Jason McCombie v Naturalking Pty Ltd

[2018] ATMO 159

TRADEMARKSACT 1995

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

Re:      Opposition by Jason McCombie to registration of trade mark application 1767013 (5,

30) - BEE NATURAL (Device) - in the name of Naturalking Pty Ltd.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: self-represented

Applicant: self-represented

DECISION:

2018 ATMO 159

TradeMarksAct1995

Section 52 opposition to registration: section 60 - reputation of Opponent's trade mark, nexus between the goods of the parties. Opposition established.

Registration refused.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1996 (‘the Act’) Naturalking Pty Ltd (‘the Applicant’) has sought registration of the trade mark which appears below:

   Application No:          1767013

   Priority Date:             2 May 2016

   Goods:Class 5: Bee glue (propolis) dietary supplements; Propolis (bee glue) for medical purposes; Pharmaceutical preparations containing royal jelly; Royal jelly (nutritional supplement); Royal jelly dietary supplements; Royal jelly for pharmaceutical purposes; Pollen (dietary supplement); Pollen dietary supplements; Pollen extracts; Propolis dietary supplements; Propolis for pharmaceutical purposes; Chemical products for therapeutical use

   Class 30: Biological honey for culinary purposes; Honey; Honeycomb (edible); Honeys; Natural honey; Sweet spreads (honey); Bee glue (propolis) for culinary purposes; Propolis (bee glue) for culinary purposes; Royal jelly for culinary purposes

   Trade Mark:

(‘the Trade Mark’)

1. The Trade Mark was examined as is required by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 22 September 2016.

1. On 4 October 2016 Jason McCombie (‘the Opponent’) filed a Notice of Intention to Oppose.

1. Thereafter the opposition process has followed the timetable hereunder:

3November 2016 – Statement of Grounds and Particulars filed by the Opponent; As amended, it specifies 60 as the sole ground of opposition;

17 January 2017 – Notice of Intention to Defend filed by the Applicant;

16 February 2017 – Evidence in Support filed by the Opponent;

Declarations of

Mark MacDiarmid, former owner of Bee Natural Pty Ltd, made on 12 December 2016; and

The Opponent, owner and Chief Executive Officer of Bee Natural Pty Ltd and the owner and Chief Executive Officer of Magjack Pty Limited, made on 12 December 2016;

24 July 2017 – Evidence in Answer filed by the Applicant;

Ben Wo, Director of the Applicant, made on 24 July 2017;

29September 2017 – Evidence in Reply filed by the Opponent; The Opponent, made on 29 August 2017.

1. Both parties have been advised of their right to be heard or to make written submissions. Neither has availed themselves of these opportunities. Now, in order that the Registrar may discharge the obligation under section 55 to decide the matter, it has been passed to me, one of the Registrar’s delegates, for my decision on the written record which is comprised of those materials referred to in the preceding paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing the ground of opposition which is detailed in the SGP on the balance of probabilities.1

1 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per

Gyles J at [6]-[26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

1. The relevant date at which the grounds under section 52 must be considered is the filing date2 of the opposed application and I note that the priority date of the Trade Mark (in terms of section 60 of the Act) is here the same as the filing date.

The Evidence

1. The evidence establishes that Magjack Pty Limited, a company which the Opponent owns, is the owner of the trade mark which appears below:

   Registration No:         948916

   Priority Date:             31 Mar 2003

   Goods/Services:         Class 3: Cosmetics, soaps, cleaning preparations Trade Mark:  bee natural

1. Mr MacDiarmid states that he was the previous director of Bee Natural Pty Ltd the prior owner of above trade mark and used it in relation to cosmetic products, including, but not limited to, facial scrubs, body lotions and moisturizers.  Mr MacDiarmid attaches a picture of a stall selling both the aforementioned goods and honey at, I gather, Byron Bay:

2. Mr MacDiarmid also attaches a label to his declaration which appears below:

   2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

1. Mr MacDiarmid also attached a spreadsheet showing sales of cosmetics, soaps, cleaning preparations under the trade mark BEE NATURAL by Bee Natural Pty Ltd (‘BN’) before the sale of that company to Mr McCombie.

1. For his part, Mr McCombie states:

The sale of natural honey and honey based skincare and body lotions under the protection of the registered Trade Mark of [BN] has continued unfettered since the purchase of the company and associated IP, as can be evidenced by the availability through strong sales and continuing availability on our website (beenatural.com.au) and at specialist honey stores, health food stores and local markets.

The product line is known universally as Bee Natural, and is labelled as such (exhibit 1), and as honey and honey based products, the registration of another Trademark 'Bee Natural Honey' would certainly cause confusion to our existing customer base along with potential future customers and the market in general. We are not in a position to understand whether registration of the competing Trademark may be an attempt to directly deceive our current customer base, although such attempted registration could be interpreted as an endeavour to do so.

1. The label to which Mr McCombie refers appears below:

2. The website that the Opponent refers to shows that, although based in Byron Bay, BNs goods are also sold through outlets in Mudgee (New South Wales), Kuranda (Queensland), Adelaide, and Freemantle as well as from the website itself.

1. The evidence filed by the Applicant is in the nature of submission arguing against the ground under section 60.   In these submissions the declarant  focuses on his perceptions of the

differences between the goods of the parties, the differences in the trade marks and the extent of the reputation of BN’s trade mark.

Section 60

1. Section 60 of the Act provides:

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.

Note:       For priority date see section 12.

