=?Iso-8859-1?Q?Ch=92i_International?= Limited v CHI FOREST Technology (Singapore) PTE. Ltd
[2024] ATMO 225
•22 November 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by CH’I INTERNATIONAL LIMITED to registration of trade mark application number 2209052 (classes 5, 11, 29, 30 and 35) – CHI FOREST - in the name of CHI FOREST TECHNOLOGY (SINGAPORE) PTE. LTD.
Delegate: Anne Makrigiorgos Representation: Opponent: AJ Park
Applicant: Spruson & FergusonDecision: 2024 ATMO 225
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 42(b), 44, 59, 60 and 62A – s 44 established in respect of a subset of the goods – amendment made deleting the goods for which the s 44 ground has been established – no other grounds established – trade mark to proceed to registrationBackground
1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by CH’I INTERNATIONAL LIMITED (‘Opponent’) to registration of the following trade mark:
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).
Trade mark number: 2209052 (‘Application’)
Trade mark: CHI FOREST (‘Trade Mark’)
Applicant:CHI FOREST TECHNOLOGY (SINGAPORE) PTE. LTD (‘Applicant’)
Filing Date: 8 September 2021 (‘Relevant Date’)
Specification: Class 5: Royal jelly dietary supplements; Food for babies
Class 11: Beverage cooling apparatus; Freezers; Refrigerators; Cooling installations for liquids; Cool boxes, electric; Coolers, electric; Beverage urns, electric
Class 29: Almond milk; Almond milk-based beverages; Coconut milk; Fermented baked milk; Milk beverages (milk predominating); Milk shakes; Oat milk; Peanut milk; Peanut milk-based beverages; Rice milk; Soured milk; Soya milk; Yogurt; Yoghurt; Milk tea (milk predominating); Nuts, prepared
Class 30: Chamomile-based beverages; Tea (not medicinal); Packaged tea (other than for medicinal use); Tea-based beverages; Chocolate-based beverages; Cocoa-based beverages; Flowers or leaves for use as tea substitutes; Tea beverages with milk; Coffee-based beverages; Coffee
Class 35: Business management for freelance service providers; Demonstration of goods; Wholesale services for beverages, including milk, milk tea, tea, sparkling water, energy drinks, sparkling wine; Retail services of beverages, including milk, milk tea, tea, sparkling water, energy drinks, sparkling wine; Import-export agency services; Import-export agency services in respect of beverages, including milk, milk tea, tea, sparkling water, energy drinks, sparkling wine; Rental of advertising space; Advertising; Marketing; Promotional services; Dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; Online retail services of consumer products
(‘Applicant’s Goods and Services’)
2. The Trade Mark was examined and advertised as accepted for possible registration on 16 January 2023.
3. On 13 February 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 13 March 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 8 June 2023.
4. The Opponent filed Evidence in Support (‘EIS’) on 10 October 2023. The Applicant did not file Evidence in Answer.
5. The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent elected to be heard by written submissions, filing written submissions on 10 October 2024 drafted by Thomas Huthwaite of AJ Park. The Applicant did not request to be heard. I have decided this matter based on the particulars set out in the SGP, the evidence of the Opponent and the written submissions of the Opponent.
Grounds and onus
6. The SGP nominates grounds of opposition under ss. 42(b), 44, 59, 60 and 62A.
7. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).
Evidence
8. The following EIS was filed:
Declaration of Ray Alan Nicholls, Managing Director of the Opponent, made on 10 October 2023 with Exhibits RN-1 to RN-25 including Confidential Exhibit RN-24 (‘Nicholls’).
Summary of EIS
9. Nicholls claims the CH’I word mark was first used in New Zealand in 1987 and in Australia in 1988 in respect of a herbal based range of beverages and that since 2019, the apostrophe in the CH’I has largely been omitted and replaced with a decorative sprig of foliage, providing the following examples of versions of the CH’I trade mark in use since 1988 (together with the CH’I word mark ‘CH’I Marks’):
1988 2011 2019 2022
10. Nicholls states that between 2015 to 2021 the Opponent’s herbal based range of beverages (‘Opponent’s Goods’) have been sold in Australia, exhibiting undated photographs of nine bottles of the Opponent’s Goods which I note include an alkaline spring water. I also note that all but one of the bottles prominently display the following mark: and the remaining bottle displays the mark.
11. Nicholls attests that between 2015 to 2021 the Opponent’s Goods have been advertised in Australia as follows:
· the Opponent’s web site at (‘Opponent’s Website’) claiming that in the combined years 2020 and 2021, 2,353 Australian residents visited the website and 935 of these visitors sought information on where they could buy the Opponent’s Goods under the CH’I Marks in Australia. Nicholls exhibits Google analytics data in support.
· social media including:
o Facebook® exhibiting posts dated 21 June 2016 and 3 March 2017 showing photographs of the Opponent’s Goods displaying the mark. Nicholls also exhibits an undated screenshot showing 1410 Facebook® follower numbers in Australia.
o Instagram® exhibiting a post dated in 2020 by New Zealand influencer Erin Simpson promoting the Opponent’s Goods, claimed to be seen by over 50,000 people. I note the post itself indicates that the ‘over 50,000’ number are followers, and there is no actual indication of views numbers nor whether any Australian consumers viewed the post.
·consumer shows exhibiting an undated photograph claimed to be from a show stand operated by a Tourism development agency in Adelaide in 2015.
