Holder of IP Pty Ltd AFT Intelligent Assets Trust v Joseph Buttita

[2020] ATMO 169

TRADE MARKS ACT 1995

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

Re:Opposition by Holder of IP Pty Ltd AFT Intelligent Assets Trust to registration of trade mark application number 1883328  (class 43) – PRIMAL JOE COFFEE CO in the name of Joseph Buttita.

Delegate:	Timothy Brown
Representation:	Opponent: Mark My Words Trademark Services Pty Ltd Applicant: Self represented
Decision:	2020 ATMO 169 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss42(b), 44, 58, 60 and 62A – no grounds established – trade mark to proceed to registration

Background

1. This is an opposition under section 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to the registration of the following trade mark:

   Trade Mark Number: 1883328

   Trade Mark: PRIMAL JOES COFFEE CO (‘the Trade Mark’)

   Applicant: Joseph Buttita (‘the Applicant’)

   Priority date: 06 November 2017

   Specifications:

   Class 43: Café services; Coffee shop services (‘the Services’)

2. The Trade Mark was advertised for acceptance in the Australian Official Journal of Trade Marks on 29 March 2018.

3. A Notice of Intention to Oppose was filed by Holder of IP Pty Ltd AFT Intelligent Assets Trust (‘the Opponent’) on 28 May 2018. The Statement of Grounds of Particulars (‘the SGP’) was subsequently filed by the Opponent on the 28 June 2018.

4. The Applicant filed a Notice of Intention to Defend on 09 August 2018.

5. Evidence in Support (‘the Evidence’) of the opposition was filed by the Opponent on 19 November 2018 consisting of a declaration made on 15 November 2018 by George Sabados (‘the Declaration’) and Annexures GS-01 through to GS-17. The Applicant has not sought to rely on evidence.

6. Neither party has made written submissions or requested a hearing. As a delegate of the Registrar, I will determine this matter with reference to the written material filed during the proceedings.

Grounds of Opposition

1. The nominated grounds of opposition are sections 42(b), 44, 58, 60 and 62A of the Act.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[1]The required standard of proof is on the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

3. The date at which the rights of the parties will be determined is the date of the application.[3]In this matter, this is the priority date of the Trade Mark, 06 November 2017.

   [3] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Evidence in Support

10.  The Declaration outlines the background of George Sabados, the director of the Opponent who is also a barista and coffee roaster of extensive experience.

11.  The Declarations explains the adoption of the ‘Mongrel Joe’ brand by the Opponent as a potential trade mark in January 2014, noting that Mr Sabados drew inspiration from a Sydney street pugilist active in the early 20th century who was known by the moniker ‘Mongrel Joe’.

12.  The Opponent is the registered owner of the following trade marks (‘the Trade Mark Registrations’):

Trade Mark No.	Trade Mark	Priority Date	Goods
1629917	21 June 2014	Class 30: Coffee; Coffee beans; Coffee beverages; Coffee extracts; Coffee flavorings (flavourings); Coffee products; Coffee substitutes; Ground coffee; Instant coffee; Unroasted coffee
1678128	2 March 2015

13.  The Declaration states that the Mongrel Joe coffee business was established in March 2014 by the company Barkoo Pty Ltd (‘Barkoo’), of which Mr Sabados is the Sole Director. At present Barkoo uses the Trade Mark Registrations with authority of the Opponent.

14.  The Declaration further outlines the use and promotion of the Trade Mark Registrations as follows:

·A variety of coffee products branded with the Trade Mark Registrations have been offered for sale since March 2014, and have been sold via cafes, gyms and the Opponent’s website <

·As of July 2017, 70 cafes and gyms across Australia offer and promote coffee products featuring the Trade Mark Registrations. The Opponent’s Trade Mark Registrations have also been promoted via Instagram at < and Facebook at <

·In addition to social media platforms, the Trade Mark Registrations have also been promoted via a combination of online and print mediums, company vehicles, sponsorships, merchandise and third party publications. Cafés and gyms stocking the Opponent’s coffee products are also provided with point of sale materials to further advertise products featuring the Trade Mark Registrations.

