Ice Cream Group Australia Pty Ltd v Australasian Food Group Pty Ltd
[2023] ATMO 8
•27 January 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Ice Cream Group Australia Pty Ltd to registration of trade mark application numbers 2038061 – DIXIE CUP and 2038062 – DIXIE CUP VANILLA ICE CREAM (figurative) – both in classes 29 and 30 in the name of Australasian Food Group Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Edward Thompson of counsel instructed by Marque Lawyers Pty Ltd Applicant: Ryan Maguire of counsel instructed by Norton Rose Fulbright Australia |
| Decision: | 2023 ATMO 8 Trade Marks Act 1995 (Cth) – oppositions under s 52 – s 41 considered – no ordinary signification – trade marks inherently adapted to distinguish claimed goods – trade marks may proceed to registration |
Background
This decision concerns oppositions brought by Ice Cream Group Australia Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade marks (together ‘Trade Marks’):
Trade Mark: DIXIE CUP (‘Word Mark’)
Application number: 2038061
Owner: Australasian Food Group Pty Ltd (‘Applicant’)
Filing Date: 18 September 2019
Specification: Class 29: dairy products; dairy desserts (except ice cream or frozen yoghurt); prepared desserts (fruit based); milk; milk products, including milk desserts and milkshakes; yogurt; yoghurt beverages; cream (dairy products); drinks made from dairy products; frozen fruits; prepared fruits; fruit fillings; fruit compote; fruit-based snack foods; jellies; jams; artificial cream (dairy product substitutes); artificial milk based desserts; coconut milk
Class 30: ice cream; frozen yogurt (confectionery ices); gelato; iced lollies; ices; ice confectionery; non-dairy ice cream; non-dairy frozen dessert products being non-dairy ice cream based frozen desserts; sorbets (ices); frozen beverages (edible ices); mousse desserts; imitation ice cream; powder and preparations for making ice cream; powders for edible ices; sauces for ice cream; sauces (condiments); yoghurt confectionery; sugar; honey and honey substitutes
(‘Goods’)
Trade Mark: (‘Logo Mark’)
Application number: 2038062
Owner: Applicant
Filing Date: 18 September 2019
Specification: Goods
The acceptance of each trade mark for possible registration was advertised on 31 March 2020. The Opponent filed notices of intention to oppose on 25 May 2020 followed by Statements of Grounds and Particulars (‘SGPs’) on 23 June 2020. The Applicant filed notices of intention to defend on 3 August 2020.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’) and an oral hearing was requested. Submissions were filed by the Opponent on 14 October 2022 (‘Opponent’s Submissions’) and by the Applicant on 21 October 2022 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 28 October 2022. Edward Thompson of counsel presented submissions on behalf of the Opponent and Ryan Maguire of counsel presented submissions on the Applicant’s behalf.
Grounds of opposition, onus and standard of proof
The SGPs nominated a ground of opposition under s 41 of the Act. To be successful, the Opponent bears the onus of establishing this ground.[1]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 18 September 2019 (‘Relevant Date’), being both the filing and priority date of each application.
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed in respect of both oppositions:
| EIS |
§ Declaration made on 4 November 2020 by Domenica Crupi (Team Leader at the Opponent). § Declaration made on 4 November 2020 by Caterina Ferro (Telesales & Customer Service at the Opponent). § Declaration made on 4 November 2020 by Glenn Stephens (Supply Chain Manager at the Opponent).
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| EIA |
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| EIR |
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[3] A separate declaration made on 4 November 2020 by Angela Hourigan was filed in relation to the Logo Mark. The contents and annexures of that declaration essentially mirror those contained in the Hourigan Declaration and have not been detailed in the interests of brevity.
EIS
Ms Hourigan declares that the term ‘dixie cup’ was originally ‘a brand name for a line of disposable paper cups invented in the United States in 1907 by Lawrence Luellen’.[4] This invention was patented with the United States Patent and Trademark Office in 1912 and was initially named ‘health kup’ before being rebranded as the ‘dixie cup’ in 1919.[5] The Opponent filed the oppositions because it believes the term ‘dixie cup’ has ‘entered the ordinary English language’ and is widely understood in Australia as signifying a disposable paper cup.[6]
[4] Hourigan Declaration, [2.1].
[5] Ibid [2.4]–[2.8].
[6] Ibid [1.5].
The Opponent trades as Everest Ice Cream (‘Everest’)[7] and Everest is one of Australia’s leading frozen dessert manufacturers. Its product range includes ‘dixie cup’ ice creams which are sold to Australian hospitals, schools and various hospitality establishments. Ms Hourigan states that Everest uses ‘dixie cup’ to describe the ‘small, single-use cup that their product is packaged in’.[8] Declarations from employees of the Opponent as well as a customer are annexed to the Hourigan Declaration to support Everest’s continuous use of ‘dixie cup’ in this manner.
