Hoyt Food Manufacturing Industries Pty Ltd v the Hoyts Corporation Pty Ltd

[2006] ATMO 1

TRADE MARKS ACT 1995

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

Re:Opposition by HOYT FOOD MANUFACTURING INDUSTRIES PTY LIMITED to registration of trade mark applications 825291(16, 30, 41 and 42), 825293 (16, 30, 41 and 42) and 919682 (30 and 43)  - HOYTS AND HOYTS CINEMAS - filed in the name of THE HOYTS CORPORATION PTY LIMITED.

Delegate:

Don Nancarrow

Representation:

Opponent: Mr. Ed Heerey of Counsel instructed by Allens Arthur Robinson, Patent and Trade Mark Attorneys, Melbourne

Applicant: Mr. Ken Hamilton of Phillips Ormonde & Fitzpatrick, Patent and Trade Mark Attorneys, Sydney

Decision:

No finding s. 42, opposition not successful under ss. 44 and 58, but succeeded under s. 60 in relation to class 30 goods only; deletion of class 30 claim required to enable application to proceed; parties to bear own costs. 

Background

1.     This group of three oppositions to registration followed an earlier opposition where the roles of the two parties were reversed and just one trade mark was involved. Because of that earlier action and the use made of that decision by the parties, I intend to refer to the opponent in the present matter, Hoyt Food Manufacturing Industries Pty Limited, as HF and the present applicant, The Hoyts Corporation Pty Limited, as HC.

2.     HC filed these three applications on 25 February 2000 (825291 and 825293) and 12 July 2002 (919682). Acceptance was advertised on 27 March 2003 (919682) and 24 June 2004 (825291 and 825293). All three opposition actions were ready to be heard simultaneously and all three matters came before me in Canberra on 21 September 2005.

3.     Both HF and HC enjoy quite strong reputations in their respective major fields of business interest, HF as a food manufacturer and HC for its chain of cinemas. They have co-existed for a very long time, HC having screened motion pictures in Australia from as early as 1908 and HF having a date of incorporation for its food business of 18 August 1960. Given this co-existence, and the fact that their fundamental areas of interest in business would appear to be poles apart, this opposition action may initially come as a surprise to some. However, when we consider that HF have a registered trade mark which includes confectionery in its specification, and all three trade marks of HC in the present action also include confectionery, the divide between the parties begins to diminish.

4.     The details of the three applications filed by HC and presently opposed by HF are as shown in the following table.

Filing No.	Filing Dates	Classes, Goods & Services	Endorsement
825291	25/2/2000	[16] Printed matter; periodicals and stationery [30] Confectionery and popcorn [41] Entertainment services including cinema theatre entertainment services; providing cinema theatre facilities; entertainment information; providing online information on entertainment and cultural activities; rental of motion pictures; booking and ticketing services for entertainment and cultural activities including online booking and ticketing services [42] Provision of food and beverages	The trade mark registration is limited to the colour RED as shown in the representation of the trade mark attached to the application form.* Provisions of subsection 44(4) applied.*
825293	25/2/2000	[16] Printed matter; periodicals and stationery [30] Confectionery and popcorn [41] Entertainment services including cinema theatre entertainment services; providing cinema theatre facilities; entertainment information; providing online information on entertainment and cultural activities; rental of motion pictures; booking and ticketing services for entertainment and cultural activities including online booking and ticketing services [42] Provision of food and beverages	The trade mark registration is limited to the colour RED as shown in the representation of the trade mark attached to the application form.* Provisions of subsection 44(4) applied.*
919682	12/7/2002	[30] Popcorn and confectionery [43] Provision of food and beverages	Provisions of subsection 44(4) applied.*

5.     The trade marks involved here are as depicted below:

825291  825293

6.     The third trade mark, 919682, is simply the word HOYTS in normal upper-case typescript.

7.     The evidence in all three matters is the same in substance, although some was filed in a slightly different manner on different trade marks, some declarations for earlier actions being exhibits to declarations for later actions. I will list the evidence as filed for the first action, 919682, although all this material applies equally to the other two actions.  I will leave a detailed discussion of the evidence to my reasons in the section under “Submissions, the Law and Comments” because different aspects of the evidentiary material need to be applied in relation to specific sections of the Trade Marks Act 1995 (the Act).