15.  Attached to the Declaration are 17 Annexures consisting of:

·GS-01 – ASIC Business Name Registration for ‘Mongrel Joe’s’;

·GS-02 – A copy of the Opponent’s ‘Brand Bible’ (Confidential);

·GS-03 – Extracts of the Opponent’s Trade Mark Registrations;

·GS-04 – Extracts from <

·GS-05 – Historical extracts from WayBack Machine of the Opponent’s website;

·GS-06 – Instagram and Facebook extracts;

·GS-07 – Examples of use of the Trade Mark Registrations from industrynews.com, missdissent.lovejournal.com, weekendnotes.com, and dailytelegraph.com;

·GS-08 – Images of the Opponent’s Point of Sale material;

·GS-09 – Images of the Opponent’s company vehicle;

·GS-10 – Images of the Opponent’s information brochure;

·GS-11 – Examples of Opponent’s sponsorship of events and public personas;

·GS-12 – Revenue figures (Confidential);

·GS-13 – Marketing expenditure (Confidential);

·GS-14 – Extracts of websites of third party cafes;

·GS-15 – Screenshots from < < and < – Extract of ASIC registration for Primal Joe’s Coffee Co Pty Ltd;

·GS-17 – Extract of the Whois record for the domain name < of Grounds and Reasons

Section 58

16. Section 58 of the Act provides:

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

17.  Ownership can be established through authorship and use of the trade mark prior to the filing date of an application for registration of a trade mark,[4] or, in the absence of such use, through a combination of authorship, the filing of an application or intention to use the trade mark.[5]To succeed in this ground of opposition,  the Opponent will need to demonstrate:

·     The existence of a trade mark identical, or substantial identical to the Applicant’s trade mark; [6]

·     The trade mark has been used in respect of goods and services that are of the same kind of thing as the Applicant’s trade mark;[7] and

·     Another person has an earlier claim of ownership based on the use of trade mark before the filing date of the Applicant’s trade mark.[8]

[4] Moorgate Tobacco Co Ltd v Phillip Morris Ltd (1984) 156 CLR 414, 432; Carnival Cruise Lines Inc v Stimar Cruises Ltd [1994] FCA 936.

[5] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29].

[6] Carnival Cruise Lines Inc v Stimar Cruises Limited [1994] FCA 68; (1994) 120 ALR, [62].

[7] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640.

[8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402, 413; See also: Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50].

18.  In the SGP the Opponent has submitted that the owner of the Trade Mark is Primal Joe’s Coffee Co Pty Ltd (ACN 617892565). In support, reference has been made to the ASIC registration for the company Primal Joe’s Coffee Co Pty (‘the Company’) and the domain name registration for < As of 14 November 2018 the domain registration lists the registrant as the Applicant, but also includes in the registrant ID reference to the company Primal Joe’s Coffee Co Pty Ltd (ACN 617892565).[10]

[9] Annexures GS-16, GS-17.

[10] Ibid GS-17.

19.  The evidence provided by the Opponent is insufficient to establish that another party has an earlier claim of ownership of the Trade Mark. Primal Joe’s Coffee Co Pty may be the only registered company of that name in the ASIC database, but the registration does not demonstrate that the name has been used as a trade mark by the Company. In Shahin Enterprises Pty Ltd v Exxonmobile Oil Corporation [2005] FCA 1278 at [73] Lander J stated:

There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services.  The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by any other person.  Because it has established that it intended to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade.

20.  Although I recognise a degree of ambiguity surrounding the domain name registration details created by the reference to the Company in the Registrant ID, the Applicant is clearly identified as the registrant of the domain. The inclusion of the Company details may be indicative of a relationship between the Company and the Applicant but is otherwise insufficient to establish that another party had been using the Trade Mark prior to the filing date of the Trade Mark application.

21.  Use of the Trade Mark via the domain, Instagram and Facebook is evidenced in Annexure GS-15. While this evidence demonstrates use of the Trade Mark on these platforms, it establishes no further connection between the Company and the Trade Mark.

22.  Having regard to all of the above, I am not satisfied on the balance of probabilities that another party has an earlier claim of ownership to the Trade Mark.

23. The ground of opposition under s 58 of the Act has not been established.

Section 44

24. Section 44(2) relevantly provides:

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.

