Jireh International Pty Ltd T/as Gloria Jean's Coffees v Melnikov Vladimir Vladimirovich

[2006] ATMO 65

TRADE MARKS ACT 1995

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

Re:        Opposition by JIREH INTERNATIONAL PTY LTD T/AS GLORIA JEAN'S COFFEES to protection of international registration designating Australia 1018203 (International Registration No. 830487) (25) - GLORIA JEANS TRADE MARK & DEVICE - in the name of MELNIKOV VLADIMIR VLADIMIROVICH.

Delegate:

Tabatha Klippan

Representation:

Opponent: Ms Angela Bowne of Counsel instructed by Coleman Greig Solicitors & Notaries

Holder: Unrepresented and did not appear or file written submissions

Decision:

Regulation 17A.29 opposition:

Ground under section 60 established – protection refused.

Background

1.     Melnikov Vladimir Vladimirovich, (‘the holder’), requested protection in Australia for the following international registration designating Australia (‘IRDA’):

Application Number:	1018203
Priority Date:	14 April 2004
Goods:	Class 25:  Clothing, including jeans
Trade Mark:
Endorsement:	Colour claimed:  red, black.
Acceptance Advertised:	7 October 2004

2.     Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29. 

3. Jireh International Pty Ltd T/As Gloria Jean's Coffees, (‘the opponent’), filed a notice of opposition on 6 January 2005 citing grounds of opposition under sections 43, 44 and 61 of the Trade Marks Act 1995, (‘the Act’). On 17 January 2005 the opponent’s agent applied to amend the notice of opposition by deleting the ground for opposition under section 61 and adding a ground for opposition under section 60. This amendment was allowed.

4.     The opponent filed evidence in support of the opposition.  However, as the holder has not nominated an address for service in Australia, there was no requirement for the evidence to be served on the holder.  The holder of the trade mark did not file or serve evidence in answer.

5.     As a Delegate of the Registrar of Trade Marks, I heard the matter in Sydney on 15 March 2006.  The opponent was represented by Ms Angela Bowne of Counsel.  The holder was unrepresented and did not appear or file written submissions.

Evidence

6.     The evidence filed in the matter is as follows:

Declarant	Date Declared	Exhibits
Evidence in support Peter Robert Irvine	6 June 2005	“A” to “Z”, “AA” to “AT” & “PRI-1” to “PRI-3”

7.     The opponent is part of a group of Australian companies which comprises the opponent, Gloria Jean’s Coffees Holdings Pty Ltd (‘GJC Holdings’) and Gloria Jean’s International Pty Ltd (‘GJC International’).  In his statutory declaration, Mr Irvine declares that he is currently the Managing Director of the opponent and that he has been a director of Jireh International Pty Ltd since 31 January 1996.  Mr Irvine further declares that he is also the Managing Director of GJC Holdings and GJC International. 

8.     The opponent originally operated as the master franchiser pursuant to a Master Franchise Agreement with Gloria Jean’s Gourmet Coffees Corp (a US corporation).  However, “in about” 2005, GJC Holdings and GJC International acquired the Gloria Jean’s Coffees International operations from Gloria Jean’s Gourmet Coffees Corp and the US corporation transferred its rights in the Master Franchise Agreement to GJC International.

9.     On or about 10 February 2005, the US corporation assigned to GJC Holdings a number of Australian trade mark registrations which incorporate the words GLORIA JEAN’S, namely registration numbers 493996, 493997, 680411 and 794946.  The opponent is an authorized user of all these trade marks pursuant to a licence agreement with GJC Holdings.  Trade mark registration number 1022576 is owned by the US corporation however this registration is licensed to GJC Holdings and GJC International and the opponent is a authorised user of the mark.  All of the opponent’s franchisees are authorised users of each of the above mentioned trade marks.