Declarant	Date Declared	Exhibits	Known As
Evidence in Support
Tony Victor Lolis	27.04.04	TVL-1 & TVL-2	Lolis 1
John Accardo	11.06.04	JA-I to JA-VI	John Accardo
Tony Victor Lolis	11.06.04	TVL-1	Lolis 2
Ray Accardo	11.06.04	RA-I to RA-VIII	Ray Accardo
Evidence in Answer
Anthony John Murray	09.09.04	AJM-1 to AJM-7	Murray

8.     Neither party here has a difficulty co-existing with the other with respect to the major field of interest. The problem appears to have arisen over a situation whereby HF believes that HC may be interested in joint promotions in supermarkets with some third parties that are high profile food manufacturers. HF have their main interest in sales via supermarket shelves and the primary use that HC have made of sales of foods has been in connection with their cinemas. HF is, therefore, concerned that this balance may shift if HC gains registration of the present applications – especially in respect of “confectionery and popcorn” and “provision of food and beverages” and uses the same trade channels as HF. HF conceded that it saw no difficulty with the applications in respect of goods and services in classes 16 and 41. For this reason, I do not intend to consider HF’s opposition as applying to classes 16 or 41 and, so, the worst case scenario for HC in these circumstances would be the deletion of the other classes from their applications.

9.     Both parties made reference to the earlier TMO decision of Hearing Officer Thompson, Hoyt’s Corporation Pty Limited v Hoyt Food Manufacturing IndustriesPty Limited, (2003) 61 IPR 334, for which the present opponent, HF, had been the applicant for trade mark number 764053 and the present applicant, HC, had been the opponent. In that decision Mr. Thompson was critical of the evidence of HC in showing its use of the trade mark HOYTS on the refreshments sold within its cinema complexes. He said at ¶49:

Thus, while it is possible that the opponent has provided a refreshment service under the trade mark HOYTS for some time, the precise nature of the service over the years is elusive, as is the exact duration of its provision.

10.   Mr. Thompson, of course, was considering whether the opposition of HC was sufficient to overturn the initial claim made by HF as the applicant for the mark. It is, in terms of s. 55 of the Act, for the opponent to establish its opposition. The Hearing Officer in the end needs to positively accept the opponent’s position for the opposition to succeed. Mr. Thompson was not prepared to do that. In terms of the present opposition matters, the roles are reversed. It is for HF to provide sufficient evidence for me to find that the initial claims of HC must be overturned if the opposition is to succeed. Thus, although HF sought to place much emphasis on the earlier decision, I must consider and decide rather different issues. Moreover, fresh evidence concerning use of its marks has been supplied by HC for these oppositions. Additionally, the evidence of the operations of HC, and, in particular, the “concession” arrangements in their food sales areas (Hoyt’s v Hoyt, supra, at ¶9 to 11), was not placed before me. The actual operations of HC described in the evidence before Mr. Thompson, both for Australia and in the United States, had left him with some serious doubts as to the exact nature of HC’s trade and the consequent questions concerning both use of the mark and reputation in the trade mark for HC. For the present matters, no evidence has been filed by either party concerning either HC’s American operations or any material in annual reports that could imply another user of the HC trade marks.

11.   The Murray declaration before me sets out annual sales figures from 1992 to 2004 of HC’s trade concerning “food and drinks” and, as a sub-set of those figures, sales for “popcorn” and “confectionery”. For Mr. Thompson the lack of a clear explanation of HC’s operations in the evidence flowed even to the point that it was unclear if that party used their trade marks in relation to goods or services (Hoyt’s v Hoyt, supra, at ¶12 to 16). So, while Mr. Thompson’s decision may be a useful point of reference on some issues, it does not determine the present matters. Certainly, HC has endeavoured to clarify its operation with the evidence filed in the present opposition matters.