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

26.  In the SGP the Opponent has identified the Trade Mark Registrations as the basis of this ground of opposition.

27.  From the details set out in paragraph [12] it is evident that both Trade Mark Registrations are held in the name of a party other than the Applicant. It is also evident that the priority dates of the Trade Mark Registrations, 21 June 2014 for Trade Mark Registration 1629917 and 2 March 2015 for Trade Mark Registration 1678128, are prior to the priority date of the Trade Mark, which is 06 November 2017.

28.  The next consideration is whether the services of the Trade Mark are closely related to the goods of the Trade Mark Registrations.

Comparison of Goods and Services

29. The phrase ‘closely related’ is not defined by the Act. In Registrar of Trade Marks v Woolworths [1999] FCA 1020 at [37] French J explained:

The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related"…

30.  Continuing his observations, French J also stated that the ‘relationship may and in perhaps most cases will be defined by the function of the service with respect to the goods’.[11]

[11] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [38].

31.  Whether coffee products are closely related to cafés, coffee shop services and services relating to the provision of food and drink has been covered in a number decisions, at times to differing outcomes. In Aroma Coffee & Tea Co Pty Ltd v Aromas Pty Ltd [1997] ATMO 82 goods, including coffee, were considered closely related to, amongst other services, café and coffee shop services. In McDonald’s Inc v Future Enterprises Pte Ltd [2007] ATMO 22 coffee products were found not to be closely related to restaurant and café services.[12] More recently in Kicking House Coffee Co Ltd [2018] ATMO 193 the delegate of the Registrar found coffee, coffee beans and other coffee goods specified in Class 30 to be closely related to café services,[13] noting that it is now common for cafes to sell ground coffee and coffee beans alongside coffee beverages.[14]

[12] McDonald’s Inc v Future Enterprises Pte Ltd [2007] ATMO 22, [49]; See also: Sizzler Restaurants International Inc v Sabra International Pty Ltd (1990) 20 IPR 331; Societe Des Produits Nestle SA v Cosi Sandwich Bar, Inc [2002] ATMO 113.

[13] Kicking House Coffee CO Ltd [2018] ATMO 193, [31]

[14] Ibid [26].

32.  The decisions referenced above are a challenge to reconcile, but in my view are indicative of a change in the industry over the last few decades. In the Declaration, it was submitted that it is commonplace for consumers to source coffee products from the cafés and that cafés increasingly offer coffee beans for sale.[15]Further to this point, the Opponent has provided a number of examples of  café or coffee shops that sell and provide coffee products, including:

[15] Declaration [42].

Coffee	Café or Coffee shop
Coffee Roaster	The Coffee Roaster, Alexandria
Fonzie Abbott	Fonzie Abbott Coffee Shop, Brisbane
Veneziano	Veneziano, Richmond Veneziano, Surry Hills Veneziano, North Adelaide Veneziano, West End Veneziano, Mitchell Veneziano, Perth
Normcore Coffee	Normcore Coffee, Wynyard Normcore Coffee Ashfield
Frankies Beans	Frankies Beans, Darlinghurst
AXIL Coffee	AXIL Coffee Roasters Café, Hawthorn[16]

[16] Annexure GS-14.

33.  As a general proposition I accept that coffee products of the sort specified in the Trade Mark Registrations would be utilised in the course of providing café and coffee shop services. More pertinently, the information above indicates that in the contemporary café industry coffee goods are often provided alongside café and coffee shop services, and that it would be reasonable for consumers to be aware of the brand of coffee a café is using to make their beverages. It would also suggest that consumers can reasonably expect that these goods and services often originate from the same source.

34.  Considering all the of the above, I am satisfied that the various coffee goods specified in the Trade Mark Registrations are closely related to café and coffee shop services.

35.  The remaining issue is whether the Trade Mark is substantially identical or deceptively similar to either of the Trade Mark Registrations.

Substantially Identical and/or Deceptively Similar

36.  For reference, the representations of the trade marks are outlined below:

Trade Mark	Trade Mark Registrations
PRIMAL JOES COFFEE CO	No.1678128                 No.1629917

37.  In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 Windeyer J outlined the test for determining substantial identity:

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.[17]

[17] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, [12].