Section 215(5) – address for service

10.   Ms Bowne claimed that the “application for the subject trade mark had not been made in accordance with the Act” because the holder had not provided an address for service in Australia, as required by section 215(5). 

11.   At this point it is worth stating that the provisions relating to an address for service for international registrations differ from those which govern domestic applications.

12.   Section 189A provides that regulations may be made to implement Australia’s obligations under the Madrid Protocol. S189A(3) provides that :

Regulations made for the purposes of this section:

(a) may be inconsistent with this Act; and

(b) prevail over this Act (including any other regulations or other instruments made under this Act), to the extent of any inconsistency.

13.   In a domestic application Sections 31 and 33 set out the obligations of the Registrar to examine and report on the application and to accept or reject it. The Registrar must consider whether the application is made in accordance with the Act and whether there are grounds in Division 2 of Part 4 of the Act for rejecting the application.

14.   These provisions are reflected in relation to International Registrations Designating Australia in Part 17A Division 3 of the Regulations (Reg17A 12; 16 & 24). However, here the Registrar has to consider whether the IRDA is made in accordance with Part 17A Division 3 of the Regulations and not whether it is made in accordance with the Act.[1]

[1] For completeness it is worth noting that the grounds for rejection to be considered are those set out Subdivision 2 of that Division.

15.   Regulation 17A contains a number of references to an address for service in Australia:

• Regulation 17A.17 provides that when responding to a notice of provisional refusal:

(3) The holder must notify the Registrar, in writing, of the holder’s address for service in Australia.

• Regulation 17A.16 (3)(b) indicates that the Registrar must, when issuing a provisional refusal, give:

(3)(b)    Notice that the Registrar is not required to consider any response by the holder to the report, unless the holder has notified the Registrar, in writing, of the holder’s address for service in Australia.

• Regulation 17A.33(3) states:

(3)        .…a requirement to serve a document on the holder, or to give the holder an opportunity to make written representations or to be heard, does not apply unless, within 3 months after the notice of opposition is filed, the holder has notified the Registrar, in writing, of the holder’s address for service in Australia.

16.   Thus, the sanction for failing to provide an address for service in Australia is not refusal of the designation but a removal of requirements which otherwise obligate the Registrar and the opponent.

17.   This view is reinforced by regulation 17A.37. This section is found in subdivision 4 dealing with the extension of protection to an International Trade Mark:

(3)        As soon as practicable after receiving notice that a trade mark is a protected international trade mark, the holder must notify the Registrar, in writing, of the holder’s address for service in Australia.

18.   Clearly then, Part 17A of the Regulations implementing Australia’s obligations under the Madrid Protocol, does not envisage that the provision of an address for service in Australia is a prerequisite to the extension of protection. The ground has not been made out.

Holder’s Intentions

19.   Ms Bowne drew my attention to the fact that the holder does not have an address for service in Australia and has chosen not to put forward any evidence.  This, in Ms Bowne’s opinion, demonstrates that the holder does not have any bona fide intention to use the subject trade mark in Australia as per section 59 of the Act.  I note, however, that the opponent did not nominate section 59 in the notice of opposition.  Therefore, this ground can not be relied upon by the opponent.

Grounds of Opposition

20.   Regulation 17A.31 sets out the grounds for opposing an IRDA. These include sections 39 to 44 of the Act (by virtue of 17A.31(1) and 17A.28(1)), and sections 58 to 61 of the Act (by virtue of 17A.31(3)).  Regulations 17A.28(2) and 17A.31(3) establish that:

• Where the relevant section refers to an “application” an IRDA is to be understood; and
• Where an “applicant” is referred to, the holder of the IRDA is to be understood.

21. Ms Bowne pressed grounds of opposition under the provisions of sections 43 and 60 of the Trade Marks Act 1995.  The remaining grounds were not pressed and I formally find that they have not been established.