[7] Opponent’s Submissions, [2].
[8] Hourigan Declaration, [4.1].
10. Ms Hourigan asserts that Peters Ice Cream (‘Peters’), being the Applicant’s trading name, are ‘not the original owners or creators of the “Dixie Cup” name’.[9] Specifically, it is claimed that both Peters and Everest use the term ‘dixie cup’ as a product name that merely differentiates products. In Ms Hourigan’s view, the ‘practice of a confectionary business naming different products different product names, while offering those products for sale under a trade mark is commonplace in the industry and the average consumer is used to this practice’.[10] On this basis, Ms Hourigan concludes that consumers would not perceive ‘dixie cup’ to be distinguishing Peters’ goods from those of other traders.
EIA
[9] Ibid [5.1].
[10] Ibid [5.4].
11. According to the Collins Declaration, the Applicant is a ‘well-known and popular supplier’ of ice cream products that was established in 1907.[11] The Applicant has produced ‘ice cream products sold in paper cups since approximately 1923’ and the Word Mark has been used in Australia since ‘about the 1940s or the 1950s’.[12] Annexed to the Collins Declaration are brochures which indicate that the term ‘dixie cup’ was first used by the Applicant in 1943 and the Logo Mark was first used in 2017.
[11] Collins Declaration, [4.1].
[12] Ibid [5.1].
12. The Trade Marks have been promoted nationally via print and electronic mediums and they have also featured on the packaging of the Goods. Ms Collins opines that the Trade Marks are inherently capable of distinguishing the Goods and, in any event, believes that ‘the relevant members of the public would associate the Trade Mark[s] exclusively with the Applicant’.[13] This belief is based on the Applicant’s ‘widespread and continuous use of the Trade Marks’ which Ms Collins declares has resulted in ‘significant and consistent sales’ of the Goods.[14]
[13] Ibid [11.2].
[14] Ibid [3.4], [6.1].
13. The Collins Declaration rejects the contention that consumers would not perceive ‘dixie cup’ to be operating as a badge of origin. In Ms Collins’ experience, ‘it is very common in the industry for product names to function as trade marks and be used by consumers to identify the origin of these products and distinguish them from the products of other traders’.[15] The remainder of the Collins Declaration reiterates that the ‘Trade Marks have a long established history and level of recollection with the Australian public that is uniquely tied to the [Goods]’.[16]
EIR
[15] Ibid [10.2].
[16] Ibid [11.1].
14. The Nelson Declaration disputes the Applicant’s asserted reputation in ‘dixie cup’ and points out that it did not coin the term. Rather, ‘dixie cup’ was originally a ‘brand name for a line of disposable paper cups which were first developed in the United States’ and ‘dixie’ simpliciter has been registered as a trade mark in the United States by a third party since 1917.[17] That being so, Mr Nelson claims that other traders have subsequently used ‘dixie cup’ to refer to a disposable paper cup and this widespread use ‘has resulted in the colloquialisation of the term’ in Australia.[18]
[17] Nelson Declaration, [7].
[18] Ibid [9], [14].
15. Mr Nelson explains that disposable paper cups are commonly used to package ice cream and similar products. As an illustration, he declares that Everest has used ‘dixie cup’ for over 34 years to describe its ice cream products ‘which are packaged in small, disposable paper cups’.[19] In Mr Nelson’s view, ‘other traders are highly likely to desire to make use of the term [dixie cup] in relation to their own products’[20] and in fact are using it for its descriptive signification within Australia.
Late Evidence
[19] Ibid [16].
[20] Ibid [9].
16. The Opponent sought to introduce additional evidence (‘Late Evidence’) via Annexure A of its written submissions. The Late Evidence comprises 8 dictionary definitions for the words ‘dixie’ and ‘dixie cup’. The Opponent did not file a request for the Late Evidence to be included as part of the properly filed evidence nor did it provide submissions to support the consideration of the Late Evidence. Instead, the Opponent addressed the introduction of this Late Evidence via a footnote in its written submissions which stated, ‘The definitions in Anx A of this outline are relevant and admissible under reg 21.15(4): see eg Caterpillar Inc v FCA US LLC (2019) 152 IPR 73’.[21] At the hearing, counsel for the Applicant took issue with the Late Evidence remarking that the delayed filing meant that the Applicant had been denied an opportunity to respond to it.
[21] Opponent’s Submissions, footnote 36.