38.  The comparison between trade marks for the purposes of determining substantial identity requires consideration of the dominant cognitive cues, or in other words, the essential features of the respective trade marks.[18] If a total impression of resemblance emerges from the comparison then the trade marks will be considered substantially identical.[19]

[18] Accord Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [206]; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [51].

[19] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50]; Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 68; (11994) 120 ALR 495, [62].

39.  On a side by side comparison there are clear discernible differences between the trade marks. The Trade Mark includes as an essential feature the word PRIMAL. In comparison, both Trade Mark Registrations contains the word MONGREL and the image depicting the head of a man. Although each of the trade marks contain the term JOE, the differences in the other essential features are such that on a side by side comparison there is not a total impression of resemblance between the trade marks. I am satisfied that the Trade Mark is not substantially identical to either of the Trade Mark Registrations.

40. Turning to question of deceptive similarity, section 10 of the Act defines ‘deceptively similar’ as:

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.

41.  On the issue of deceptive similarity Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 stated:

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 [mark].[20]

[20] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, [13].

42.  For the purposes of making this comparison, the trade marks are considered in their entirety,[21] judging the effect or impressions of the trade marks as a whole.[22]Where there is a real and tangible danger of confusion between the trade marks they will be regarded as deceptively similar.[23] It will be enough if there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same source.[24]

[21] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9; [2010] FCAFC 58, [92].

[22] Clark v Sharp (1898) 15 RPC 141, 146.

[23] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

[24] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595; Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50].

43.  In their SGP and the accompanying Declaration, the Opponent has emphasised the similarities in the shared aural and thematic elements of the Trade Mark. I note that aurally and visually the trade marks share some degree of similarity owing primarily to the common element JOE and syntax of the phrases PRIMAL JOE and MONGREL JOE. The similarity is offset, however, by the different terms at the beginning of each trade mark. The presence of the distinctive image prominently displayed in the Trade Mark Registrations creates further visual distinction between the Trade Mark Registrations. In the case of Trade Mark Registration 1629917, the phrase HIGH OCTANE COFFEE, while represented in a less prominent fashion than the other elements present in the trade mark, adds to the differences between the Trade Mark and Trade Mark Registration 1629917.

44.  Conceptually, the trade marks share little similarity beyond reference to JOE, which may be construed as either a name, or, perhaps relevantly in this context, a colloquialism for coffee.[25] The words PRIMAL and MONGREL reinforce very different ideas about the trade marks. PRIMAL can be defined as original or fundamental,[26] and in a figurative sense, can also be evocative of something vital or primitive. In contrast, MONGREL generally refers to animals of mixed breed,[27] but may, depending on the context, have more derisive connotations.[28] Mr Sabados states that the Trade Mark Registrations draw inspiration from ‘Mongrel Joe’, ‘a Sydney street pugilist of the early 20^th century’[29]. While I believe that in lieu of the Opponent’s promotional material this specific reference may be lost on some consumers, the image of the moustached gentleman’s head alongside the words MONGREL JOE does reinforce the idea of a man called ‘Mongrel Joe’. Whether or not reference is made to the pugilist in the mind of the ordinary consumer, I am satisfied that the ideas conveyed by Trade Mark Registrations as a whole are distinct to any meaning that could be attributed to ‘Primal Joe’ or PRIMAL JOE COFFEE COMPANY.

[25] Macquarie Dictionary (online at 12 October 2020) ‘joe’ (def 5).

[26] Macquarie Dictionary (online at 01 October 2020) ‘primal’.

[27] See: Macquarie Dictionary (online at 01 October 2020) ‘mongrel’ (def 1-2).

[28] See, eg, Macquarie Dictionary (online at 01 October 2020) ‘mongrel’ (def 4-5, 8-10).

[29] Declaration [13].

45.  As a contributing factor to the risk of confusion, the Opponent has also noted the low price point of coffee goods and low level of customer care and consideration in making coffee purchases. While I recognise the relatively low cost of the consumable product, I am of the view that the differences detailed above are significant enough to account for any inattention on part of the consumer.

46.  I note that in the Declaration reference was made to an instance of confusion between the Trade Mark Registrations and a composite variation of the Trade Mark that was posted on an Instagram account on 11 July 2017 (‘the Primal Joe Logo’).[30] The Primal Joe Logo was also the subject of a trade mark application (no.1887908). This application was accepted for registration and subsequently opposed by the Opponent. No Notice of Intention to Defend was filed by the Applicant and the trade mark application has since lapsed.

