Jireh International Pty Limited v New Zealand Natural Pty Limited

[2002] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by Jireh International Pty Limited to registration of trade mark application 857468(32) - MOCHACHILLO - filed in the name of New Zealand Natural Pty Limited.

Date of Decision:	31 October 2002
Delegate:	Hearing Officer Geoff Purvis-Smith
Decision:	ss.41, 42, 44, 59 and 60 grounds dismissed ss.58 ground allowed Opposition successful Each party to bear their own costs

Background

On 17 November 2000, New Zealand Natural Pty Limited (NZ Natural) applied for registration of the trade mark:

MOCHACHILLO

for class 32: non alcoholic iced beverages.

The application was eventually accepted for registration and advertised in the Official Journal of Trade Marks on 17 May 2001.

On 17 August 2001, Jireh International Pty Limited (Jireh) lodged a notice of opposition to the registration.

In due course, Jireh filed evidence in support of their notice of opposition.  The evidence in support comprised declarations by Barbara Crouch dated 15 January 2002 and Peter Robert Irvine dated 11 January 2002.  Mr Irvine's declaration included three exhibits which I will refer to as PRI-A, PRI-B and PRI-C. Barker Blenkinship & Associates act on behalf of Jireh.

No evidence is answer was filed by NZ Natural. Greenstein Shakenovsky act on NZ Natural's behalf.

Both parties were informed of their right to request a hearing of the matter.  Neither party requested a hearing.  Therefore, the matter has been referred to me as a delegate of the Registrar of Trade Marks for a decision on the written record.

Grounds of Opposition

Jireh relies on grounds of opposition based on sections 41, 42, 44, 58, 59, 60 and 55 of the Trade Marks Act 1995.  I will deal with each in turn.

Section 41
Section 41 of the Act states that an application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods from those of other traders. In deciding the question, the Registrar, or his delegate, must first consider the extent to which the trade mark is inherently adapted to distinguish (subsection 41(3)). If he finds it is to no extent inherently adapted to distinguish, then it is to be considered under the provisions of subsection 41(6). If he finds that it is to some extent inherently adapted to distinguish, but it is not capable of distinguishing on that basis alone, then it is to be considered under the provisions of subsection 41(5). If the end result of applying either of subsections 41(5) or 41(6) is that the Registrar is still not satisfied the trade mark is capable of distinguishing, then the application must be rejected[1].

[1] Blount Inc v Registrar of Trade Marks 40 IPR 498

The appropriate test for determining whether or not a trade mark is inherently adapted to distinguish was outlined by Kitto J in Clark Equipment Co v Registrar of Trade Marks 111 CLR 511 and F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (barrier) 112 CLR 537. In barrier His Honour said at 555:

The question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

Both the aforementioned cases were decided under the 1955 Trade Marks Act. However the courts have confirmed the application of Justice Kitto's test to section 41 of the 1995 Act[2].

[2] Blount Inc v Registrar of Trade Marks 40 IPR 498; Mid Sydney Pty Ltd v Australian Tourism Co Ltd 42 IPR 561; Ocean Spray Cranberries Inc v Registrar of Trade Marks 47 IPR 579; T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc 48 IPR 513; Unilever Australia Ltd v Karounos 52 IPR 361

In the present case, no grounds for rejection were raised by the examiner. No evidence or submissions were provided by Jireh to suggest that the decision of the examiner was wrong in terms of s.41. I see no other reason to suggest that other traders are likely to desire to use the invented expression MOCHACHILLO on or in relation to non alcoholic beverages.

According, this ground is dismissed.

Section 42

Jireh has given no indication of what law it says would be contravened by use of the applied for trade mark.  Therefore, the claim is deficient and cannot be made out.  Accordingly, this ground is dismissed.

Section 44
Section 44 operates only where there is a potential substantial identity with or deceptive similarity to another trade mark which has an earlier priority date. Jireh has not referred me to any such trade marks. Therefore, this ground of opposition cannot be made out and it is dismissed.

