Innovation Ventures, LLC v Life Essentials GmbH

[2015] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by Innovation Ventures LLC to protection of International Registrations Designating Australia 1604434, 1604435 and 1604436 (International Registrations 1167525, 1167526 and 1167527) held by Life Essentials GmbH.

Delegate:	Jock McDonagh
Representation:	Opponent: Jurgen Bebber of Griffith Hack Patent and Trade Mark Attorneys Holder: No appearance or submissions
Decision:	2015 ATMO 122 Reg. 17A.29 opposition – Grounds pursued under sections 42(b), 44, 58 and 60 – section 60 ground established – no requirement to consider other grounds -- IRDA refused protection

Background

1.     Trade Marks 1604434, 1604435 and 1604436 are the Australian designations (“IRDA”) under the Madrid Protocol of international registrations 1167525, 1167526 and 1167527 held by Life Essentials GmbH (“the Holder”).

1. Section 189A of the Trade Marks Act 1995 (“the Act”) governs the consideration of IRDAs. This section makes provision for the Trade Marks Regulations (“the Regulations”) to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.” 

2. Details of the IRDA are as follows:

Trade Mark Application Nos	1604434  1604435  1604436
Trade Marks	ON 5 HOURS               ON 5
Priority Date:	12 November 2013
Goods and Services:	Class 5: Pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, including fortifying and strengthening preparations, namely vitamin preparations and tonics and preparations and products containing minerals and/or vitamins and/or trace elements for health purposes; Chinese traditional medicine; medical infusions, medicinal infusions; dietetic substances adapted for medical use, appetite suppressants for medical purposes; nutritional supplements; dietary supplements; non-alcoholic herbal liquid supplements Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups, essences and other preparations for making beverages; non alcoholic beverages including refreshing drinks, energy drinks, whey beverages, isotonic, hypertonic and hypotonic drinks (for use and/or as required by athletes); malt beer, wheat beer, porter, ales, stouts and lager; non alcoholic malt beverages; pastilles and powders for effervescing beverages and non-alcoholic cocktails Class 35: Advertising, including promotion of goods and services and of competitive events, including competitive events of a sporting nature; advertisement mediation; distribution of samples; on-line advertising on a computer network; rental of advertising time on communication media; business organization consultancy; company management; office functions; office functions; arranging of trade fairs and exhibition for commercial or advertising purposes; rental of vending machines; wholesaling, retailing and mail order, including via the internet and other electronic networks, of the following goods: pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, including fortifying and strengthening preparations, namely vitamin preparations and tonics, and healthcare preparations containing minerals and/or vitamins and/or trace elements, traditional Chinese medicines, medical infusions, including medicinal infusions, dietetic substances adapted for medical use, appetite suppressants for medical purposes, food supplements, dietary supplements, beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups, essences and other preparations for making beverages, non-alcoholic drinks, including soft drinks, energy drinks, whey beverages and isotonic, hypertonic and hypotonic drinks (for use and/or as required by athletes), non-alcoholic liquid supplements, malt beer, wheat beer, porter, ale, stout and lager, non-alcoholic malt drinks, pastilles and powders for effervescing beverages and non-alcoholic cocktails

1. Following examination, IP Australia advertised its intention to protect the IRDA in the Australian Official Journal of Trade Marks on 30 April 2014.

2. On 27 May 2014, Innovation Ventures LLC (“the Opponent”) filed Notice of Intention to Oppose (“the Notices”) protection of the IRDA pursuant to Reg 17A.34 of the Regulations.  The Opponent filed a Statement of Grounds and Particulars (‘the Statement’) on 12 June 2014. Thereafter the Holder filed Notice of Intention to Defend on 9 July 2014. The Opponent filed evidence in support as provided by the Regulations. The Holder has not filed any evidence.