[30] Declaration [44]; See: Annexure GS-15.

47.  There is a distinction between the Primal Joe Logo and the opposed Trade Mark. The Primal Joe Logo contains an image of a moustached man in a fighting pose that resembles, to some degree, the image in both the Trade Mark Registrations. This image is absent from the Trade Mark. In my view the image is a significant contributing factor to the confusion that resulted from the Instagram post due to its similarity to the image in the Trade Mark Registrations. As such, I do not consider this example particularly persuasive or indicative of a likelihood of consumer confusion between the Trade Mark and the Trade Mark Registrations.

48.  Even accounting for imperfect recollection, I am not convinced that, when an ordinary consumer sees the Trade Mark used in relation to café and coffeeshop services, there would be a real likelihood that the consumer would be caused to wonder whether the those services would be associated with the owner of the Trade Mark Registration. I am satisfied that as a whole the combination of visual, aural and conceptual differences is too great for there to be a real or tangible danger of confusion between the trade marks.

49. The ground for opposition under section 44 has not been established.

Section 60

50. Section 60 of the Act provides:

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.

51.  To succeed in this ground of opposition the Opponent must establish that another trade mark had a reputation in Australia prior to the date of 6 November 2017 and because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.

52.  On the question of reputation, the Opponent needs to demonstrate that a reputation existed in another trade mark in Australia amongst a significant or substantial number of people as of the relevant date,[31]6 November 2017. ‘Reputation’ in this context is the recognition or repute of the trade mark by the public.[32]

[31] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75]; Conagra Inc. v McCain Foods (Australia) Pty Ltd [1992] FCA 176; 33 FCR 302, [131]-[132].

[32] McCormick & Company Inc v McCormick [2000] FCA 1335, [81].

53.  The existence of a reputation is not a factor that is assumed and needs to be established as a matter of fact.[33]In respect to how reputation may be established, Lockhart J said in ConAgra Inc v McCain Foods (Aust) Oty Ltd (1992) 33 FCR 302 at 343:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner … .

[33] Conagra Inc. v McCain Foods (Australia) Pty Ltd [1992] FCA 176; 33 FCR 302, [77], [118].

54.  On the quantitative aspects of the assessment, Kenny J stated in McCormick & Co Inc v McCormick [2000] FCA 1335; AIPC ¶38–192 (‘McCormick’) at [86]:

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…[34]

[34] See also: Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999 47 IPR 423, 436.

55.  The Opponent has sold coffee products under the following trade marks (referred to collectively as ‘the Prior Trade Marks’) since July 2014:

1
2
3
4	MONGREL JOE’S

56.   This is a little over three years prior to the filing of the Trade Mark. As stated earlier, the coffee products have been sold via the Opponent’s website and, as of July 2017, in 70 cafes and gyms across the east coast of Australia. The Opponent has indicated that these outlets are located throughout the east coast of Australia.[35] The Opponent wishes the sales figures and marketing expenditure to remain confidential, as such, it will suffice to say that sales figures provided demonstrate a reasonably substantial amount of goods sold relative to the period in which the Opponent has been actively trading. This reinforced by the promotional and marketing expenditure, and evidence that demonstrates the Prior Trade Marks have been actively marketed and promoted across a broad range of mediums and platforms, including sponsorships and endorsements, merchandising, social media and third party publications.[36]

[35] Declaration [28].

[36] Annexures GS-09, GS-10, GS-11, GS-08, GS-07, GS-06.

57.  What amounts to a significant or substantial number of people will be informed by the relevant market and the nature of the goods or services in question.[37] Coffee products of the sort provided by the Opponent are widely sold throughout Australia in cafes, coffee shops and supermarkets. I recognise the distinction between more widely provided coffee of the sort generally found in supermarkets and the boutique espresso coffee provided by the Opponent. Nevertheless, the Opponent is still trading in a very large and populated marketplace with the relevant consumers being most of the Australian public, or at least those of coffee drinking age. In this context, the sales of the Opponent and the relatively short period in which the Prior Trade Marks have been used indicate a more modest awareness of the Prior Trade Marks than what might otherwise appear. Based on the evidence provided by the Opponent and in light of the relevant market, I am not satisfied any of the Prior Trade Marks have established a reputation amongst significant or substantial amount of Australians.