·television advertising in New Zealand with examples from 1989 and 2012.
·an Australian media mention exhibiting a copy of an article in the online magazine Inside FMCG dated in 2020 concerning a New Zealand distribution deal.
12. Nicholls claims that the Opponent’s Goods were first sold in Australia 1988, and have been widely sold in supermarkets including Coles (until 2006), IGA, Foodworks, Spar and health food stores. Nicholls provides a summary of sales for Coles in 2007 which are minimal.
13. According to Nicholls, Eco Farms Pty Ltd (‘Eco Farms’) has been the exclusive importer and distributor of the Opponent’s Goods to the Australian market, selling directly to retail outlets and also to various sub-distributors. Nicholls exhibits:
· a sales report showing the supply of the Opponent’s Goods between 2017 to 2021 in New South Wales, Queensland and Victoria to a total of 1159 distributors, independent supermarkets, health food stores, fruit and vegetable shops, hospitality traders, pharmacies, retail groups, Ecommerce sites and convenience stores.
· examples of fifteen invoices for retail customers dated between 15 May 2017 to 23 June 2021 where I note the number of the Opponent’s Goods sold and the dollar value of these goods are very small.
· total sales in New South Wales, Queensland and Victoria between 2017 to 2021 for each flavour in the range of the Opponent’s Goods. In terms of total cartons and bottles over a five year period, the number is not significant.
14. Nicholls also provides sales in New Zealand of the Opponent’s Goods.
15. Nicholls states that the Opponent’s Goods receive good reviews on Amazon and exhibits three Amazon reviews from Australia before the Relevant Date.
16. Nicholls provide details of the Opponent’s Australian registration number 494388 (‘Opponent’s Registration’) for CH’I (‘Registered Mark’) as follows:
Filing date – 31 August 1988
Goods - Class 32: Mineral and aerated waters including those in this class containing a small proportion of alcohol; beverages in this class; and all other goods in this class (‘Registered Goods’)
17. Nicholls claims there has been confusion in the retail trade in New Zealand exhibiting a confidential email to the Opponent’s New Zealand Distributor from a Countdown Supermarkets’ executive.
18. The remainder of Nicholls refers to the Applicant having commenced selling a bottled flavoured sparkling water in New Zealand under the Trade Mark and annexes photographs of the bottle.
Discussion and Reasons
19. As a preliminary observation, Nicholls is described as ‘CONFIDENTIAL DECLARATION OF RAY ALAN NICHOLLS’ together with a blanket statement that the declaration contains information that is strictly confidential to the Opponent. However, only the cover sheet for Exhibit RN-24 states that that exhibit is CONFIDENTIAL. Blanket statements are difficult to reconcile with the discussion of publicly available records and information in other parts of Nicholls. I acknowledge the Opponent’s interest in preserving its confidential information, however, the Registrar must provide reasons for her findings. In discharging this duty, information claimed to be confidential may require discussion. This is particularly relevant when other than Exhibit RN-24, no effort has been made to specify any other allegedly confidential information. Accordingly, where such discussion is unavoidable, broad statements will be used to minimise the risk of divulging any sensitive information.
Section 44
20. Section 44 relevantly provides:
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) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
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.
The SGP nominates the Opponent’s Registration as the basis for this ground of opposition.
As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:
- the Opponent’s Registration has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);
- the Applicant’s Goods and Services are similar to and/or closely related to the Registered Goods (‘the second requirement’); and
- the Trade Mark is substantially identical with or deceptively similar to the Registered Mark (‘the third requirement’).
I am satisfied that the priority date of the Opponent’s Registration is earlier than the Relevant Date and is in a name other than the Applicant. Therefore, the first requirement is satisfied.
The next consideration is whether I am satisfied that the Applicant’s Goods and Services are similar to and/or closely related to the Registered Goods.
Goods are ‘similar to other goods’ if they are the same or of the same description as the other goods.[5] The factors relevant to the consideration of whether goods are similar include their nature such as their origin and characteristics, uses made of the goods including their intended purposes, source of manufacture, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[6] These can be conveniently summarised as: whether the respective goods are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No single consideration is conclusive in itself.[7]
[5] s 14(1).
[6] Re Jellinek’s Application [1946] 63 RPC 59 (Romer J).
[7] Southern Cross (n 4), 606.
A fuller explanation of trade channels as approved by the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[8] (‘Southern Cross’) considers whether the goods 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 classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade.
[8] Ibid.
The question is one of fact[9] and the phrase ‘goods of the same description’ ought not to be given too restrictive a construction so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives, the one for the other.[10]
[9] J Lyons & Co Ltd’s Application [1959] RPC 120, 128 and 132 (CA UK) (‘J Lyons’).
[10] Ibid.
In Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd, Burchett J said:
[The object of s 23(2)] seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.[11]
[11] [1993] FCA 265, 240 (‘Polo Textiles’).
In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, Burley J in considering ‘goods of the same description’ in the context of a s 92 removal action said:
Accordingly, courts in recent times have consistently found it to be of significance that the policy underlying the expression “goods of the same description” is the need to avoid any confusion and deception in the market place which would be likely to arise should a mark become available for use by two or more different companies upon goods of the same description. That policy, when considered in the context of modern shopping practices in large stores where multiple products can be displayed near each other, such as in supermarkets, tends to expand the likelihood that products that at first blush are of quite different character and which are manufactured differently will nonetheless be goods of the same description because there is an increased likelihood that goods will be placed in close proximity to each other in the same store.[12]
[12] [2020] FCA 1808, [286].
Goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels.[13]
[13] See 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 Re Application by Chan Li Chai Medical Factory (HK) Ltd [2012] ATMO 59 (Hearing Officer Worth).
The Act does not define the words ‘closely related’. In Registrar of Trade Marks v Woolworths (‘Woolworths’), French J stated that the relationship between goods and services, ‘may, and perhaps in most cases will, be defined by the function of the service with respect to the goods’.[14] The nature, function and circumstances of the trade, such as trade channels, are also relevant. The likelihood of consumer association of the services with the goods, because they are generally offered by the same people also may be a relevant factor.[15] It can also be relevant as to whether the services are performed directly upon or by the means of the goods[16] and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[17]
[14] [1999] FCA 1020, [38] (‘Woolworths’).
[15] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
[16] Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 143 (Lockhart, Neaves and Franki JJ).
[17] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).
In considering the Applicant’s Goods and Services and the Registered Goods, I should look to the ordinary meaning of the words and the notional normal and fair use, not restricting myself to how or in what goods or services the Opponent or Applicant actually trade.[18] I should consider the context in deciding whether ordinary consumers of the goods and services would see the goods and services as having the same trade origin[19] and judge the goods and services on the basis of business realities and common sense - and not on the basis of abstract reasoning.[20] I should also be aware that the nomination of a class for particular goods is not decisive as to the scope of a given registration.[21]
[18] Woolworths (n 14), [88] (Branson J); Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J). Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816, [43 - 44] (Wilcox J).
[19] Southern Cross (n 4), 606; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ) (‘Gallo’).
[20] Polo Textiles (n 11).
[21] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, 132 (Yates, Stewart and Rofe JJ) (‘Energy Beverages’).
33. I must also bear in mind that scope of the phrase ‘and all other goods in this class’ as appears in the Applicant’s Goods. This phrase is necessarily limited to the goods falling within the scope of class 32.
34. It is convenient at this point to separate the Applicant’s Goods and Services into defined groups namely:
·foods and supplements being ‘royal jelly dietary supplements, food for babies, prepared nuts and yoghurt’
·dairy beverages being ‘almond milk, almond milk-based beverages, coconut milk, fermented baked milk, milk beverages (milk predominating), milk shakes, oat milk, peanut milk; peanut milk-based beverages, rice milk, soured milk, soya milk and milk tea (milk predominating)’
·coffee and tea being ‘chamomile-based beverages, tea (not medicinal), packaged tea (other than for medicinal use), tea-based beverages, chocolate-based beverages, cocoa-based beverages, flowers or leaves for use as tea substitutes, tea beverages with milk, coffee-based beverages and coffee’
·cooling apparatus being ‘beverage cooling apparatus, freezers, refrigerators, cooling installations for liquids, electric cool boxes, electric coolers and electric beverage urns’
·retail and wholesale services being ‘wholesale services for beverages, retail services of beverages and online retail services of consumer products’
·advertising services being ‘rental of advertising space, advertising, marketing, promotional services, dissemination of advertising materials, demonstration of goods, updating of advertising materials and compilation of advertisements for use as web pages on the internet’
·business services being ‘business management, import-export agency services and import-export agency services in respect of beverages’
35. The Opponent has not provided any submissions in respect of the similarity of the goods claimed in class 5, namely royal jelly dietary supplements and food for babies.
36. The Opponent submits that there is clear overlap between the consumers of the Applicant’s Goods and Services, the consumers of the Registered Goods, and the market in which the parties directly compete, and that beverages are a type of good purchased by ordinary consumers.
37. The Opponent also submits that:
·Cooling apparatus are similar to the Registered Goods given the way in which beverages are stored, advertised and sold.
·Dairy beverages and coffee and tea overlap with the Registered Goods.
·Business services, advertising services and retail and wholesale services are similar to the Registered Goods, given that the class 35 services relate specifically to, or encompass, similar goods.
38. I consider the determination as to whether the following groups of goods and services are the same or of the same description to be very straightforward. The natures, uses and trade channels differ markedly from the Registered Goods and on the basis of business realities and common sense, these goods and services are not of the same description as the Registered Goods:
· cooling apparatus.
· foods and supplements. Although the end trade channels may have a convergence e.g. supermarkets and health food stores, I do not consider that the nature, characteristics or uses of foods and supplements bear any real connection with the Registered Goods. Further in respect of yoghurt, while it may be made from milk or milk alternatives, and while it can be used in e.g. smoothies or other drinks, the nature of yoghurt is very different to that of the Registered Goods. One would not reach for yoghurt when a drink is required. In trade channels, yoghurt, like cheese and other dairy foods, is displayed in its own distinct area of a refrigerated cabinet, separated from beverages.
· advertising services. These services are not performed directly upon or by the means of the Registered Goods. There is no likelihood of consumer association of advertising services with the Registered Goods as they are generally not offered by the same people.
· business services. These services are not performed directly upon or by the means of the Registered Goods. While the Registered Goods can be imported or exported, consumers do not expect that a manufacturer of beverages is in the business of importing and exporting goods for others. Thus, there is no likelihood of consumer association of business services with the Registered Goods as they are generally not offered by the same people.
