be also observed that an Italian adjective, of which I do have knowledge, BIANCO, (meaning ‘white’), would lack inherent distinctiveness when used in relation to ‘wines’ and may yet be inherently distinctive when used in relation to ‘coal’.  Without evidence, it is impossible to gauge where, between these hypothetical extremes, the word CLASSICO lies in its application to the goods in question.

There might be an assumption amongst some people purchasing the goods that the words CLASSIC and CLASSICO are equivalent to each other and interchangeable but I have no information before me that this is, actually, the case; or, whether such an assumption might be correct.  Further, as previously observed, Scorpio has not established, in its evidence, that the word CLASSICO is in fact common to the trade, or lacks inherent distinctiveness because of its denotation, in Italy where its goods are produced.  The true situation might as easily be that, whatever its meaning, the word CLASSICO is not normally used or needed to be used in relation to pasta foodstuffs in Italy.  Hence, it is difficult to form any conclusions based on the denotation of the word CLASSICO (or prevalence of that word in the Italian pasta trade) in the absence of evidence that goes to this point.

I interpose now that the above observations involve the lack of evidence before me concerning the meaning of the word CLASSICO and do not represent a departure concerning examination of trade marks before the Registrar.  Obviously, an examiner will research the meanings (if any) of words within trade marks and report to the applicant, where necessary, providing copies of any research material.  However, I have procedural fairness to consider too - if I am to act in reliance on material defining a word, in circumstances where the meaning or signification of a word is not obvious but is crucial to an outcome, I should be sure that both parties have had an opportunity to rebut or address that material in their own evidence and submissions to me.

Concerning the assessment of the likelihood of deception or confusion, French J said in Woolworths, above, at paragraph 50:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

I am satisfied that the trade marks at issue are deceptively similar and that there is a real and tangible danger of deception and confusion.  Absent any conclusions concerning the significance of the word CLASSICO in common between the trade marks, I am not satisfied that purchasers in Australia will pause to discount the word CLASSICO from the trade marks while making their purchases in relation to these goods.  Further, the evidence of the actual usage of the trade marks shows that there is a dearth of material other than the word CLASSICO within the trade marks by which the trade marks could be distinguished from each other.  In short, in the light of the evidence before me, if the word CLASSICO were to be discounted to any extent from the trade marks for the purposes of comparison, there is little, if anything, left of any trade mark significance to compare or distinguish between the trade marks.

The material other than the word CLASSICO in the parties' trade marks is, as I have observed above, strongly similar thematically, reflecting the nature and origin of the goods.  These elements, in their totality, might be viewed as reinforcing the similarities between the trade marks rather than allowing a ready distinction between them.

Purchases of pastas and sauces including pasta sauces are likely to be made without great consideration as the goods are cheap and supermarket purchases tend to be hurried and without much inspection of trade marks.  The trade marks of the parties (apart from the word CLASSICO) differ mainly in material which tends to be discounted when inspecting goods - descriptive words and devices - which the evidence shows is, in fact, varied or even omitted when the trade marks are in use.  The word CLASSICO is the dominant, identifying feature of the trade marks and it is by this feature that the trade marks will be remembered and recalled by the public. 

I am satisfied that the trade marks of the parties are deceptively similar.

Decision

Section 55 of the Act provides:

55  Decision

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a)       to refuse to register the trade mark; or

(b)       to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:   For limitations see section 6.

Heinz has established its ground under section 44 of the Act as it has shown in its evidence that the trade marks are deceptively similar and the goods “cooked fruit and vegetables; pasta and preparations made from cereals” are of the same description as “sauces including pasta sauces”.  Scorpio, although it appears to claim that the word CLASSICO lacks inherent distinctiveness, has provided no evidentiary support for this claim; further, the trade marks lack other features by which they might be distinguished from each other.  I therefore refuse the Scorpio application in its entirety. 

However, if there be no appeal within one month of the date of these reasons by either party, Scorpio may apply to amend the specifications of goods to:

Class 29

Meat products; meat extracts; edible oils and fats.

Class 30

Vinegar

If there has been no appeal and Scorpio makes the amendments, the application may proceed to registration if the appropriate fees have been paid.

Costs

Section 221 of the Act allows:

221  Costs awarded by Registrar

(1)The Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her.

(2)A party desiring to obtain costs must apply to the Registrar in accordance with the regulations.

(3)If a party is ordered to pay the costs of another party, the costs may be recovered in a court of competent jurisdiction.

Heinz has requested its costs in this issue.  As Heinz has been successful, I order that Scorpio pay Heinz’s costs in accordance with the amounts set out in the regulations.

Ian Thompson
Hearing Officer

6 May 2002