[37] Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 50 IPR 1; [2000] AIPC 91-661; [2000] FCA 1587, [91].

58. Although not necessary considering my findings on the reputation of the Prior Trade Marks, I will briefly touch on the question of whether confusion or deception arising from the use of the Trade Mark is likely. I would first note that although s 60 of the Act does not require the trade marks in question to be substantially identical or deceptively similar, the degree of similarity does remain a relevant consideration.[38] Naturally, the similarity of the trade marks will influence the likelihood of deception or confusion. In Rogers seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 the delegate of the Registrar noted:

Confusion can not arise solely from the reputation of one trade mark.  There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be.  The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[39]

[38] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

[39] Rogers seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39].

59.  As stated earlier, I do not consider the trade marks deceptively similar. The visual, aural, and conceptual differences I identified in that discussion are no less relevant here. Were the requisite reputation established and informing the comparison, I would still consider the differences between the respective trade marks significant enough that on the balance of probabilities there would be no confusion or deception.

60. The Opponent has failed to establish the ground of opposition under section 60.

Section 42(b)

61. Section 42 of the Act provides:

An application for the registration of a trade mark must be rejected if:

…

(b)    its use would be contrary to law.

62.  The onus is on the Opponent to  establish on the balance of probabilities that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law.[40]The relevant time period for assessing whether the an application for a trade mark is contrary to law is at the priority date of an application,[41] in this instance 06 November 2017. However, prospective conduct may be considered.[42]

[40] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28]; Primal Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411].

[41] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411].

[42] Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited [2003] FCA 1502, [47].

63. In their SGP the Opponent has identified section 18 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for this ground of opposition.

Australian Consumer Law

64. Section 18(1) of the ACL provides:

A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

65. This provision requires there to be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s services because of the conduct of the Applicant. In the context of s 42(b) of the Act, ‘[t]he Opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark’[43].

[43] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411].

66. Section 18 ACL imports a stricter requirement than deception or confusion under section 60 of the Act.[44]In discussing section 60 of the Act, I have explained that the Trade Mark Registration, and the other Prior Trade Marks identified by the Opponent lack the requisite reputation to cause deception or confusion. It follows that use of the trade mark is also unlikely to be misleading or deceptive under the ACL. In the absence of any additional evidence concerning deceptive or misleading conduct on the part of the Applicant, I cannot be satisfied that the Applicant’s conduct has contravened s 18 of the ACL.

[44] Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; See also: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 140 CLR 191, 198.

67. For clarity, the use relied on by the Opponent to establish contravention of either section 18 the ACL must be use of the Trade Mark. As such, use of the Primary Joe Logo is not sufficient to demonstrate use of the Trade Mark would contravene s 18 of the ACL.

68. I note that the Opponent has made reference to the language of s 29 of the ACL in the SGP, stating that the Applicant’s ‘conduct would be likely to mislead consumers into believing that services provided under the Opposed Mark…have sponsorship or approval of the Opponent, and/or that there is some other affiliation between the Applicant and the Opponent’[45]. The relevant parts of section 29 of the ACL provide:

(1)    A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

…

(g) make a false or misleading representation that goods or services have sponsorship approval, performance characteristics, accessories, uses or benefits;

(h)  make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;

[45] SGP p3.

69. Where the applicant’s conduct in relation to a trade mark does not contravene s 18 of the ACL, it is also unlikely to contravene s 29 of the ACL.[46] I have already indicated with respect to s 18 of the ACL, that I am not satisfied use of the Trade Mark is likely to mislead or deceive. The same use of the Trade Mark will also not amount to a false or misleading representation. I am not satisfied that use of the Trade Mark would be contrary to s29 of the ACL.

[46] A G Professional Hair Care Products Ltd v Geagroup Invest SRL[2004] ATMO 65, [50]; Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, [107].

