Irene Notaras v Barcelona Pty Limited

[2018] ATMO 12

TRADE MARKS ACT 1995

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

Re:Opposition by Irene Notaras to registration of trade mark application 1686087 (16, 21, 29, 30, 35, 40, 43) - ATOMIC - filed in the name of Barcelona Pty Limited

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 12

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 43, 44, 58, 58A and 60 considered – none established – trade mark to proceed to registration

Background

1.  This is an opposition brought by Irene Notaras (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Barcelona Pty Limited (‘Applicant’). 

Application Number:	1686087
Filing Date:	8 April 2015
Goods and Services:	Class 16: Bags of plastics for packaging food; bags of plastics for wrapping foodstuffs; packaging materials made of card or paper for use with food articles; paperboard trays for packaging food Class 21: Coffee cups; cups of paper or plastic; cardboard cups; heat insulated containers for beverages; containers for beverages; containers for food; heat retaining containers for food; isothermic bags for keeping foodstuffs cool Class 29: Prepared meals containing poultry, seafood, game or meat; prepared meals containing tofu or vegetables; prepared meals containing fruit; frozen meals containing poultry, seafood, game or meat; frozen meals containing tofu or vegetables; cooked meals containing poultry, seafood, game or meat; cooked meals containing tofu or vegetables; chilled meals containing poultry, seafood, game or meat; chilled meals consisting of tofu or vegetables; chilled meals containing fruit Class 30: Coffee; coffee beans; ground coffee; coffee products; preparations for making beverages (coffee based); flavoured coffee; instant coffee; unroasted coffee; decaffeinated coffee; mixtures of coffee; coffee substitutes; extracts of coffee for use as flavours in beverages; coffee-based beverages; prepared pasta meals; prepared meals containing rice; prepared meals containing noodles; prepared pizza meals; frozen pasta meals; frozen meals containing rice; frozen pizza meals; frozen meals containing noodles Class 35: Retailing of food and drinks; retailing and wholesaling of coffee and coffee based products (by any means); retailing and wholesaling of prepared meals, frozen meals, cooked meals and chilled meals (by any means) Class 40: Coffee grinding; coffee roasting Class 43: Cafes; cafe services; take away food and drink services; coffee bar and coffee house services (provision of food and drink); coffee shop services; mobile food and beverage services; provision of food and drink; restaurants; restaurant services; catering services (‘Applicant’s Goods and Services’)
Trade Mark:	ATOMIC	(‘Trade Mark’)
Endorsements:	Registration of this trade mark is limited to the state of Western Australia.* Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.* Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.* Provisions of subsection s44(4) and/or Reg 4.15A(5) applied. *

2.  Following the examination process, the application’s acceptance for possible registration was advertised on 21 July 2016 in the Australian Official Journal of Trade Marks.  The Opponent filed a Notice of Intention to Oppose on 25 July 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 16 August 2016. The SGP raised grounds of opposition under ss 42(b), 43, 44, 58, 58A and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 30 August 2016.

Evidence and Submissions

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 5 December 2016.  This evidence consists of a declaration made on 2 December 2016 by Irene Notaras, the Opponent, with attachments IN 1 to IN 45 (‘Notaras Declaration’). 

4.  The Applicant filed Evidence in Answer (‘EIA’) on 20 December 2016.  This evidence consists of a declaration made on 23 May 2016 by Michael De Marte, Director and Company Secretary of the Applicant, with Exhibits MDM-1 to MDM-17 (‘De Marte Declaration’).  The De Marte Declaration was originally filed in response to an objection made by the Examiner to the registration of the Trade Mark.  The Opponent did not file any evidence in reply.

5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 26 April 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Both parties filed written submissions on 26 May 2017 ‘Opponent’s Submissions’ and ‘Applicant’s Submissions’ respectively. 

6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:

(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.

The Opponent

7.  The Opponent is an individual who operates the business Bone Trading Company as a sole trader. The Opponent is the owner of the trade marks listed in the table below (‘Opponent’s Trade Marks’).  The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the (‘Opponent’s Goods’). 