Section 58
Section 58 states that an application may be opposed on the basis that the applicant is not the owner of the trade mark.

Mr Irvine attests that Jireh has been using the name "MOCHA CHILLER" in relation to iced coffee drinks continuously since 1996.

In Carnival Cruise Lines Inc v Sitmar Cruises Ltd[3], Justice Gummow found that the relevant test to be applied was whether there was a "total impression of similarity" which emerged from a comparison between the marks in question.  In other words, it was incumbent upon the opponent to establish that the relevant trade mark was substantially identical to a trade mark which had already been used in Australia, on or in relation to the same goods as were now sought in the application. 

[3] (1994) 31 IPR 375, 391

In Carnival Cruise Lines, Gummow J found the expressions "FUN SHIP", "FUN SHIPS", "FUNSHIP" and "THE FUNSHIP" were sufficiently similar, with the result that the opponent's ownership of the expression "FUN SHIP" prevented registration of the other marks.  His Honour found that there was no material distinction to be drawn between "FUN SHIP" and "FUNSHIP". 

Here, applying the decision of Gummow J, the comparison is to be made between MOCHACHILLER and MOCHACHILLO.  As with FUN SHIP and FUNSHIP, the space in MOCHA CHILLER can be put to one side.

The test for substantial identity is the familiar one set down set out by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4]:

[4] (1961) 109 CLR 407 at 414-415

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.....

Applying the test of Windeyer J, the only visual difference between the two trade marks is the final syllable - "ER" and "O" respectively.  In terms of the last syllables' importance in the marks, they are relatively minor - they neither convey the impression or message of the trade mark nor are they inventive or otherwise memorable.  The essential elements of the marks, given the nature of the goods to which they are and have been applied, are "Mocha" and "Chill" - that is, "Mocha" is a description of the flavour or composition of the drink and "Chill" reflects the fact that it is a chilled drink.

Taking these factors into account, I am satisfied that the trade marks are substantially identical.

I am also satisfied, on the basis of the evidence of Mr Irvine, that the opponent commenced using its trade mark on iced coffee drinks in 1996.  These goods are the same kind of thing as the goods sought by the application, and the use was prior to the application date.  Further, there is no evidence before me that the applicant used its trade mark in relation to iced beverages prior to the opponent. 

Accordingly, I am not satisfied that the applicant is in fact the owner of the trade mark.  This ground of opposition is made out.

Section 59

The opponent alleges that the applicant has no intention to use the trade mark in Australia.  However, the evidence of Ms Crouch, filed as evidence in support, indicates that the trade mark has in fact been used.  There is no other evidence to suggest that it had not been used, or that the applicant did not intend to use it at the relevant time. Accordingly, I am not satisfied that this ground of opposition is made out.

Section 60

Section 60 requires an opponent to establish not only that it has achieved a reputation in a relevant trade mark, but that consumers who are presented with the applied for trade mark will be deceived or confused as the result of that reputation. While there is some evidence here of promotion and sales, I am not satisfied that it is sufficient in the present case to establish that the requisite reputation had been obtained by the application date. Reputation is a broader concept than mere sales or promotion, and requires information as to the awareness of consumers of the trade mark in question. At times, this can be imputed from evidence of sales and promotion. Here, the evidence does not satisfy me that a reputation was likely to have been achieved at the relevant date. There is no context given to the retail sales figures, and no quantification of promotional activity before the application date. Further, I am not satisfied that the opponent has met its onus in relation to establishing that consumers would be deceived or confused in the requisite manner.

Therefore, this ground of opposition fails.

Section 55

I have found that the applicant is not the owner of the applied for trade mark. Pursuant to s.55, I therefore refuse to register the trade mark.

No application for costs has been made.  I direct that each party bear their own costs of these proceedings.

Geoffrey Purvis-Smith
Hearing Officer
Trade Marks Hearings
31 October 2002