Passing Off

70. Generally, where a trade mark does not contravene sections 18 or 29 of the ACL, it is unlikely to amount to passing off.[47] In relation to section 52 and 53 of the Trade Practices Act , the precursors to sections 18 and 29 of the current ACL, Hill J noted in Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771 at [40] 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: Taco Company of Australia Inc v. Taco Bell Pty Ltd (1982) 42 ALR 177, 206; Telmak Teleproducts (Aust) Pty Ltd v. Coles Myer Ltd (unreported) 21 July 1989 Full Federal Court at p 18.

[47] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58].

71. Given my findings in relation sections 18 and 29 of the ACL, it follows that use of the Trade Mark will not amount to passing off.

72. In light of the above I am not satisfied that use of the Trade Mark would be contrary to law. The ground of opposition under section 42(b) has not been established.

Section 62A

73. Section 62A of the Act provides:

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

74. ‘Bad faith’ is not defined in the Act. In Fry Consulting Pty Ltd v Sports Warehouse (No 2) [2012] FCA 81 Dodds-Streeton J considered the concept of bad faith drawing from United Kingdom authority:

Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone.  An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.

The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute.  The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[48]

[48] Fry Consulting Pty Ltd v Sports Warehouse (No 2) [2012] FCA 81, [164]-[167].

75.  Bad faith is a serious allegation and will generally require compelling evidence to support a finding on the balance of probabilities.[49]To establish the ground of opposition, the Opponent must demonstrate that in filing the Trade Mark the Applicant’s behaviour fell short of the standards of acceptable commercial behaviour.

[49] Dc Comics v Cheqout Pty Ltd [2013] FCA 478, [62]; See also: Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26.

76.  In the SGP the Opponent states that the conduct of the Applicant falls short of the acceptable standard of commercial behaviour because:

·     The similarities between the Trade Mark and the Trade Mark Registrations;

·     The reputation of the Trade Mark Registrations; and

·     At the time the Trade Mark was filed the Applicant was aware that use of the Trade Mark had caused confusion and that the Opponent had genuine concerns about the use of the Trade Mark in connection with services closely related the goods specified in the Trade Mark Registration.

77.  In support of the ground of opposition,  it was also noted in the Declaration that the Opponent’s concerns about the potential of confusion between the Trade Mark and the Trade Mark Registration were raised with the Applicant on July 2017.[50] These communications have not been disclosed. The Declaration also explains that following commencement of opposition proceedings further correspondence has been sent to the Applicant without substantive response, and that the Applicant has continued to use Trade Mark 1887908 despite not filing a Notice of Intention to Defend to the opposition of the registration of that trade mark.

[50] Declaration [48].

78. I have discussed both the reputation of the Trade Mark Registrations and the similarity of the respective trade marks in relation to both the section 44 and section 60 grounds of opposition. Unlike other grounds, when considering bad faith the question of whether the use or similarity of the trade marks is enough to cause deception or confusion is not determinative.[51] However, these factors do provide context to the application for the Trade Mark, and may inform whether  the Applicant’s conduct in seeking registration for their trade mark fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons. In this case, noting the differences between the trade marks discussed previously I do not consider it unreasonable that the Applicant would proceed with their trade mark application despite the protests of the Opponent.

[51] Dc Comics v Cheqout Pty Ltd [2013] FCA 478, [76].

79.  In regard to the continued use of the Primal Joe’s Logo, it is of little relevance when it comes to establishing bad faith in the filing of the Trade Mark. The behaviour must relate to the subject application.

80.  In the absence of any further evidence, I am of the view that the Applicant’s act of filing for registration of the Trade Mark with knowledge of the prior Trade Mark Registrations is not indicative of behaviour that is unscrupulous, underhanded or unconscientious in character. I am satisfied on the balance of probabilities that the application was not made in bad faith.

81. The Opponent has failed to establish the ground of opposition under s 62A of the Act.

Decision

82. Section 55(1) of the Act provides:

Unless subsection (3) applies to the proceedings, 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.

83.  The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark 1883328 may proceed to registration one month from the date of this decision.

84.  Should the Registrar be served with notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

Costs

85. The Opponent has sought an award of costs. As the Opponent has not been successful in their opposition, I award costs against the Opponent under section 221 of the Act in accordance with Schedule 8 of the Trade Marks Regulations1995.

Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
30 October 2020