39. As to coffee and tea, this encompasses a number of coffee, cocoa and tea beverages. A beverage is defined in the Macquarie Dictionary Online as ‘a kind of drink other than water’ and a drink is defined as ‘any liquid which is swallowed to quench thirst, for nourishment etc’. The Registered Goods claim, inter alia, ‘beverages in class 32 and all other goods in this class’.
40. Given the definitions of beverage and drink, and the scope of the claims ‘beverages in this class’ and ‘all other goods in this class’ in the Opponent’s Registration, the claims are broad and would encompass, inter alia. ‘non-alcoholic beverages with flavourings such as coffee, tea and chocolate, waters, fruit and vegetable beverages, almond squashes, milk of almonds beverage, coconut-based beverages, preparations for making beverages, soft drinks, rice-based beverages, other than milk substitutes, smoothies, soya-based beverages, other than milk substitutes and whey beverages’.[22]
[22] In 1988 the 5th edition of the Nice Classification applied. The Opponent’s Goods remain what constituted ‘all other goods in class 32’ as per the 5th edition of the Nice Classification. Nice Classification Online search in respect of class 32 at and The scope of coffee and tea includes coffee, tea and cocoa/chocolate beverages, which as with the Registered Goods, fall under the definition of a beverage. However, none of the goods falling under coffee and tea are classified in class 32. Therefore, these beverages do not fall within the scope of the Registered Goods as they are not ‘mineral or aerated waters’ and nor are they beverages in class 32 nor any other goods falling in class 32.
42. The next question is whether coffee and tea are goods of the same description as the Registered Goods.
43. In Energy Beverages the Full Court, in considering whether ‘non-alcoholic beverages’ in class 32 encompassed coffee in class 30, held:
Although for administrative purposes coffee beverages fall to Class 30, it does not follow that a claim to “non-alcoholic beverages” nominated in Class 32 in the specification of the “blocking” registration cannot, as a matter of description, include coffee beverages where such goods are part of a single, broad claim to all non-alcoholic beverages. In any event, the classification of goods and services according to classes is primarily a matter of convenience in administration (for example, in facilitating searches). … The question is whether, from a business and commercial point of view, the description “non-alcoholic beverages”, as used in the specification of the “blocking” registration, would be understood as including non-alcoholic coffee beverages. Appreciating the possible permutations discussed above, “coffee” as a beverage would be understood as being a good that falls within the description “non-alcoholic beverages”.[23]
[23] Energy Beverages (n 21), 132 (citations omitted).
44. The case before me however differs from Energy Beverages, as the Opponent’s claim to beverages and all other goods is limited to class 32. Therefore, it is not a question of comparing beverages per se with coffee and tea, it is comparing only beverages falling within class 32 with coffee and tea.
45. Looking at the natures and uses of coffee and tea, and the Registered Goods, in essence they are all beverages, although they may be made from different ingredients e.g. the coffee bean, the tea leaf, the cocoa bean, fruits, vegetables etc. While beverages can have different uses, e.g. coffee, tea and energy drinks to increase alertness, water to quench thirst or soft drinks to release dopamine, I do not consider this basis alone leads to a conclusion that the goods are not of the same description.
46. I am aware from my own knowledge that non-alcoholic beverage manufacturers who may once have specialised in one type of beverage e.g. soft drinks, have over the years branched out to include many other beverage categories such as waters, energy drinks, coffee and tea based beverages. Therefore, it is likely that coffee and tea and the Registered Goods can be produced by the same manufacturer belonging to the same trade and are sold in the same shops over the same counters to the same classes of customers.
47. I consider that the goods ‘non-alcoholic beverages flavoured with coffee, tea or chocolate and preparations for making beverages’, fall within the scope of the Registered Goods. I see little difference between the natures, uses and trade channels of e.g. non-alcoholic beverages flavoured with tea in class 32 and tea-based beverages in class 30.
48. Further, while packaged tea is clearly not a beverage, it is a preparation for making a beverage. I also consider that packaged tea would fall under or be at least a good of the same description as ‘preparations for making beverages’, which is encompassed by the Opponent’s broad claim to ‘all other goods in this class’.
49. In conclusion, I am satisfied that coffee and tea are goods of the same description as the Registered Goods.
50. As to dairy beverages which encompass both milk, alternative milks, milk and alternative milk beverages including milk shakes, fundamentally, these goods fall under the definition of beverages and can all to be consumed as such. Therefore, their natures and uses have similarities to the Registered Goods.
51. In Energy Beverages LLC v MD Visage Pty Ltd,[24] Hearing Officer Brown held that soya based beverages and whey beverages in class 32 were of the same description as a variety of milk beverages and milk products including soya milk beverages in class 29 on the basis of their natures, uses and trade channels. I agree with Hearing Officer Brown’s decision and reasoning and consider that her reasoning has wider application including to the Applicant’s dairy beverages. As I am satisfied that as the Registered Goods cover ‘all other goods in this class’, which includes, amongst others, ‘soya based beverages, other than milk substitutes, whey beverages, almond squashes, milk of almonds beverage, coconut-based beverages, rice-based beverages, other than milk substitutes and smoothies’,[25] I am also satisfied that the Applicant’s dairy beverages are goods of the same description. I see little difference between the natures, uses and trade channels of e.g. soya based beverages, other than milk substitutes in class 32 and soy milk beverages in class 29 or milk of almonds beverage in class 32 and almond milk and almond milk based beverages in class 29.