1. In order to establish its ground under section 60 an opponent must establish that:

1.     The trade mark upon which it relies had, at the priority date, a reputation; and that

2.     Because of that reputation the use of the opposed trade mark is likely to to deceive or cause confusion.

1. In view of the thrust of the Applicant’s submissions, I initially observe that there are no requirements under section 60 that the trade mark relied upon by an opponent be either registered, deceptively similar, or used in relation to goods of the same description, when compared to the trade mark the registration of which is opposed.

Reputation

1. In McCormick & Co Inc v McCormick3 (‘McCormick’) Kenny J asked:

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

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

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

3 [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

1. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee4 Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)5 was to be:

   ... one of which a significant number of persons were aware...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.

   (Implicitly approved by the Full Federal Court (Moore,  Tamberlin  and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). 6

2. Regarding the measurement of reputation, in McCormick Her Honour went on to state:7

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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91- 560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that 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. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a

$100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. There is no minimum threshold as regards sales or advertising which needs to be established for it to be held that a trade mark has a reputation. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd Greenwood, Jagot and Beach JJ observed:8

4 [2000] FCA 1587; (2000) 50 IPR 1.

5 The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

6 [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

7 Op cit at [86].

8 [2017] FCAFC 83 at [61].

61.   It seems to us that there was some confusion in the parties’ submissions, or at least those of IR, about this issue. Section 60(a) refers to a “reputation in Australia”. It was not in dispute that ICI’s composite mark had acquired a significant reputation in and around Perth, which is undoubtedly in Australia. As a result, we do not accept IR’s submission that the issue is whether the primary judge erred in finding that the ICI composite mark also had acquired a reputation outside of Western Australia or, more particularly, in New South Wales and Tasmania where IR used its mark (albeit many years after ICI had commenced to use its mark). As ICI submitted, this invites an erroneous approach to s 60. The fact that it was common ground that the ICI composite mark had acquired a reputation in and around Perth before IR used the IR composite mark means that s 60(a) was satisfied. The issue was whether, on the facts of the case, it could be concluded that “because of the reputation of that other trade mark [the ICI composite mark], the use of the first-mentioned trade mark [the IR composite mark] would be likely to deceive or cause confusion” as required by s 60(b).

1. Further, the Applicant seeks registration of the Trade Mark throughout Australia. Whilst noting that BN has had sales throughout Australia, the proposed registration overlaps with the main area (Byron Bay) where BN’s trade mark has been used or from where its goods bearing BN’s trade mark originate.

1. With the foregoing in mind, the evidence before the Registrar is sufficient to establish that BN’s trade mark as it appears on the labels and sales stand depicted above had a moderate reputation in relation to cosmetics, soaps, and cleaning preparations and sold in conjunction with honey at least in the Byron Bay area.

Confusion or Deception

1. The assessment of the likelihood of deception or confusion is informed by the factors discussed in Registrar of Trade Marks v Woolworths by French J:9

   The judgment of the likelihood of deception or confusion is a very practical one and what has long been accepted as the proper approach to making that judgment was set out in Australian Woollen Mills Ltd. It requires assessment of the effect of the challenged mark upon the minds of potential customers. Impression or recollection taken away from the point at which the challenged mark is observed will be the basis of any belief about a connection between the new and the old marks. The effect of spoken description must be considered. What confusion or deception may be expected is to be based upon the behaviour of ordinary people. As potential buyers of goods they are not to be credited with high perception or habitual caution. Exceptional carelessness or stupidity may be disregarded. The question ultimately is not susceptible of much discussion:

9 [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [49].

[…]

"It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs."

(i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) 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.

(iii) 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.

(iv) The rights of the parties are to be determined as at the date of the application.

(v)  The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

1. Further, the words ‘confuse’ and ‘deceive’ refer to different forms of bewilderment.  In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd Richardson J, in the New Zealand Court of Appeal, said: 10

   ‘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

10 [1979] RPC 410, at 423.

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.

1. In Radio Corp Pty Ltd v Disney Rich J, at 454, said of the word ‘confusion’: 11

In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

1. Further, a likelihood of confusion may found to exist even if it is unlikely to persist up to the point of sale.12

1. The assessment of the likelihood of deception or confusion involves the balancing of a number of factors. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the Registrar’s delegate observed: 13

   40. 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.

1. It the circumstances before me the trade mark on which the Opponent relies has, in my estimation, a moderate reputation at least in the Byron Bay area and, being a popular holiday destination, has likely been seen by many visitors to the area. Additionally, BN has interstate outlets and sales via his website although details of sales via these channels are not provided. The words by which the parties’ goods will be known, ordered, and remembered are identical: BEE NATURAL.  The words form a major part of the Trade Mark.  The words are

11 [1937] HCA 38; (1937) 57 CLR 448 at 454.

12 See, for example, Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105].

13 [2012] ATMO 124.

relatively striking, being both a play on the words ‘be natural’ and an allusion to the origin of the goods. Moreover, the evidence filed by the Opponent shows that honey-based cosmetics, soaps, and cleaning preparations and edible honey may be sold side by side and that there is a strong nexus or notional connection between such goods such that the purchasing public is likely to perceive the goods as being related.

1. Accordingly, in my consideration, because of BN’s reputation in its trade mark, there is a likelihood of both deception and confusion.

1. The Opponent has established his opposition to the registration of the Trade Mark.

Decision

1. Section 55 of the Act relevantly provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)    to refuse to register the trade mark; or

(b)    to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:       For limitations see section 6.

1. I refuse to register trade mark application 1767013.

Iain Campbell Thompson Hearing Officer

Trade Marks and Designs Oppositions and Hearings 3 October 2018