Grounds of Opposition

12.   The notices of opposition listed grounds under the Act in terms of ss. 41, 42(b), 43, 44, 58, 59, 60 and 62. At the hearing, HF indicated that it would not pursue the grounds under ss. 41, 43, 59 and 62. For the sake of completeness I find that these four grounds have not been made out in respect of opposition to all three applications.

Submissions, the Law and Comments

(a) Sub-section 42(b)

13.   Here the Act reads:

Trade mark scandalous or its use contrary to law

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

(a) ….
(b) its use would be contrary to law.

14.   HF argued that this ground could be made out either by reference to the Trade Practices Act 1974 (TPA) or by showing that another ground of opposition was successful under the present Act. The second option here is not required because if the opponent has already won an opposition action by use of another section of the Act then it would be superfluous to rely on that section to also make out s. 42(b).

15. In relation to s. 52 and s. 53 of the TPA I do not believe that HF put material before me that could be construed as conduct that would be “misleading or deceptive” (s. 52) or as representing their goods or services in a “false or misleading” manner (s. 53) on the part of HC.

16.   HF claimed that co-promotions in supermarkets between HC and Nestle, HC and Coca-Cola, HC and Kellogg’s could all mislead or deceive consumers into believing that any HOYTS or HOYT’S branded products from these promotions would be seen as sourced from HF. Evidence of such co-promotions was not before me. The declarations of both Ray Accardo and John Accardo did allege such co-promotions by HC, but this is far from evidence of “misleading or deceptive conduct” or “false or misleading representations”.

17.   All of the comments above are particularly concerned with the past operations of HC. However, a further aspect must be considered – future use by HC. The question here is: “If HC gains registration, would the notional fair use that HC could properly make of its trade marks be contrary to law?”

18.   In view of my findings under s. 60 I do not need to fully deal with this ground here and I make no finding concerning s. 42.

(b) Section 44

19.   The Act provides:

Identical etc. trade marks

44.(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.

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

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

(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2:  For similar services see subsection 14(2).
Note 3:  For priority date see section 12.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:  For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:  An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:  For predecessor in title see section 6.
Note 3:  For priority date see section 12.

20.   The first consideration here is the similarity of the respective marks of HC and HF. The standard tests are set out in Shell Co of Australia v Esso Standard Oil, (1961) 109 CLR 407, and Australian Woollen Mills v F S Walton, (1937) 58 CLR 641. I do not think that any serious dispute arose here.

HC’s application 825291  HF’s registration 764053

21.   The application of HC for 919682 is for the word HOYTS in normal upper-case lettering.

22.   Certain marks of both parties (764053 for HF and both the upper-case hand written word HOYTS and the logo form found as versions of the series of marks in 440599, 440600 and 440601 for HC) were found to be substantially identical in the earlier decision of Hearing Officer Thompson, where he compared 764053 with those series. I agree with those findings and both parties also accepted that trade mark 764053 is substantially identical with both 919682 and 825291 in the present action. Two other marks, one owned by each party, are also involved here.

HC’s application 825293.

23.   The other trade mark of HC, 825293, is the logo form of the word HOYTS together with the word CINEMAS in upper-case lettering but with only one-seventh the font size of the word HOYTS in the mark, shown above. As the word HOYTS dominates the mark and the word HOYT’S dominates the mark of HF (764053) I find that these two are, at least, deceptively similar.

24.   The other mark of HF, 500440, shown below, is also dominated by the word HOYT’S, but this time in upper-case hand written script. This mark is also, at least, deceptively similar to all three applied for marks, 825291, 825293 and 919682 of HC.

HF’s registered trade mark 500440.

25.   The second consideration concerns the similarity of the various goods and services of the parties. Given that HC’s marks 825291, 825293 and 919682 all claim “confectionery” within their specifications of goods and HF’s mark, 764053, also nominates “confectionery” then that leg is also shown in respect of opposition in relation to 764053.

26.   The other mark of HF, 500440, only specifies “spices and essences” for its goods. Although the end of the trade channels may have a convergence, I do not believe that the nature, characteristics or uses of “spices and essences” bears any real connection with those for “confectionery and popcorn”, the closest of HC’s applied for goods, as per Jellinek’s Application (1946) 63 RPC 59 and John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 at 372. Thus, in relation to HF’s mark 500440, I find that s. 44 does not present a barrier to the three applications.