Number	Trade Mark	Priority Date	Goods
791650	ATOMIC (‘Word Mark’)	20 Apr 2002	Class 21: Non electric coffee percolators, espresso makers, coffee machines, and non electric cappuccino makers
1281511	(‘Device Mark’)	16 Jan 2009	Class 21: Stove top coffee maker

8.  The Notaras Declaration contains the following claims/statements:

·     The Opponent has imported, promoted, sold and serviced coffee machines bearing the Opponent’s Trade Marks (‘ATOMIC coffee machines’) since approximately May 1964.  The Opponent has been the sole Australian commercial distributor of the ATOMIC coffee machines, produced in Italy, since 1965, and since the 1980s has arranged for the production of the ATOMIC coffee machines in Italy using the original moulds.

·     The Opponent understands that the Applicant chose the Trade Mark as a result of having been inspired by the ATOMIC coffee machines.  

·     The Opponent has advertised the sale of the ATOMIC coffee machines since the 1960s.  The ATOMIC coffee machines were sold in major department stores in Sydney in the 1970s and the Opponent and her employees would frequently exhibit the products at those department stores, on television and live demonstrations in NSW and Victoria.

·     The Opponent has advertised its ATOMIC coffee machines on television, in magazines, newspapers and other periodicals and through public exhibitions.  The Opponent estimates that her annual expenditure on promotion since 1965 would be between $50,000 and $100,000 in today’s value.  The Opponent maintains an internet site promoting the ATOMIC coffee machines.

·     The Opponent has sold ATOMIC coffee machines and related goods to all parts of Australia, including Western Australia.

The Applicant

9.  The Applicant is a company based in West Australia.  It registered the business name ‘Atomic expresso’ on 27 April 2004.  

10.       The De Marte Declaration contains the following claims/statements: 

·     The Applicant took inspiration for the Trade Mark from the ATOMIC coffee machines made in Italy, though it was not aware of the Opponent and her registration of the Word Mark at the time it chose the Atomic name for its business.

·     From 1 July 2005 the Applicant has operated a café under the name Atomic Expresso located in South Perth.  It opened a similar café in Claremont, West Australia, in April 2011.  It has recently sold the Claremont premises to a third party but has licensed that third party to use the Trade Mark for the Goods and Services at the Claremont premises.

·     The Applicant’s premises have offered food and drink and coffee, including coffee using take-away coffee cups bearing the Trade Mark.  The Applicant also offers clothing and since 2011, 1kg bags of coffee under or by reference to the Trade Mark.

·     The Applicant’s premises are listed in the WA Good Food Guide, have been reviewed by newspapers, and are the subject of various online reviews.

Grounds of Opposition, Onus and Standard of Proof

11. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58, 58A and 60 of the Act. To successfully oppose the application the Opponent needs to establish at least one of the abovenamed grounds.

12.       The onus of proof in an opposition rests upon the Opponent.[1]  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 8 April 2015 (‘relevant date’), being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

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

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 44

13. The relevant provisions of the Act with respect to the ground pursuant to s 44 are reproduced below:

Section 44 - Identical etc. trade marks

(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)it 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.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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.

Section 10 - Definition of deceptively similar

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.

14. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1) or (2), i.e. that at least one of the trade marks upon which it relies:

·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

·     is in respect of similar goods/services, and/or goods/services which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).

15. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use, other circumstances or that the Applicant has continuously used the trade mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and s 44(4) of the Act.

16.       The Opponent has particularised the ground of opposition in the SGP by reference the Opponent’s Trade Marks. The Device Mark is less similar to the Trade Mark than the Word Mark and is registered for goods that are included in the goods for which the Word Mark is registered. Hence for the purposes of this ground of opposition I need only consider the Word Mark since if the s44 ground of opposition fails with respect to the Word Mark it would also fail with respect to the Device Mark.

17.       I note that while the Trade Mark is subject to several endorsements under the provisions of ss 44(3)(a), 44(3)(b) and 44(4) of the Act, some of the endorsements and restrictions relate to other marks raised during examination. The Word Mark was raised during examination in respect to a subset of the goods and services for which the Trade Mark was sought to be registered and the Trade Mark was accepted for registration in respect of the Word Mark following the provision of evidence of honest concurrent use.

18.       I find that the Word Mark has a priority date which is earlier than that of the Trade Mark and is identical to the Trade Mark.  The first two requirements are satisfied.

Similar goods and similar services

19. Section 14 of the Act relevantly provides:

14Definition of similar goods and similar services

(1)For the purposes of this Act, goods are similar to other goods:

(a)if they are the same as the other goods; or

(b)if they are of the same description as that of the other goods.