17. Part 51.2.5 of the Australian Trade Marks Manual of Practice and Procedures makes it plain that the Registrar of Trade Marks will generally not consider evidence that is filed out of time in a proceeding unless a compelling case in favour of it being allowed is made. The principles for allowing late evidence into an opposition proceeding were discussed in Fed Square Pty Ltd v Federation IP Pty Ltd (‘Fed Square’).[22] Relevantly, the delegate in Fed Square observed that ‘it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it … there must be further circumstances that make it reasonable for the material to be taken into account’.[23]
[22] [2015] ATMO 42 (‘Fed Square’).
[23] Ibid [55] (emphasis added).
18. Here, the Opponent has not identified any further circumstances that would make it reasonable for the Late Evidence to be considered. Based on the dictionary publication dates, the definitions sought to be included were available prior to and during the evidence stages of this proceeding. However, the Opponent is silent as to why the Late Evidence was not filed earlier. Similarly, no explanation has been provided as to why these dictionary definitions should be considered other than the Opponent baldly stating that they are ‘relevant and admissible’. Given the EIA already contains 4 separate dictionary definitions and, in the absence of any cogent submissions, I am not satisfied that a compelling reason exists for the Late Evidence to be taken into account. Consequently, this decision will only have regard to the evidence which has been properly filed during the evidence stages.
Discussion
Section 41
19. Section 41 of the Act relevantly provides:
Trade mark not distinguishing applicant's goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
20. Determining the merits of the s 41 ground of opposition requires consideration be given to the extent, if any, of a trade mark’s inherent adaptation to distinguish the goods. This is assessed:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[24]
[24] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J) (emphasis added).
21. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[25] explained that the test for distinctiveness under s 41 of the Act involves a
[25] [2014] HCA 48 (‘Cantarella’).
[26] Ibid [71] (French CJ, Hayne, Crennan and Kiefel JJ).
22. The Opponent submits that the Trade Marks are not to any extent inherently adapted to distinguish the Goods. In its view, consumers and traders would understand ‘dixie cup’ as signifying ‘a small, disposable cup (of, for example, ice-cream) and to be a direct reference to a characteristic, quality or kind of the designated goods (eg a small, disposable cup of ice cream)’.[27] Reference is made to the evidence of other traders purportedly using the term for this signification as well as various dictionaries which define ‘dixie’ or ‘dixie cup’ to mean a small disposable cup.[28] The Opponent accepts that ‘dixie cup’ originated as a brand name but contends that it has since ‘entered the Australian language as a generic descriptor for a range of disposable paper cups’.[29] In relation to the Logo Mark, the Opponent argues the presentation and additional element of ‘vanilla ice cream’ does not endow the Logo Mark as a whole with sufficient capacity to distinguish the Goods.
[27] Opponent’s Submissions, [19].
[28] Ibid [20].
[29] Ibid [30].
23. Conversely, the Applicant asserts that the signification of the Trade Marks has ‘always been as a brand, not as a descriptor of goods’.[30] In its view, the Opponent has ‘failed to establish the contended loss of distinctiveness in the [Trade Marks]’.[31] Criticism was levelled at the Opponent’s evidence which the Applicant says generally demonstrates other traders using ‘dixie’ or ‘dixie cup’ as a brand name in relation to disposable paper cups. It characterises Everest’s use of ‘dixie cup’ in a similar fashion and contends that the dictionary definitions relied on do not advance the Opponent’s position.
Ordinary signification
[30] Applicant’s Submissions, [5.3.3].
[31] Ibid [5.1.7].
24. It is common ground between the parties that ‘dixie cup’ has its genesis as a brand name (i.e., trade mark).[32] Where they diverge is in relation to whether ‘dixie cup’ retained this signification at the Relevant Date. The Opponent contends that ‘dixie cup’ had ‘entered Australian parlance as an ordinary descriptor for a small disposable cup’[33] whereas the Applicant submits that the trade mark signification has not been displaced. For the reasons which follow, I am not satisfied that the ordinary signification of ‘dixie cup’, at the Relevant Date, was descriptive of the Goods.[34]
[32] Opponent’s Submissions, [21]; Applicant’s Submissions, [5.3.4].
[33] Opponent’s Submissions, [21].
[34] See Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [59] wherein Justice Yates stated that registrability under s 41 of the Act must be assessed at the filing date of the application.