27.   This is not the case for 764053, however, which has a priority date of 4 June 1998, whereas for the marks of HC we have 25 February 2000 (825291 and 825293) and 12 July 2002 (919682).

28.   Therefore, all three legs of s. 44(1) have been satisfied by 764053 against the three marks applied for. The matter does not end there. During the course of examination, HC provided evidence of prior continuous use of the three marks applied for in an effort to have the marks put on the register with an endorsement involving s. 44(4). HF vigorously submitted that such “use” merely showed that HC provided a service – that it supplied various drinks, confectionery, ice-creams and popcorn on behalf of other traders. Any use by HC, so claimed HF, was a service at best, but not use in relation to goods.

29.   For his part, Hearing Officer Thompson in the earlier decision, Hoyt’s v Hoyt, supra, at 338 to 340 and 347 had been in serious doubt about whether HC had shown use of its mark in relation to goods or whether use was in respect of services only. He had further concerns that if the mark had been used in relation to goods, then the date of first use of the mark on self-serve lollies and popcorn was unclear. Mr. Thompson also observed that use of trade marks was not consistent between different cinemas of HC. In the end, Mr. Thompson did not positively accept that HC provided sufficient evidence to discharge its onus as the opponent to make out an opposition ground.

For my part, I have been provided with more specific evidence of use by HC involving sales figures for “food and beverages” from 1992 to 2004 and an estimate of the percentage of these figures that is attributable to sale of “confectionery and popcorn” (Murray). Exhibits to this declaration provide photographic evidence of the kiosk or refreshment area at one of HC’s cinema complexes. The HOYTS trade mark is prominently displayed above the counter area where these refreshments may be purchased. The evidence also goes to show that HC sells unmarked, self-serve confectionery and cooked popcorn in bags and containers that are marked with both the HOYTS trade mark and “Candy House”. The words “Candy House” may well be a trade mark, though not on the Register, or may allude to a description of the area where the confectionery may be obtained in the cinema foyer. The sales figures, photographic evidence and bags described above had not been part of the evidence for the earlier decision of Hearing Officer Thompson. In Hoyt’s v Hoyt, supra, at ¶67 he stated (emphasis present in original):

The third difficulty for the opponent [HC] is that it has not shown that it has used its trade mark HOYTS in relation to the goods, “Coffee, tea, confectionery, ice, non-alcoholic drinks.” The closest that the opponent comes to demonstrating use of its trade mark on goods which include the goods to which it objects is on self-serve lollies; however, these ‘goods’ are not displayed under the trade mark HOYTS – the lollies are sold under the signs CANDY HOUSE or CANDY COUNTER.

In the present evidence, most of the self-serve confectionery is already marked with trade marks of third parties such as Nestle’s, M&M’s, Maltesers and Minties (Lolis 2). Clearly HC are merely offering services of providing these foods in relation to these items. Such services would appear to cover the majority of their confectionery trade.

As described above, some of their confectionery, however, is not wrapped or marked and is dispensed in bulk (Lolis 1) into bags simultaneously bearing both the word HOYTS and the words “Candy House”. (Murray). These goods are obtainable from the refreshment areas of the cinemas of HC and exhibits to the Murray declaration show that both HOYTS and “Candy House” signs are prominently displayed in the area. For the unwrapped, unbranded confectionery and the popcorn goods sold at the HOYTS counter no other identifiable trade source exists on the goods, on the bag or on the container.

Is this use of the HOYTS mark in relation to goods or services or possibly both goods and services? Lord Wright has commented on a situation not dissimilar to this in Aristoc Limited v Rysta Limited 62 RPC 65 at 82 with the words:

There is a fundamental difference between the “origin” of goods, that is between that which gives them their permanent and essential character before they leave their source of origin, and a mere repair or processing which may be done at any subsequent time and is merely partial and evanescent, like the repair of “ladders” in stockings or the processing or servicing of goods which does not affect their essential character. The word “origin” is no doubt used in a special and almost technical sense in this connection, but it denotes at least that the goods are issued as vendible goods under the aegis of the proprietor of the trade mark, who thus assumes responsibility for them, even though the responsibility is limited to selection, like that of the salesman of carrots on commission in Major v Franklin, 25 RPC 406.

