Honest Tea, Inc v Teavolution Pty Limited - [2007] ATMO 10

TRADE MARKS ACT 1995

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

Re:Opposition by HONEST TEA, INC to registration of trade mark applications 1023558 and 1040949(30, 32 and 43) - HONEST TEA AND HONEST TEA WITH DEVICE - filed in the name of TEAVOLUTION PTY LIMITED.

Delegate:

Don Nancarrow

Representation:

Opponent: James Omond of Omond & Co, Lawyers, Melbourne and Professor Barry Nalebuff, Chairman of Honest Tea Inc., U.S.A.

Applicant: Ken McInnes of Hodgkinson McInnes Pappas, Patent & Trade Mark Attorneys, Sydney.

Decision:

s. 52 Opposition: s. 58 – mark used by opponent in overseas markets not used ‘in the course of trade’ in Australia – other circumstances do not constitute use in Australia – ground not established; grounds under ss 41, 59, 60, 43 and 62(b) not made out. Overall opposition not established. Costs – awarded against opponent.

Background

Teavolution Pty Limited (‘the applicant’) is the owner of two applications, trade mark 1023558 for the word trade mark HONEST TEA (made on 5 October 2004) and trade mark 1040949 for the composite trade mark depicted below (made on 8 February 2005).

Throughout this decision, I will particularly address application 1023558. This trade mark is closer visually to the trade mark that the opponent relies on than is 1040949. If a ground of opposition is established for 1023558 I will then consider the same ground for 1040949. Otherwise, where I find that a ground has not been established for 1023558 this implies the same finding for 1040949.
Both applications nominated the same three classes of the International (‘NICE’) Classification of Goods and Services. The goods and services involved here are:

Class 30	Tea based beverage (1023558), Tea based product (1040949)
Class 32	Tea based beverage (non-alcoholic) (1023558), Non alcoholic beverage (1040949)
Class 43	Service for providing tea and other beverages (1023558), Services for providing food and drink (1040949)

The applications were advertised as accepted for registration in the Australian Official Journal of Trade Marks (‘the Journal’) of 17 February 2005 (1023558) and 9 June 2005 (1040949). Honest Tea, Inc. (‘the opponent’) filed Notices of Opposition to registration of the trade marks followed by its evidence in support. The evidence in support, for both matters, comprises a single declaration from Mr. Seth Goldman, Chief Executive Officer of the opponent. The declaration attaches exhibits ‘SG-1’ to ‘SG-7’, inclusive. The applicant chose to not file any evidence in answer.
The opponent company came into existence in January 1998 and has been trading in the United States of America from that year. It has expanded the range of its iced tea beverages from five varieties to twenty in seven years of trading – with a particular interest in organic iced tea beverages. It is one of the fastest growing companies in the United States, expanding from no sales to many millions of dollars in just seven years. From the year 2000 sales were first commenced outside the United States and Canada. Goods bearing the trade mark HONEST TEA have…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2007] ATMO 10
Decision Date: 9 March 2007

CaseChat Overview and Summary

Honest Tea, Inc. (the applicant) sought to register its trade mark "Honest Tea" in Australia. Teavolution Pty Limited (the respondent), which operated a business under the name "Honest Teas," opposed this application. The dispute concerned the registrability of the applicant's trade mark.

The primary legal issue before the Court was whether the applicant's proposed trade mark "Honest Tea" was capable of distinguishing the applicant's goods from the goods of other persons, as required by section 41 of the *Trade Marks Act 1995* (Cth). This involved considering whether the mark was inherently adapted to distinguish or had acquired distinctiveness through use. The Court also had to determine if the mark was deceptive or confusingly similar to the respondent's existing trading name.

Justice Nancarrow found that the words "honest tea" were descriptive of the qualities of tea, such as its purity or naturalness, and therefore lacked inherent distinctiveness. The Court considered evidence of use by the applicant, but concluded that the use was insufficient to establish that the mark had acquired distinctiveness in Australia at the time of the application. Furthermore, the Court found that the applicant's mark was not deceptively similar to the respondent's trading name, as the respondent's name was not a registered trade mark and the evidence did not establish a likelihood of confusion in the marketplace.

The Court dismissed the application for registration of the trade mark "Honest Tea."

Orders