[24] [2018] ATMO 53, [26].
[25] See [40] of this decision.
52. The group wholesale and retail services encompasses wholesale services for beverages, retail services of beverages and online retail services of consumer products. In my opinion, generally, retail and wholesale services relating to beverages would encompass the sale of a range of beverages originating from a number of different trade sources. For example, I am aware that Coles supermarkets sell a wide range of beverages, both refrigerated and unrefrigerated, under a myriad of brands. The Opponent’s submissions and evidence do not assist in the determination of whether this group of services are closely related to the Registered Goods. The Opponent’s submits that these services are similar to the Registered Goods given that the class 35 services relate specifically to, or encompass, similar goods. However, there is no evidence that the public would see the group wholesale and retail services of, particularly those in association with beverages, as part of the business of an ordinary trader in beverages.
53. There is not enough evidence before me to establish a sufficient link between the Registered Goods and the wholesale and retail services. I find the Opponent has failed to discharge the onus upon it to convince me that the wholesale and retail services are closely related to the Registered Goods.
54. In conclusion, I am satisfied that the following subset of the Applicant’s Goods are the same or the same description as the Registered Goods (‘Subset Goods’):
Class 29: Almond milk; Almond milk-based beverages; Coconut milk; Fermented baked milk; Milk beverages (milk predominating); Milk shakes; Oat milk; Peanut milk; Peanut milk-based beverages; Rice milk; Soured milk; Soya milk; Milk tea (milk predominating)
Class 30: Chamomile-based beverages; Tea (not medicinal); Packaged tea (other than for medicinal use); Tea-based beverages; Chocolate-based beverages; Cocoa-based beverages; Flowers or leaves for use as tea substitutes; Tea beverages with milk; Coffee-based beverages; Coffee
55. However, I am not satisfied that the remainder of the Applicant’s Goods and Services are the same, of the same description or closely related to the Registered Goods namely:
Class 5: Royal jelly dietary supplements; Food for babies
Class 11: Beverage cooling apparatus; Freezers; Refrigerators; Cooling installations for liquids; Cool boxes, electric; Coolers, electric; Beverage urns, electric
Class 29: Yogurt; Yoghurt; Nuts, prepared
Class 35: Business management for freelance service providers; Demonstration of goods; Wholesale services for beverages, including milk, milk tea, tea, sparkling water, energy drinks, sparkling wine; Retail services of beverages, including milk, milk tea, tea, sparkling water, energy drinks, sparkling wine; Import-export agency services; Import-export agency services in respect of beverages, including milk, milk tea, tea, sparkling water, energy drinks, sparkling wine; Rental of advertising space; Advertising; Marketing; Promotional services; Dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; Online retail services of consumer products
(together ‘Remaining Goods and Services’).
56. For the Subset Goods, the next consideration is whether I am satisfied that the Trade Mark is substantially identical with or deceptively similar to the Registered Mark.
57. The Opponent’s submissions do not contend that the Trade Mark and Registered Mark are substantially identical. For completeness, I do not find the Trade Mark to be substantially identical to the Registered Mark. On a side by side comparison of the respective marks, there are obvious differences which mean that a total impression of dissimilarity emerges from this comparison.
Section 10 provides a definition of deceptively similar being that “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”.
Justice Windeyer outlined the following approach for the assessment of deceptive similarity in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[26]
[26] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, [13] (‘Shell’).
60. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[27] conveniently stated the relevant principles, which was summarised in The Agency Group Limited v H.A.S. Real Estate Pty Ltd[28] as follows:
[27] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[28] [2023] FCA 482, [55] (Jackman J).
·the resemblance between the two marks must be the cause of the likely deception or confusion;[29]
[29] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
·in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[30]
[30] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
·the marks should not be compared side by side;[31]
·the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[32]
·the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[33]
·the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[34]
·the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[35]
·“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;[36]
·the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[37]
·it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[38]
·evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[39] and
·any intention to deceive or cause confusion may be a relevant consideration but is not required.[40]
[31] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[32] Ibid.
[33] Ibid.
[34] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
[35] Shell (n 26), 415.
[36] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[37] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[38] Woolworths (n 14), [50(ii)] (French J) restating principles from Southern Cross (n 4) 594-595.
[39] Australian Woollen Mills (n 31).
[40] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 31), 657.
61. Distinctiveness is a factor that can legitimately be taken into account when considering deceptive similarity.[41]
[41] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).
62. Justice French expressed the view in Woolworths[42] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is ‘logically antecedent to’ assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths Ltd v Registrar of Trade Marks matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[43]
[42] (n 14), [39].
[43] Ibid.
63. In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of, on the one hand, the Trade Mark, and on the other, the Registered Mark. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Registered Mark are used and the circumstances in which the goods and services are and will be sold.
64. The Opponent submits:
·the distinctive and most recognisable component of each mark is the first word CH’I/CHI, which is unusual, memorable, evocative, and distinctive and is a common feature liable to linger in the minds of consumers.
·the word FOREST is likely to be anchored to CHI, seen as secondary, e.g. a sub-brand or a flavour.
·the Trade Mark and the Registered Mark look and sound similar.
65. The Opponent also provides submissions that the CH’I Marks are well established and seen to be a family of marks in the range of the Opponent’s Goods. These submissions have no bearing on my decision as to whether the Trade Mark is deceptively similar. The correct comparison is between the impression (allowing for imperfect recollection) that the notional buyer would have of the Registered Mark (as notionally used on all of the Registered Goods), with the impression that the notional buyer would have of notional and normal fair use of the Trade Mark. Thus, the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark.