I accept, in the present matter, that HC has shown by use of its HOYTS marks displayed on the food outlet and on the bags or containers that it has assumed responsibility for the goods. If a purchaser experienced a problem with these goods then HC would be the party to approach. In the eyes of such a purchaser there would be no other party that they could approach to take any responsibility.

It is possible to trade in both goods and services at the same time. This is borne out by the words of Whitford J. in the Visa Trade Mark, [1985] RPC 323 at 331:

On the appeal Mr. Paterson suggested, on behalf of the Registrar, that what has to be decided is whether, as a matter of reality, the applicants can be said to be trading in the goods as opposed to supplying a service. In my view, they are both trading in goods and supplying a service. Without the goods, cheques and cards, twice bought and sold, the service is useless. Without the service, the goods are pointless. Cheques and cards are not ancillary to the services; they are not adjuncts, they are essential articles.

I also note that Shanahan’s Australian Law of Trade Marks & Passing Off 3^rd Edition on page 49 at [2.230] under the heading “Retailing” comments:

A retailer may arrange for goods to be produced under the retailer’s “own brand”. The sign then indicates that retailer’s responsibility for the goods in question and is properly registered in the retailer’s name for such goods.

The operation of HC, shown in the evidence here, directs me to the conclusion that although much of HC’s food and beverage trade under the HOYTS marks is in relation to services only, the trade in relation to both popcorn and the unbranded confectionery is trade in relation to both goods and services as per s. 17 of the Act. This is not a large part of their overall food operation, but the evidence points to such on-going activity from 1992. Mr. Murray had claimed that HC had been operating in this manner for much longer but the evidence here supports 1992 as the earliest date.  

The only trade mark of HF that proved to be a barrier to the three marks of HC (in terms of confectionery goods under s. 44(1)) was 764053 with priority date 4 June 1998. I am satisfied that HC sold confectionery and popcorn from at least 1992 in their cinema refreshment areas and have also supplied the services of “Provision of food and beverages” for at least that same period.

The operation of s. 44(4) makes it possible for two traders to register identical trade marks on the same goods in the same market – provided that the second party to apply for registration had used the mark on their nominated goods and services continuously and prior to the priority date of the first application (or registration). Hence, the provisions of s. 44(4) override s. 44(1) and s. 44(2). I accept that that is the case here. Thus, I find that the application was properly accepted under the provisions of s. 44(4). HF’s trade mark 764053 registered from 4 June 1998 is sufficient to block the three applications but HC has used its marks on “confectionery and popcorn” and in relation to “provision of food and beverages” from 1992, a date which enables s. 44(4) endorsement to be applied.

I find that the ground of opposition taken under s. 44 has not been established.

I do note here that the evidence of use to bring about this outcome has been use by HC by means of the refreshment bars that are found as part of the “cinema experience” provided by HC.  I shall return to this factor in dealing with s. 60.

(c) Section 58

Here, the Act allows:

Applicant not owner of trade mark

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

Note:  For applicant see section 6.

Four aspects are to be considered in relation to ownership of a trade mark for an opposition in respect of s. 58. These are:

(1) in applications for registration rights are to determined as at the date of application (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594);

(2) ownership rights in a trade mark reside in either the first use in trade in Australia on the relevant goods (Settef S.p.A. v Riv-Oland Marble Co. (Vic) Pty Ltd 10 IPR 402 at 413), or the making of the application to register (Shell Co (Aust) Ltd v Rohm & Haas Co (1948) 78 CLR 601 at 625 to 628);

(3) a determination whether or not the respective goods or services are “the same kind of thing” (Re: Hicks’s Trade Mark (1897) 22 VLR 636); and

(4) a determination whether or not the respective trade marks of the parties are substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 31 IPR 375 (FC)).