(2)For the purposes of this Act, services are similar to other services:

(a)if they are the same as the other services; or

(b)if they are of the same description as that of the other services.

20.       McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Word Mark is registered are goods of the same description as the Applicant’s Goods and Services as follows:

Whether the relevant goods are of the same description is essentially a question of fact.

The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [4] 

Closely related goods and closely related services

[4] [2000] FCA 1335 [17].

21.       The recent case of Paypal, Inc v Braintree Communications Pty Ltd summarises the legal principles applicable when determining if the services for which the Trade Mark is sought to be registered are closely related to the goods for which the Word Mark is registered as follows:

In Qantas Airways Ltd v Edwards[5] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[6]:

[5] [2016] FCA 729 at [111].

[6] (1999) 93 FCR 365; [1999] FCA 1020 at [37].

... 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”. ...

Yates J continued:

His Honour also said in this connection that “closely related” was of wider import than “similar”.

Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...

His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):

... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.

However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.

This understanding is supported by the following passage in [39] of his Honour’s reasons:

... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.

His Honour concluded at [40]:

In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [7] 

[7] [2017] ATMO 90, [28]-[29].

22.       As the Applicant’s Goods and Services cover a wide variety of goods and services it is necessary to break down the Applicant’s Goods and services and make a number of separate comparisons.  They are:

a)Are the Applicant’s Goods in Class 21 similar to the Opponent’s Goods? 

b)Are the Applicant’s Goods in Class 30, in particular coffee and coffee beans, similar to the Opponent’s Goods? 

c)Are the Applicant’s Services in Classes 35, 40 and 43 closely related to the Opponent’s Goods? 

d)Are the Applicant’s Goods in Classes 16 and 29, similar to the Opponent’s Goods?  This can be answered easily: No.

23.       With respect to the first question, I note that the Opponent’s Goods are limited to machines that are used to make coffee, and in particular espresso.  Such products are generally specialist machines sold from either specialist retailers or general whitegood stores.  In comparison the Applicant’s Goods in Class 21 are goods for holding coffee (and other food and beverages) and keeping it at a consistent temperature.  This includes coffee cups, thermoses and other insulated mugs.  Such products are of a different nature, used for a different purpose and generally sold through different trade channels such as directly through coffee retailers.  The goods may be complementary but are not similar.

24.       With respect to the second question, a subset of the Applicant’s Class 30 Goods and the Opponent’s Goods are related since the Opponent’s Goods use coffee beans to produce coffee.  However this does not necessarily imply that the goods are similar.  The products are off a different nature – one being a consumable and one being a whitegood.

25.       I refer the decision in Canterella Bros. Pty Ltd v Sunbeam Corporation Ltd[8] in which the Registrar concluded that ice cream and gelato making machines were not similar goods to ice cream and gelato.  I consider that similar reasoning applies in this case.  The trade channels of the goods is quite different, with the Applicant’s Goods in Class 30 being sold through a coffee shop or supermarket retailer, while the Opponent’s Goods being sold through a whitegoods retailer or a specialist store.  The manner in which they are purchased are quite different, with the Applicant’s Goods in Class 30 being regularly purchased like any other consumable while the Opponent’s Goods being a significant, one off purchase.  In Canterella Bros. the delegate stated ‘I can not expect the average consumer to go shopping for an ice cream but return home with an ice cream maker instead – and even if they did, I am not satisfied that they would make any connection between the trade origin of the two.’[9]  I consider the same logic applies here and do not find that the Opponent’s Goods and Applicant’s Class 30 Goods are similar.

[8] [2007] ATMO 3.

[9] Ibid, [15].

26.       With respect to the third question, the Applicant’s Services in classes 35, 40 and 43 are services normally provided by a coffee shop, restaurant or similar commercial operation.  In the ‘Sizzler’ case[10] the Registrar found that restaurant services were not services that were closely related to class 30 food items.  While the comparison is different in the present case, with the Opponent’s Goods being coffee machines in class 21 the logic remains the same.  It is highly unlikely that a coffee shop or restaurant would be involved in the manufacture and/or retail of a machine for making coffee and consumers would not perceive it to be the case.  At best the Opponent’s Goods are products used by restaurant and coffee shops to supply their services, but merely being an input into the supply of a service does not render a good closely related to that service.   I do not find the Opponent’s Goods to be closely related to the Applicant’s Services.