Submissions and the Law

Section 43

22.   Trade mark likely to deceive or cause confusion

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

23.   In the CONFEST decision, Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt, (1998) 41 IPR 632 Hearing Officer Forno observed, at 643:

“Connotation” is a new term in trade mark legislation and as such has not yet been interpreted by the courts.  The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary:

1.the act or fact of connoting. 2.  that which is connoted; secondary implied or associated meanings (as distinguished from denotation): for example the word “bum” has connotations of vulgarity.

Oxford English Dictionary:

1.The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark – in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.

24.   Ms Bowne cited McCorquodale v Masterton (2004) 63 IPR 582 where Kenny J found that the trade mark DIANA’S LEGACY IN ROSES had an immediate and direct reference to the late Princess Diana, so that consumers in Australia would be likely to believe that her estate had given some approval or sponsorship to the registration and use of the mark (at §36). Ms Bowne argued that the principles set out in McCorquodale should be applied to this case.

25. I note, however, that the opponent’s claim under section 43 is based on the reputation of the opponent’s trade marks. Specifically, Ms Bowne claimed that in light of the substantial reputation of the GLORIA JEAN’S name and trade marks, consumers will believe that any goods supplied by the holder under the opposed mark are sponsored or approved by the opponent. As confirmed in TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCS 720, the connotation must be in the trade mark itself and can not be determined by such factors as reputation or use of another trade mark. Thus the opponent’s claim is dealt with more appropriately under section 60. I find that the section 43 ground has not been made out.

Section 60

26. Section 60 provides:

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

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

27. The first step in applying section 60 is to determine whether or not the opposed trade mark is substantially identical with, or deceptively similar to, the trade marks relied on by the opponent (McCormick & Co Inc v McCormick 51 IPR 102 at 132). The opponent

directed me to the following registered trade marks:

Registration No.	Trade Mark
493996	GLORIA JEAN'S COFFEE BEAN
493997	GLORIA JEAN'S COFFEE BEAN
680411
794946
1022576	GLORIA JEAN’S

28.   The tests for substantial identity were defined by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at pages 414-15,

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.

29.   The opponent listed trade marks all containing GLORIA JEAN’S, with an apostrophe, whereas the opposed trade mark contains GLORIA JEANS, without an apostrophe.  The lack of apostrophe in the opposed trade mark does not substantially affect the identity of the trade mark, nor does the term “Trade Mark” which appears underneath the words GLORIA JEANS in a much smaller font.  The opponent’s trade mark registration number 680411 is a stylised version of words GLORIA JEAN’S and registration number 1022576 simply displays the words GLORIA JEAN’S in standard upper case. 

30.   GLORIA JEANS, with or without an apostrophe, is the main feature of the opposed trade mark and registration numbers 680411 and 1022576.  It is these words by which the trade marks will be remembered and referred to.  I find that the opposed trade mark is substantially identical with the trade marks with registration numbers 680411 and 1022576.

31.   When deciding whether or not the trade marks are deceptively similar a broader test applies.  Section 10 of the Act defines a deceptively similar trade mark as one that so nearly resembles that other trade mark that it is likely to deceive or cause confusion.  Case law requires that the probability of deception and confusion must be finite and non-trivial.  There must be a real tangible danger of it occurring.

32.   In Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641, Dixon and McTiernan JJ set out useful guidelines for deciding deceptive similarity at page 658:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same...The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.

33.   I note that registration numbers 493996 and 493997 consist of the words GLORIA JEAN’S COFFEE BEAN.  The words COFFEE BEAN merely describe the goods and allude to the services thus adding very little to the trade marks overall.

34.   Registration number 794946 consists of the words GLORIA JEAN’S COFFEES combined with a picture of a steaming drinking cup on what appears to be a sign.  GLORIA JEAN’S is the essential element of the opponent’s trade mark registrations 493996, 493997 and 794946.  I find that the opposed trade mark is deceptively similar to these three trade mark registrations.  Having found the opposed trade mark is either substantially identical with or deceptively similar to those of the opponent, I must now consider the opponent's reputation in Australia for GLORIA JEAN’S at the priority date, of 14 April 2004.