3. I heard the matter in Melbourne on 22 July 2015 as a delegate of the Registrar of Trade Marks. Jurgen Bebber of Griffith Hack Patent and Trade Mark Attorneys represented the Opponent. The Holder’s legal representatives, Davies Collison Cave Patent and Trade Mark Attorneys advised that the Holder would not be attending the hearing either in person or through its attorneys, nor relying on any representation.

   Grounds of Opposition

   7. The Opponent nominated 5 grounds of opposition in the Statement: under sections 42, 44, 59, 60 and 62A of the Act. At the hearing, the Opponent abandoned the section 44 ground. The onus is upon the Opponent to establish one or more of the remaining grounds on the ‘balance of probabilities’.[1]

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 (4 November 2015), following Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39], Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] – [27] andPfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

4. The time at which the grounds of opposition must be established is the date of filing of the application[2].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Evidence

   9.     The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Matt Dolmage (‘Dolmage)	Chief Financial Officer of Opponent	31.10.14	MD-1 to MD-17
Jurgen Bebber (‘Bebber 1’)	Principal of Opponent’s Attorneys	15.10.14	JB-1 to JB‑5
Jurgen Bebber (‘Bebber 2’)	Principal of Opponent’s Attorneys	12.11.14
Jurgen Bebber (‘Bebber 3’)	Principal of Opponent’s Attorneys	13.11.14	JB-6
Simon Gapes (‘Gapes’)	Employed Solicitor and Attorney of Opponent’s Attorneys	7.07.15	SG-1 to SG‑6

Discussion

Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

10. 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.

Note:For priority date see section 12.

1. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion. Such a finding has not been found in this matter; however, that is not necessarily fatal to the section 60 ground.

2. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102 by Kenny J at [81]-[82]:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

3. Further, at [86], Kenny J said:

   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.

4. In order to establish reputation it is not necessary for the business of the Opponent to be conducted in Australia. Justice Lockhart stated in Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at page 342 that “there must be evidence of local reputation, but business activities need not be carried on within the forum”. On the same page, he continued:

   It is no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on. Modern mass advertising through television (which reaches by satellite every corner of the globe instantaneously), radio, newspapers and magazines, reaches people in many countries of the world. The international mobility of the world population increasingly brings human beings, and therefore potential consumers of goods and services, closer together and engenders an increasing and more instantaneous awareness of international commodities. This is an age of enormous commercial enterprises, some with budgets larger than sovereign states, who advertise their products by sophisticated means involving huge financial outlay. Goods and services are often preceded by their reputation abroad. They may not be physically present in the market of a particular country, but are well known there because of the sophistication of communications which are increasingly less limited by national boundaries, and the frequent travel of residents of many countries for reasons of business, pleasure or study.

   … it is still necessary for a plaintiff to establish that his goods have the requisite reputation in the particular jurisdiction, that there is a likelihood of deception among consumers and a likelihood of damage to his reputation. But reputation 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 (see for example C and A Modes, Orkin and Midas).

   15.     In Next Retail Limited v Gordon Simpson Agencies Pty Ltd [2011] ATMO 128, Hearing Officer Irgang found in favour of the Opponent under section 60 taking into account travel related evidence and a high level of reputation in the trade mark in the home country. She stated at [25] and [26] that:

   Given the saturation level of the opponent’s reputation in the UK for its NEXT goods I am satisfied on the balance of probabilities that a number of Australian residents will have come into contact with the opponent’s NEXT branded goods. I am also satisfied that with the opponent’s very considerable reputation and presence in the international marketplace that it is likely a high number of Australian residents would be aware of the opponent’s NEXT branded goods and would be caused to wonder if there was a connection between them and the applicant’s same goods branded with its NEXT trade mark.