[10] Sabra International Pty Ltd v Sizzler Restaurants International Inc (1991) AIPC 90-746.

27. I fail to identify any of the Applicant’s Goods and Services that are similar or closely related to the goods for which the Word Mark is registered. I find that the Opponent has failed to establish the ground of opposition under s 44 of the Act. It is therefore not necessary to consider the question of honest, concurrent use under s44(3)(a) of the Act.

Section 58A

1. Section 58A of the Act is reproduced below:

   (1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a) subsection 44(4); or

   (b) a similar provision of the regulations made for the purposes of Part 17A.

   (2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark ) or the predecessor in title:

   (a) first used the similar trade mark in respect of:

   (i) similar goods or closely related services; or

   (ii) similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b) has continuously used the similar trade mark in respect of those goods or services since that first use.

2. The ground of opposition pursuant to s 58A of the Act was particularised in the SGP as follows:

   The Opponent has continuously used the Atomic mark in Australia in respect of its coffee related goods since 1965. The Opponent's mark #791650 was registered in 1999 and the Opponent's logo #1281511 was registered in 2009. The Applicant's mark was accepted subject to section 44(4) of the Act.

3. The particulars of this ground of opposition limit it to the Opponent’s Trade Marks. The objection raised by the examiner in respect of the Word Mark was not overcome on the basis of s44(4) of the Act (it was overcome on the basis of s44(3)(a)). Furthermore I have found above that the Opponent has not established its s44 ground of opposition with respect to the Opponent’s Trade Marks without referring to s44(4). In these circumstances the s58A ground of opposition does not apply.

   Section 43

   31. Section 43 of the Act is reproduced below:

   43 Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

4. To establish a ground of opposition under s 43 of the Act, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [11]

   [11] [2006] FCA 1663; (2006) 70 IPR 599, [53].

5. In Winton Shire Council v Lomas Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [12]

   [12] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

6. The ground of opposition pursuant to s 43 of the Act was particularised in the SGP as follows:

   While "Atomic" as a term is not considered to have any overt descriptiveness in relation to coffee products, based on the Opponent having enjoyed some 50 years of use of the Atomic brand in Australia in respect of coffee related goods, the use of that brand by the Applicant in respect of coffee related goods is likely to cause confusion or deception between the brands and products/services offered by each trader.

7. As can be seen in the case law referred to above, the considerations set out in the SGP are not the appropriate considerations as the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in its own trade mark or confusion between the Trade Mark and the Opponent’s Trade Marks. 

8. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Goods and Services, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

   Section 58 – Applicant not owner of trade mark

9. Section 58 of the Act is reproduced below:[13]

   [13] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased the unpublished decision of the Registrar’s Delegate in respect of the opposition to Trade Mark Application No. 1678345 – Heavens Woodfire Pizza - in the name of Melambada Pty Ltd.

   Section 58. Applicant not owner of trade mark

   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.

10. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

    · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[14]

    [14] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

    · that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[15] and

    [15] Re Hicks’ Trade Mark (1897) 22 VLR 636.

    ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[16]

    [16] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

11. The ground based on s 58 of the Act was particularised in the SGP as follows:

    The Opponent has used the Atomic brand in Australia in relation to her coffee maker and other coffee related goods since 1965. The Opponent is the registered owner of trade mark #791650 being the word Atomic by itself registered since 1999, and registered logo device #1281511, which has a registration date of 16 January 2009. The Opponent's use of the Atomic brand in Australia in relation to coffee related goods pre-dates the Applicant's filing date for this mark by at least 50 years in an unregistered sense, and over 17 years in respect of the Opponent's registered mark.

12. I find that the Opponent has used the Trade Mark as a trade mark from 1965 in respect to coffee machines.[17]  The first and third factors referred to above are satisfied.  However, in order for the Opponent to succeed under this ground it is necessary to show that the second factor is satisfied, namely that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods the Opponent used the Trade Mark for. 

    [17] The Opponent has provided some evidence of use of the mark on clothing however it is not established that such use was made before the Priority Date.