First, the evidence of other traders using ‘dixie’ or ‘dixie cup’ does not substantiate that ‘dixie cup’ is being used as an ordinary descriptor. To this end, the evidence relied on predominantly consists of undated screenshots of products available on Amazon Marketplace as well as one instance of a distributor or retailer advertising ‘BULLA DIXIE CUPS 36PC’. For reference, illustrative examples are provided below:[35]
[35] Nelson Declaration, Annexure A.
| Example 1 | Example 2 | Example 3 |
26. It is apparent that Examples 1 and 2 show use on products unrelated to the Goods and demonstrates use of the term as a trade mark.[36] Naturally, evidence of this nature does not assist the Opponent’s case. Meanwhile, Example 3 is undated. Thus, it is unclear whether it represents use of ‘dixie cups’ before the Relevant Date. Nonetheless, as the Applicant highlighted, it is a solitary example which ‘merely shows, at best, the use of DIXIE by a lone operator of a website’.[37] By itself, Example 3 does not constitute persuasive evidence of other traders using ‘dixie cup’ as an ordinary descriptor.
[36] See Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ) wherein it was observed that ‘[u]se “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods’.
[37] Applicant’s Submissions, [5.4.6].
27. Second, I acknowledge the EIA contains 4 online dictionary definitions which, broadly speaking, define ‘dixie cup’ as a disposable paper cup.[38] However, this material is of no assistance because each definition is either prefaced by the word ‘trademark’ or qualified with the letters ‘TM’. In this context, these definitions inherently recognise the term as a proprietary name and merely serve to reinforce the Applicant’s position.
[38] Hourigan Declaration, Annexure A. The definitions of ‘dixie cup’ were extracted from Collins Online Dictionary (‘a small disposable paper cup’), Oxford Advanced Learner’s Dictionary (‘a US make of small paper cup, usually bought in quantity in a plastic container that can be kept in the kitchen or bathroom’), The Free Dictionary (‘a brand of disposable paper cup, as for beverages’) and Dictionary.com (‘a brand of disposable paper cup, as for beverages’).
28. Third, the probative value of Everest’s use of ‘dixie cup’ is severely diminished by the fact that the examples provided are generally undated and, at their highest, only reveal sporadic instances of ‘dixie cup’ being used descriptively. I accept that both Ms Hourigan and Mr Nelson assert that Everest has been using ‘dixie cup’ in a descriptive manner for at least 30 years.[39] However, the fact remains that the Opponent’s evidence provides no conclusively dated examples to corroborate this asserted descriptive use.[40]
[39] Hourigan Declaration, [4.1]; Nelson Declaration, [16].
[40] Annexure I to the Hourigan Declaration contains one example which indicates that the advertising material may have been circulated in September 2019. However, as the duration of the campaign is not elaborated upon, no firm conclusion can be drawn based on the sentence which states ‘Be quick – This ice cold offer ends 30th Sept 2019’.
29. Fourth, the declarations provided by the Opponent’s employees do not meaningfully improve its position given the content of each is formulaic and each declarant’s position as an employee naturally raises questions of partiality. Crucially, the declarations do not attach any evidence that support the statements made therein. As such, I attach little weight to this evidence. Meanwhile, the declaration provided by Kevin Day is problematic. This is because it is undated and contains statements which have not been filled in by the declarant such as ‘I, [insert name] of [insert address], solemnly and sincerely …’ and ‘I have been a customer of Ice Cream Group Australia since [insert date]’. For this reason, I attach no weight to this declaration.
30. Based on the evidence filed, I am satisfied that the term ‘dixie cup’ is prima facie inherently adapted to distinguish the Goods within the meaning of s 41 of the Act. The term does not indicate the kind, quality, quantity, intended purpose, value, geographical origin or some other characteristic of the Goods. As ‘dixie cup’ constitutes the entirety of the Word Mark and it is the essential feature of the Logo Mark, I am likewise satisfied that the Trade Marks are prima facie inherently adapted to distinguish the Goods.
31. Given I have found that the Trade Marks do not have an ordinary signification relevant to persons in Australia concerned with the Goods, it follows that there would be no legitimate need for other traders to use the Trade Marks in respect of the Goods. As such, consideration of the second step outlined in Cantarella is not required.
32. Accordingly, the s 41 ground of opposition has not been established in relation to either of the Trade Marks.
Decision
33. Section 55 of the Act relevantly provides:
Decision
(1) 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.
34. The Opponent has not established the s 41 ground of opposition in relation to either of the Trade Marks. As such, trade mark application numbers 2038061 and 2038062 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application(s) should be in accordance with the court’s order or direction.
Costs
35. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, in respect of trade mark application number 2038061, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
36. In respect of trade mark application number 2038062, I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[41]
[41] [2001] ATMO 78.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
27 January 2023
and Edelman JJ).
Key Legal Topics
Areas of Law
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Intellectual Property
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Statutory Interpretation
Legal Concepts
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Statutory Construction
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