66. In my opinion the Registered Mark is highly distinctive in respect of the Registered Goods. I believe the impression or recollection to be carried away and retained by the notional consumer with an imperfect recollection of the Registered Mark will be the distinctive word CH’I. This element is the only component of the Registered Mark. A very similar element, namely the word ‘CHI’ absent the apostrophe present in the Registered Mark, appears in the Trade Mark at the beginning of the mark. I consider consumers would view the CHI and CH’I elements in the same way and the apostrophe is likely to be discounted by consumers and has little effect to visual and aural identity of the CH’I/CHI element. Certainly, the pronunciation of the CH’I/CHI element would be the same. It is well-established that a mark may comprise two distinctive elements and still be deceptively similar to a mark containing only one of those elements.[44] The CH’I/CHI element does not lose its identity in the Trade Mark and is the more striking and memorable feature. It seems to me that adding the word FOREST does not give the Trade Mark an immediate and obvious meaning that avoids any prospect of confusion.
[44] Gallo (n 19), [75].
67. In Starr Partners Pty Ltd v Dev Prem Pty Ltd, the Full Court said in relation to the comparison of marks:
The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[45]
[45] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).
68. The CH’I/CHI element is a key visual, aural and conceptual feature of the Trade Mark. It is highly likely that consumers with an imperfect recollection of the Registered Mark would immediately link the Trade Mark to a memory of association with the essential element CH’I/CHI.
69. Here the respective trade marks will be used for various beverages. Beverages are purchased in many different types of stores, online and bricks and mortar including supermarkets and health food stores. Thus, there is an overlap in trade channels. Further, the Opponent’s and the Applicant’s beverages are fast moving consumer goods with a low price point. Therefore, less attention will be paid when purchasing such products making the risk of confusion greater.
70. In conclusion, allowing for the imperfect recollection of consumers of ordinary memory and intelligence, I consider the trade marks are likely to be mistaken one for the other. Thus, as a matter of impression and common sense, I believe that a person of ordinary intelligence would be likely to be confused or deceived by the Trade Mark.
71. I am satisfied that there is ‘a real, tangible danger’ that a consumer ‘might be caused to wonder’ whether the Applicant’s Goods originate from the same source. I therefore find that the Trade Mark is deceptively similar to the Registered Mark and that the Opponent has made out the ground of opposition under s 44 for the Subset Goods.
72. Nevertheless, it remains possible for the application to be accepted for the Subset Goods under the provisions of ss 44(3) and/or 44(4) which make provision for the Applicant to overcome a s 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances. However, as the Applicant has not filed any evidence in this opposition, the provisions of ss 44(3) and/or 44(4) do not apply.
73. I will now consider the remaining grounds with respect to the Remaining Goods and Services.
Section 59
74. Section 59 provides:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
75. Summarising, the SGP provides:
The Applicant is a beverage company and holds itself out as a beverage company and its entire product range comprises sparkling water beverages. The Application was filed to include goods in classes 32 and 33, however these classes were deleted from the Application.[46] The Applicant has no intention to use the CHI FOREST mark in respect of class 5, 11, 29 or 30 goods.
[46] The goods in classes 32 and 33 were deleted during prosecution of the Application in response to a citation by the examiner of the Opponent’s Registration.
76. Under s 27, an intention to use or authorise use of a trade mark in Australia is a prerequisite to a valid application for registration.
77. It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[47] In Aston v Harlee Manufacturing Co, Fullagar J stated:
I do not regard his Honour [Dixon J in Shell Co] as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.[48]
[47] Aston v Harlee Manufacturing Co (1960) 103 CLR 391.
[48] Ibid 401.
78. The presumption arising from filing may be challenged by evidence from the opponent that establishes the contrary, thereby shifting the onus from the opponent onto the applicant and requiring evidence from the applicant which demonstrates the intention to use the trade mark.
79. The intention must be “a resolve or settled purpose” and immediate use is not required.[49] In Ritz Hotel Ltd v Charles of Ritz Ltd and Another, McClelland J said:
[i]n my opinion the correct view is that an unused mark is not “proposed to be used” by an applicant for registration unless that applicant has, at the time of the application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time.[50]
[49] Re Ducker's Trade Mark (1928) 45 RPC 397, 402 (Lord Howarth MR).
[50] (1988) 15 NSWLR 158, 203.
80. Actual use after the date of the application will be relevant to the existence of the required intention.[51]
[51] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74] (Keane CJ, Stone and Jagot JJ).
81. Lack of intention cannot be inferred from lack of use per se. In Suyen Corp v Americana International Ltd, Dodds-Streeton J stated:
There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[52]
[52] Suyen Corp v Americana International Ltd [2010] FCA 638, [207].
82. A mere assertion of lack of intention to use does not require a response from the applicant. Further as Hearing Officer Homann said in Intel Corporation v Magnatex International Pty Ltd:
No evidence as to these matters was led by the applicant. At the same time I must also say that there was no obligation on the applicant to do so. Failure on the part of the applicant to establish affirmatively its capacity or intention to use the mark is in no sense evidence of a lack of such capacity or intention.[53]
[53] [1998] ATMO 20.