13. In respect of the ‘same kind of thing’ the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews stated as follows:

    The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[18]. …

    [18] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

1. I refer to the discussion in respect of the s 44 ground of opposition in which I found that the Opponent’s Goods were not goods of the same description or closely related services any of the Applicant’s Goods and Services. As the test for ‘the same kind of thing’ is a narrower test than the test required under s44 of the Act I find that the Applicant’s Goods and Services are not the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent were used. I find that the Opponent has failed established the ground of opposition under s 58 of the Act.

   Section 60

   43. Section 60 of the Act is reproduced below:

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

   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.

   44. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[19] 

   [19] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

   45.       In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[20]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [20] [2000] FCA 1335, [81].

   [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 …[21]

   [21] (1992) 33 FCR 302, 343.

   46.       On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[22]

   [22] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

   47. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[23] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   [23] (2000) 50 IPR 1.

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[24]

   [24] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

   48.       Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[25]

   [25] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

   49.       The Opponent has particularised the ground of opposition in the SGP as follows: 

   As a result of the Opponent's extensive and continuous use of the Atomic brand in respect of her coffee related goods since 1965, the Opponent claims a substantial and ongoing reputation in the Atomic word in relation to coffee related goods in class 21. The Opponent believes this reputation would extend to any coffee related products, including coffee and other hot beverages in class 30, and coffee related services in class 40.

   50.   The EIS demonstrates the longstanding use of the Word Mark in respect of the ATOMIC coffee machines.  While I note the absence of sales figures, nor documented evidence of advertising expenditure, I am satisfied by reason of the Opponent’s use of the Word Mark for over 50 years and the significant evidence of historical advertising and free media undertaken during that time that the trade mark is likely to have acquired some limited reputation in relation to coffee machines and concentrated on the Eastern states of Australia. 

   51. It is not sufficient that the Opponent merely establishes that its trade mark has a reputation. I must also be satisfied that because of that reputation use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to the consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[26]

   [26] (1937) 58 CLR 641, 658.

   52.   The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[27]

   [27] [1979] RPC 410, 423 (citations omitted).

   53. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

   A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[28]

   [28] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are applicable to s 60 of the Act.

   54.       In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[29]

   [29] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

   55.       In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[30]

   [30] [2012] ATMO 124 at [40].

   56. While the Word Mark and Trade Mark are identical, the Applicant’s Goods and Services are different to the coffee machines for which the Opponent has established a reputation in. I refer to my conclusions in respect of the s44 ground of opposition. Furthermore I note that the Trade Mark is limited geographically to West Australia. The Opponent is based in Sydney and it is apparent that most of the sales and advertising of ATOMIC coffee machines has taken place along the Eastern Seaboard. There is no evidence that the Opponent has made any sales in West Australia prior to the Priority Date. Given the limited reputation the Opponent has in the ATOMIC Mark, the fact that the reputation is concentrated in the Eastern Seaboard, the absence of any evidence of sales, advertising or general reputation in West Australia at the Priority Date, and the difference in the respective goods and services, I consider it unlikely that because of the reputation of the Word Mark, the use of the Trade Mark for the Applicant’s Goods and Services would be likely to deceive or cause confusion. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act

   Section 42

2. Section 42 of the Act is reproduced below:

   42 Trade mark scandalous or its use contrary to law

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

   (a) the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law.

   58.       The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[31]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[32]

   [31] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [32] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

   59.       The Opponent has particularised the ground of opposition in the SGP as follows: 

   S42(b) - The Opponent believes that Applicant's use of the mark is likely to constitute a false or misleading representation that either the goods or the Applicant has an association, affiliation or sponsorship of the Opponent in contravention of sections 29(h) and (i) of the ACL, along with a representation that the goods carry the standard/quality or history of the Opponent's goods in contravention of section 29(a). Where any section is contravened, it is highly likely that the Applicant would also be in contravention of section 18 of the ACL relating to misleading or deceptive conduct.

   60. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act and in particular has failed to show that use of the Trade Mark by the Applicant (for the Applicant’s Goods and Services, in West Australia) would be likely to deceive or cause confusion. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[33] and I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [33] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

   61.       Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[34], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[35] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL.

   [34] [2014] ATMO 65, [50].

   [35] [2003] FCA 104, [107].

   62. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Decision

   63.       The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1686087 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

   64. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith

   Hearing Officer

   Oppositions and Hearings

   1 February 2018