The dates of filing the present applications are 25 February 2000 (825291 and 825293) and 12 July 2002 (919682).

Mr. Heerey submitted that I should consider not only “confectionery” but also both “popcorn” and “popping corn” as being goods that are the “same kind of thing” between the specifications for the present applications and any evidence filed by HF.

The relevant trade marks for these goods I find are substantially identical. I have already found, in relation to s. 44, that of the three marks applied for here by HC both 825291 and 919682 are substantially identical to the mark registered to HF, 764053. Additionally, HF has shown some use of a trade mark under common law being the typed word HOYT’S which I find substantially identical to all three marks applied for by HC.

The remaining question concerns dates of either first use or application for registration.

With regard to confectionery, I note that the dates of application for the present applications by HC are 25 February 2000 (825291 and 825293) and 12 July 2002 (919682). However, I have already found that HC had use on confectionery, in the refreshment areas adjoining their cinemas, from 1992. Some earlier dates than this were suggested in the Murray declaration but without firm evidence. HF has not shown earlier use on confectionery. Thus, in relation to “confectionery” HC has the earlier date of 1992.

For the question involving popping corn, both of the Accardo declarations exhibit a supermarket display of this item. Critically, however, there is no date linked to this evidence. Even if I were to consider “popcorn” and “popping corn” as “the same kind of thing” such material cannot overturn the earlier date of use by HC for “popcorn” of 1992.

Both parties, here, I believe could have provided somewhat better evidence. Because both were well aware of their own operations, the details that could have proved use at a date well before 1992 (by either party in relation to popcorn or popping corn) were apparently overlooked and simply not provided - apart from bald allegations of such earlier use from both sides in their declarations.

In terms of opposition under s. 58 I find that the ground has not been made out.

(d) Section 60

Under the Act, this section reads:

Trade mark similar to trade mark that has acquired  a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

To successfully trigger this ground of opposition, HF must point to a trade mark that is either substantially identical with, or deceptively similar to, the marks applied for by HC, and which before the dates of application of HC’s three marks had acquired a reputation in Australia. In addition, because of the reputation of that mark, use by HC of its three marks would be likely to deceive or cause confusion.

As discussed above, I accept that HF does use marks that are substantially identical with, or at least, deceptively similar to, all three marks of HC.

Mr Heerey led me through the evidence setting out the reputation of HF via the two Accardo declarations. He noted that HF has been incorporated since 1960. He also worked through the evidence provided by HF of the sale of their goods in national supermarket chains (namely Coles, Bi-Lo, Woolworths/Safeway, IGA and Franklins) and demonstrated that they are a major supplier to the large Greek and Italian communities in Australia with sales of various food ingredients regularly used in such European-style cooking. HF claims to sell their goods through approximately 3000 supermarkets in Australia. It has continuously used its HOYT’S marks since forming the family business in 1960 and that business has grown to reach quite impressive sales by 2003. That year is beyond the time frame for s. 60, but still supports a favourable inference about the situation in 2000 (for 825291 and 825293) or 2002 (for 919682). Mr Heerey also directed me to the charitable works sponsored by HF and the reputation that this has produced for HF in the minds of consumers in the community.

The greatest problem in the evidence for HF is that much of it post-dates HC’s present applications and some of it is not dated at all. One such undated item is a list of goods available with measures listed in Imperial units of gallons, pounds and ounces. The item provides a six-digit telephone number for the Melbourne suburb of Malvern. These changes, of units of measure and the move from six-digit to seven-digit telephone numbers, took place some time in the late 1960’s or early 1970’s. This list contains a number of goods sold by HF from that time and assists in understanding the reputation in the HOYT’S mark that HF claims for s. 60.

As mentioned earlier, not all the evidence provided by HF directly relates to a reputation in its HOYT’S marks as at the dates of filing the present applications, being 25 February 2000 (825291 and 825293) and 12 July 2002 (919682). However, I believe that I have sufficient material before me to say that the reputation in its mark enjoyed by HF is such that I am satisfied use by HC of its HOYTS marks on some of its nominated goods or services would have been likely to cause deception or confusion in the same market-place. A factor here, of course, is that the respective marks of HF and HC have as their key identifying feature the words HOYTS or HOYT’S – a difference that the general public would not, in my view, readily discern. The degree of similarity of the respective marks here produces some concern.