83. An opponent need only make out a prima facie case to shift the burden to an applicant to demonstrate intention to use. I consider that this prima facie case should be sufficiently strong and established by sufficient evidence for the applicant to be called on to answer it.
84. The first question for consideration is whether the Opponent has satisfied its burden of establishing a prima facie case of lack of intention to use by the Applicant.
85. The Opponent’s submissions repeat the claims in the SGP and add that the use of the Trade Mark since the Relevant Date establishes that the Applicant’s true intention for the mark is to use it on sparkling water beverages only and not in respect of any of the goods in classes 5, 11, 29 and 30.
86. I note that the Opponent does not claim in its SGP or its submissions that the Applicant had no intention to use the Trade Mark or to authorise its use, or to assign the Trade Mark for use by another entity, in respect of the Remaining Services. Therefore, for the Remaining Services, I find that the Opponent has not satisfied its burden of establishing a prima facie case of lack of intention to use by the Applicant so as to shift the burden to the Applicant to demonstrate intention to use.
87. As to the Remaining Goods, while the Opponent claims that the Applicant is a beverage company and holds itself out as a beverage company and its entire product range comprises sparkling water beverages, there is no evidence to support any of these claims. Further, although the Opponent has provided evidence to show that the Applicant has begun using the Trade Mark in respect of a sparkling water beverage in New Zealand, there is no evidence to suggest that in light of this use, the Applicant will not use the Trade Mark in respect of the Remaining Goods in Australia including a sparkling water beverage or does not have the capacity to do so.
88. In addition, I consider that even if the Applicant is a beverage company, this alone would not preclude it from having an intention to use the Trade Mark in respect of other goods, whether in the food and beverage industry or outside it. In commerce and trade, I am aware that companies constantly diversify and expand their range of goods and services so as to reduce the overall risk of their business and to generate new sources of revenue.
89. I am not satisfied that the Opponent has established a prima facie case of lack of intention to use by the Applicant so as to shift the burden to the Applicant to demonstrate intention to use. The Opponent has not provided any documents or credible circumstances to indicate an intention which is not sufficiently definite, resolved or settled or not directed at use as a trade mark in respect of the Remaining Goods and Services. Nor has the Opponent evidenced that the Applicant would be incapable of providing the Remaining Goods and Services or incapable of using the Trade Mark across the scope of the Remaining Goods and Services. The Opponent has consequently failed to establish the ground of opposition in respect of the Remaining Goods and Services pursuant to s 59.
Section 60
90. The provisions of s 60 are reproduced below:
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.Note:For priority date see section 12.
91. To establish this ground, the Opponent must demonstrate the existence of another trade mark(s) which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
92. The SGP identifies the following marks as the trade marks supporting this ground of opposition:
(‘Used Marks’) and claims they are deceptively similar to the Trade Mark. The SGP further claims the Applicant and the Opponent are likely to be direct competitors in the market, including by their sale of beverages and due to the Opponent’s reputation in the Used Marks, use of the Trade Mark would be likely to deceive or cause confusion.
Reputation
93. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[54]
[54] [2000] FCA 1335, [81] (‘McCormick’).
94. Further, Kenny J stated in McCormick that:
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 ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[55]
[55] Ibid [86].
95. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[56] Here the relevant market is the non-alcoholic beverage market and as such, is likely to include most, if not all, Australian households. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[57]
[56] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[57] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57].
96. In Rodney Jane Racing Pty Ltd v Monster Energy Company (‘Rodney’), it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[58]
[58] [2019] 142 IPR 275, [83] (O’Bryan J) (‘Rodney’).
97. The Opponent submits that:
· the reputation in the Used Marks, reaches well beyond mere awareness and reaches the standard required for a well-known mark in Australia.
· the Opponent has evidenced its longevity in the market, its unique position and reputation in the trade as an original herbal beverage, its broad product range, its prevalence across physical and online stores, volume of sales, forms of advertising and marketing, and its strong organic reputation among consumers.
98. While the Opponent bases the s 60 ground on the Used Marks, notably, each is considered a separate trade mark for the purposes of s 60.[59]
[59] Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J) (‘Qantas Airways’); Rodney (n 61), [89].
99. As observed by O’Bryan J in Rodney,[60] the reputation of a trade mark has quantitative and qualitative dimensions. Here there is evidence from the Opponent of quantum of sales of the Opponent’s Goods namely:
· minimal sales in Coles in 2007;
· a sales report showing the supply of the Opponent’s Goods between 2017 to 2021 in New South Wales, Queensland and Victoria to a total of 1159 distributors, independent supermarkets, health food stores, fruit and vegetable shops, hospitality traders, retails groups, Ecommerce sites and convenience stores (‘Outlets’). As there are only figures from three states of Australia, the average number of Outlets per state is 386, which is far from significant;
· examples of fifteen invoices for retail customers dated between 15 May 2017 to 23 June 2021 where both the number of the Opponent’s Goods sold and the total sales in dollar terms are very small; and
· total carton and bottle sales in Australia between 2017 to 2021 for the Opponent’s Goods. Averaged over these five years, this equates to 8602 bottle sales per year and as there are again only figures for three states of Australia, the average bottle sales per state per year is 2867, which is insignificant.
[60] Rodney (n 61) [83].