35.   The evidence shows that the opponent has been trading in Australia since 1996.  By the end of 2003 there were 181 franchisees in Australia trading under the name “Gloria Jean’s Coffee’s”, and as at 20 April 2005 this number had grown to 261.  Those franchisees operate stores in all Australian states and territories.

36.   In 1996, the opponent and its franchisees started using the trade mark depicted in registration number 680411.    This trade mark was used in relation to the retailing of foods and drinks, including tea and coffee and related supplies, equipment and accessories and in addition to a wide range of tea and coffee products, cookies and pastries.

37.   The opponent adopted the trade mark depicted in registration number 794946 as its new logo in 1999, and this trade mark has continuously been used by the opponent and its franchisees as the primary logo ever since.  The opponent has also “previously used and continues to utilise trademark number 1022576 in promotion of its goods and services”.

38.   The GLORIA JEAN’S trade marks are prominently displayed on all product packaging and accessories, and all products offered for sale at Gloria Jean’s Coffee stores, including merchandise, coffee beans, and carry bags.  Since 1996, trade mark registration number 680411 has been printed on the uniforms worn by all Gloria Jean’s employees.

39.   I refer to McCormick & Co Inc v McCormick 51 IPR 102 where Kenny J observed (at 129):

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.

40.   The opponent has extensively promoted its goods and services under its GLORIA JEAN’S trade marks through a variety of avenues including its own website, in-store promotional material, television and radio advertisements, and media sponsorships as well as various newspapers, and magazines including New Idea, Australian Home Beautiful and Who Weekly. The figures for the promotion and advertising of the GLORIA JEAN’S trade marks between 30 June 2001 and 30 June 2004 run into millions of dollars. 

41.   In Australia, the Gloria Jean’s franchisees serve approximately 73,000 cups of coffee per day, and the opponent aims to increase this to 240,000 cups per day from 660 stores within 5 years.  Between the years 1999 and 2004, the total value of sales of products and services in Australia bearing the GLORIA JEAN’S trade marks was many millions of dollars.

42.   I note from the evidence that a study was undertaken by Woolcolt Research in 2003 which showed that 65 per cent of people randomly surveyed were aware of the name GLORIA JEAN’S and associated it with the opponent’s franchised coffee stores.

43. I am satisfied that following more than seven years of continuous use and promotion, prior to the present priority date, the opponent’s GLORIA JEAN’S trade marks have acquired a significantly high reputation in the coffee market. Although the goods of the opposed trade mark are ‘clothing’, it is not a requirement under section 60 that the opponent’s goods or services be the same as the goods or services covered by the opposed trade mark. It is a requirement of section 60, however, that the reputation acquired by the opponent in its trade marks is sufficient to cause consumers to wonder whether the holder’s goods or services are connected with or endorsed by the opponent.

44.   In modern trading, brand extension plays a major part and is well understood by consumers.  The evidence shows that, in addition to tea and coffee, the opponent uses its GLORIA JEAN’S trade marks on a range of goods including carry bags, coffee plungers and travel mugs.  When consumers see the holder’s trade mark applied to the goods claimed, they will likely assume that the opponent has applied the brand extension technique to include clothing in its range of goods and services.

45. I consider that, at the relevant date, the opponent had acquired the requisite reputation in its GLORIA JEAN’S trade marks so that consumers would be likely to be deceived or confused if the holder were to use the opposed trade mark in relation to the goods claimed. The ground of opposition under section 60 has been established.

Decision

46.   Regulation 17A.34(1) provides:

17A.34 (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

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

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

47.   I refuse to extend protection in Australia in respect of all goods listed in the IRDA.

Tabatha Klippan

Senior Examiner

Trade Marks and Designs Hearings

28 July 2006