Significantly, s. 60 does not require an opponent to show use on similar goods and/or services to those that have been applied for. The test is – would use, by the applicant, in a fair and normal manner on goods or services within the specifications, be likely to lead to deception or cause confusion to the purchasing public in the face of the opponent’s reputation?

The operation of s. 60 in such a situation (whereby the reputation of the opponent must be considered) overrides the provisions of s. 44, in the instance whereby an amount of deception or confusion is to be tolerated if an applicant can show that it qualifies for acceptance under s. 44(4). In the present matter I note that HF has won reputation in sales under its marks almost exclusively in supermarkets in relation to unprepared foods (although that reputation has been much enhanced by its charitable works supporting many non-profit organizations) whereas the use that HC showed to be offered the provisions of s.44(4), for the acceptance of the three applications, is exclusively in the food and beverage outlets associated with their cinemas dealing in prepared foods. Moreover, it is primarily use in relation to the services of providing food and drink through these outlets that the offer of acceptance was made. This commercial reality has been the case for some time without any documented cases of deception or confusion.

However, if HC gained a registration in respect of their trade in goods (as distinct from their services) and did place “popcorn and confectionery” goods on shelves in supermarkets or in any such areas that the purchasing public could readily infer a connection via HF’s reputation then I believe that deception or confusion would be likely, or even highly likely.

Thus, I find in terms of s. 60 that HF has established a sufficient reputation to make out their opposition. However, with an appropriate restriction on the applications of HC it is possible to avoid the deception and confusion that would be likely to flow from a registration that allowed unfettered use of their marks by HC. There are many items within HC’s specifications for the present marks that are acceptable.   

Before I outline the items that I believe are acceptable, I must turn to one issue on which HF, through submissions, placed great emphasis. This concerns the scope of the term “Provision of food and beverages” in HC’s specifications for the three trade marks. HF argued that a registration for such services would enable HC to gain trade mark protection to sell such goods in any manner, at any location, at any time by any chosen means – in short, without restriction. This is not the case. These services are now found in class 43 of the International Classification of Goods and Services (Nice Classification Version 8) although at the time the first two applications were made, the services fell in class 42 of the previous Nice version. I note that “Retailing services” fall in class 35 and are clearly not encompassed by a claim for “Provision of food and beverages”. The latter is along the same lines as “Restaurants” and “Take away food services” both presently found in class 43. A trade mark registered in relation to services is registered in respect of the nature of the work or task being performed rather than the goods on which that work is being done. So a registration covering such services would not, in my opinion, provide an unrestricted cover for HC in relation to goods.

Returning to the s. 60 matter, I am confronted with an assessment of which goods and services within the scope of HC’s applications will or will not be likely to deceive or cause confusion in the face of HF’s reputation in its marks.  As I have mentioned earlier I am not bound by any restrictions of finding that goods must be similar (or services must be closely related) to the goods for which HC has obtained its trade mark reputation. Essentially it is a purely practical consideration. The question is “for these two competing, substantially identical trade marks, what goods or services cannot co-exist without a likelihood of deception or confusion?”

I have decided that in relation to trade mark application 825291 that the s. 60 ground is established in relation to class 30 only. The same is true for application 825293. For 919682, HF has an even stronger case – because that trade mark is simply the word HOYTS in normal upper-case lettering.

The net outcome is that if HC are prepared to delete their claims for class 30 goods, then the relevant marks could proceed.

Decision

My decision in terms of s. 55 is that the applications may not proceed in their present form. I refuse to register them unless they are amended to meet my requirements. However, I also decide that if, within 14 days of this decision, an amendment is requested so as to delete the class 30 goods from one or more applications, the relevant application(s) may proceed to registration.

Costs

Both parties requested their costs. In view of the overall result in this decision, in which both parties have been partly successful, I direct that each party bear its own costs.

Don Nancarrow

Hearing Officer

Trade Marks Hearings

6 January 2006