100. In respect of the qualitative dimensions referred to in Rodney, there are significant weaknesses in the Opponent’s evidence as much of it lacks detail, specificity and relevance and as a consequence, does not support a conclusion of any reputation in any of the Used Marks, let alone a reputation sufficient to enliven s 60. In this regard I make reference to the television advertisements aired only in New Zealand between 9 and 32 years ago, Instagram posts of a New Zealand influencer with no indication of views nor whether any views were by Australian consumers, one Australian media article referring to activities occurring in New Zealand with no reference to Australian reader numbers, undated social media screenshots, negligible social media posts by Australians, undated photographs and low Australian visitor numbers to the Opponent’s Website.
101. Whilst I acknowledge that the evidence demonstrates that the Opponent has used the Used Marks in Australia in respect of the Opponent’s Goods, mere use of a trade mark does not demonstrate that a trade mark has garnered a reputation that may result in deception or confusion. Given the market for the Opponent’s Goods includes most, if not all, Australian households, having considered the totality of the Opponent’s evidence, I am not satisfied there is a reputation in any of the Used Marks in relation to the Opponent’s Goods amongst a ‘significant or substantial’ number of Australian consumers. The Opponent has accordingly not established its ground of opposition under s 60 for the Remaining Goods and Services.
Section 42(b)
102. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.
103. In its SGP, the Opponent simply lists the ‘Competition and Consumer Act 2010’ (‘CCA’) and ‘tort of passing off.’ The Opponent’s submissions refer to the Australian Consumer Law, being Schedule 2 to the CCA (‘ACL’).
ACL and Passing Off
104. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[61]
[61] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).
105. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.
106. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the Trade Practices Act 1974 (Cth) (the equivalent provision to s 18 of the ACL) and passing off. His Honour considered that:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[62]
[62] [1989] FCA 506, [40] (citations omitted).
107. For the s 42(b) ground of opposition, the Opponent seeks to rely on the reputation in the Used Marks which I have already discussed in relation to the s 60 ground of opposition. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 29 of the ACL will also fail, as will claims of passing off.[63]
[63] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 (Hill J); Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).
108. I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has not established the ground of opposition under s 42(b) in respect of the Remaining Goods and Services.
Section 62A
109. Section 62A provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith
110. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2), Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application:[64]
[64] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
… The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[65]
[65] [2012] FCA 81, [147].
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[66]
[66] Ibid [165]-[166].
113. In DC Comics v Cheqout Pty Ltd,[67] Bennett J noted that
[67] [2013] FCA 478, [62].
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.
114. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[68]
[68] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).
115. In summary, the SGP claims that:
· the Opponent repeats and relies on the pleadings under s 59;
· the Applicant was aware at the Relevant Date of the registration and use of the Opponent’s Registration and the use of the Used Marks and despite this awareness, the Applicant attempted to progress the Application and has started trading in Australia;
· the Applicant by progressing the Application is seeking de facto protection of the Trade Mark for goods in classes 32 and 33; and
· the Applicant has no intention to use the Trade Mark in respect of class 5, 11, 29 or 30 goods.
116. While the Opponent claims in the SGP that the Applicant was aware[69] at the Relevant Date of the registration and use of the Opponent’s Registration and the use of the Used Marks, the Opponent’s submissions are inconsistent with this statement as they state that given the Opponent’s extensive reputation in Australia, the Applicant must have been aware[70] of the Used Marks at the Relevant Date rather than the Applicant was aware.
[69] My emphasis.
[70] Ibid.
117. I do not agree that the Application was made in bad faith. There is no evidence that the Applicant was aware of the Opponent’s Registration or the Used Marks at the time or filing. Even if I were to accept that the Applicant was aware, this alone does not provide a sufficient basis to conclude that the Application was made in bad faith. Awareness or mere knowledge before the Relevant Date of another person’s trade mark, without more, does not in itself constitute a basis for a finding of bad faith’.[71]
[71] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).
118. Further the Opponent does not argue that despite the Applicant’s awareness and its true intention of selling beverages that overlap with those of the Opponent, the Applicant has filed the Application. Rather the Opponent argues that despite these claimed factors, the Applicant has ‘progressed’ the Application. A trade mark application can only be progressed after it has been filed and the Applicant’s actions after filing are not relevant to the s 62A ground.
119. In addition, while the Opponent submits that the Applicant has started trading in Australia, there is no evidence to support this submission.
120. In conclusion, the Opponent has not provided any compelling evidence that the Applicant’s filing of the Trade Mark in connection with the Remaining Goods and Services was ‘unscrupulous, underhand or unconscientious’. As a consequence, the Opponent has not established the ground of opposition under s 62A in respect of the Remaining Goods and Services.
Resolution of Opposition
121. In Apple Inc. v Registrar of Trade Marks Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[72]
[72] [2014] FCA 1304, [232].
In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services, the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.
Given the breadth of goods and services claimed in the Application, I considered it appropriate to offer the Applicant the opportunity to amend the Applicant’s Goods and Services to delete the Subset Goods and thereby allow protection of the Trade Mark for the Remaining Goods and Services.
124. On 8 November 2024, I provided the Applicant with an opportunity to amend its application for Trade Mark No. 2209052 to remove the Subset Goods, being the goods that the s 44 ground of opposition had been established, which it did on 20 November 2024. The amendment has now been made. On that basis, trade mark application 2209052 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
125. The Opponent sought its costs in this matter but as both parties have had a degree of success, I decline to award costs.
Anne Makrigiorgos
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs22 November 2024
33
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