   While the opponent’s considerable reputation has been developed overseas, I consider that I need to give it weight in this case, since the repute of its NEXT branded goods is overwhelming in the UK and has reached a level of saturation which can not be disputed. This reputation had also been developed before the priority date of the opposed application. Coupled with the statistical evidence of travel between Australia and the UK, I consider that, given the impressive reputation evidenced by the opponent in its NEXT trade mark, a significant number of Australian consumers would at the very least subscribe to a reasonable doubt8 as to some sort of connection between that well-known trade mark and the applicant’s trade mark, particularly since the trade marks are identical. When to this are added the facts that the goods the NEXT trade marks are used on are the same and given the enormous size and character of the opponent’s reputation, the degree of speculation would, in my assessment, rise to, at the very least, the reasonable doubt required to trigger section 60.

   16.     Dolmage states at [6] that the Opponent is the largest manufacturer and seller of energy drinks in the energy-shot market in the US. It does so under the 5-HOUR ENERGY brand, through a wholly owned subsidiary, Living Essentials LLC (“Living Essentials”).

   17.     At [8] Dolmage states that since the launch of the 5-HOUR ENERGY  brand in September 2004, the 5-HOUR ENERGY products have been available in over 100,000 retail outlets in the USA.

   18.     The Opponent owns Australian Trade mark registration 1281037 5-HOUR ENERGY, in classes 5 (Dietary supplements; energy supplements in liquid form) and 32 (Beverages), registered from 15 January 2009.

   19.     Living Essentials is shown to be a significant sponsor of US sporting events such as PGA Golf, NASCAR motor racing, American NFL football, baseball, cycling, and Rugby. The 5-HOUR ENERGY brand is featured at each of these events. Most of these events are televised in Australia.

   20.     Living Essentials is shown in Dolmage to have conducted considerable marketing campaigns for its 5-HOUR ENERGY products on television, radio and print advertising media, predominantly in the USA. Confidential Annexure MD-8 to Dolmage evidences substantial sales and advertising expenditure globally.

   21.     Furthermore, Dolmage provides evidence of the Opponent selling substantial amounts of its 5-HOUR ENERGY products through its website to Australian customers since 2008, along with requests from Australian and New Zealand entities seeking distributorship arrangements, and evidence of over four thousand Australian IP addresses visiting the opponent’s website during the period 17 September 2007 to 15 April 2010. Additionally, Gape provides evidence to the effect that the US is one of the top three destinations for Australian tourists.

   22.     Dolmage provides instances of the Holder’s use of the opposed trade mark in Germany, showing these are applied to similar products and using get up that is very similar in design and colours to those used by the Opponent’s 5-HOUR ENERGY products. Examples of the get up of the parties’ products are shown below:

Holder’s Products Opponent’s Products

23.     Taking all of the preceding factors into account, I am satisfied that the reputation of the Opponent’s 5-HOUR ENERGY trade mark has ‘spilled over’ into the Australian market.

24.     Given the significant level of the Opponent’s reputation in the US for its 5-HOUR ENERGY products and spill over into the Australian market, I am satisfied on the balance of probabilities that a number of Australian residents will have come into contact with the Opponent’s 5-HOUR ENERGY branded goods. I am also satisfied that with the Opponent’s very considerable reputation and presence in the US and foreign marketplace that it is likely a significant number of Australian residents would be aware of the Opponent’s 5-HOUR ENERGY products and would be caused to wonder if there was a connection between them and the Holders similar goods branded with its IRDA.

25. Therefore, the Opponent has established a ground of opposition under the provisions of section 60. Having found in favour of the Opponent in terms of section 60 there is no need for me to discuss the other grounds argued by the Opponent although these grounds or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision and Costs

26.     Regulation 17A.34N provides:

(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)  to refuse protection in respect of all of the goods or services listed in the                  IRDA; or

(b)  to extend protection in respect of some or all of the goods or services   listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the

IRDA was opposed have been established.

(2) The Registrar must notify the International Bureau of the Registrar’s decision.

27.     I have found the opposition to be successful.  Accordingly, I refuse protection of the IRDA. 

28.     As the successful party, the Opponent is entitled to its costs which I award against the Holder as per Schedule 8 of the Regulations, with costs to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
23 December 2015