Joe Dib and John El-Chah v Robert Charles Minto

[2003] ATMO 47

TRADE MARKS ACT 1995

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

Re:Opposition by Joe Dib and John El-Chah to registration of trade mark 804032(30)(42) – The Coffee Bean Roasting House & Device –in the name of Robert Charles Minton.

Background

This matter is an opposition to registration of trade mark application 804032 which proceeds in the name of Robert Charles Minton of Tamworth, New South Wales, (‘the applicant’).

Details of the opposed application are:

App Number:  804032
Priority Date:  18 August 1999
Goods/Services:  Class: 30        Coffee, tea
  Class: 42  Providing food and drink
Trade Mark:  
Advertised:  25 October 2001

The above application was accepted for registration by the Registrar’s delegate under the provisions of section 44(4) on the basis that the applicant had continuously used the trade mark for a period beginning before the priority date for the registration 718677, in respect of similar goods or closely related services.  The owner of 718677 is not involved in these proceedings although I note that there are non-use proceedings against that trade mark brought by the opponents in these proceedings.

Joe Dib and John El-Chah (‘the opponents’) subsequently opposed registration of this application.  The opponents have served and filed a statutory declaration as evidence in support of their opposition and a declaration as evidence in reply.  The applicant has served and filed a declaration as evidence in answer.  Neither party has requested a hearing, so the matter has come to me, as a delegate of the Registrar of Trade Marks, for my written decision and reasons.

I will not discuss the statutory declarations of the opponents in much detail.  The grounds of opposition argued at some length by MJ Sulman, attorney for the opponents, in written submissions, are for the most part, at base founded upon either the opponents’ perceptions of substantial identity or deceptive similarity of its trade mark to the opposed trade mark or the inherent qualities of the opposed trade mark.  As the opponents fail to leap those hurdles, the evidence is not of much relevance to the decision. 

The relevant portion of the evidence relates to the common-law use of opponent’s trade mark, details of which (as applied for) appear below:

Reg Number:  823237
Priority Date:  4 February 2000

Goods/Services:  Class: 42 Restaurant, cafe and take away food services; catering services

Trade Mark:  
Advertised:  25 October 2001

The above application was accepted on the basis of a declaration as to the honest concurrent user of the opponents’ trade mark relative, inter alia, to this opposed trade mark.

The evidence shows that the opponents’ café is of modest to moderate size and turnover and has operated for some years from one location in Rozelle, a suburb of Sydney.

The evidence shows that the applicant’s café and coffee retail business is of modest to moderate size and operates in Tamworth, a country town of some size in New South Wales.  It too has operated for some years but not for as long as the café in Rozelle.

Both parties have thus made moderate common law use in good faith of their trade marks bearing in mind that the trade marks are each used in relation to one café of modest to moderate size in locations which are at some 400 kilometres driving distance from the other.  By this I mean that the reputations of the trade marks are not generally known to Australians, are confined to the locales in which they are used and those locales are distinct from each other.

Comparison of the Trade Marks

Before comparing the trade marks, I will set out some rules and background which I consider should apply to the comparison of these trade marks.

It is well settled in trade mark law that, where a feature of a trade mark lacks inherent distinctiveness, it should be discounted accordingly when compared with another trade mark which shares that feature: Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 59 RPC 127. The more that the shared feature lacks inherent capacity to distinguish, the less weight should be afforded it in the comparison.

Additionally, when owners of composite trade marks which are manifestly comprised of components which individually lack inherent distinctiveness register their trade marks, it is understood that the limited monopoly granted under the registration springs primarily from the inherent distinctiveness resident in the get-up of the trade marks: Diamond T. Motor Co's Appn (1921) 38 RPC 373 (Ch.D.). It is clear, however, that this consideration does not apply where the shared features are one or more distinctive features within composite trade marks.

Hence, when comparing two composite trade marks of this type (comprised only of matter which separate from the trade mark lacks inherent distinctiveness), either for substantial identity or deceptive similarity, the question posed becomes, essentially, “are the get-ups or presentations of the trade marks such that they are substantially identical or deceptively similar?”

Inherent distinctiveness is to be tested according to the tests set out in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 and FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Limited (1965) 112 CLR 537. Branson J set out the steps and considerations of the assessment in Blount Inc v Registrar of Trade Marks 40 IPR 498.

I would conclude that the device or representation of coffee beans or the words THE COFFEE BEAN would not be prima facie registrable per se in respect of café or bistro services such as those offered by the parties under the permissive provisions of subsection 41(3) and could only be registrable under the more restrictive provisions of subsection 41(5) or subsection 41(6).  The words THE COFFEE BEAN denotes the raw material from which coffee is roasted, ground and prepared – it is frequent, if not usual, for these to be fresh ground in cafés and bistros as coffee is prepared.  Some cafés and bistros roast their own coffee beans.  If the owners of cafés or bistros wish to advert to the fact that their cafés or bistros do fresh grind or roast their own coffee beans, the use of the words COFFEE BEAN and/or graphical representation of a coffee bean are indicia they may legitimately want to use.  Hence, both the words and device lack inherent distinctiveness and should not be specially featured in any comparison.

Additionally, the state of the Register[1] shows that 493997 and 718677, for example, both contain the words COFFEE BEAN and are registered for similar services as those of the parties, reinforcing my view. 

[1] The opponent states that it has obtained the opposed application file under FOI and has been quite critical in what it has assumed to be the applicant’s lack of a search for conflicting trade marks before filing its application. I should be safe, therefore, in assuming that the opponents are aware of the state of the Register, although this is not in evidence.

The comparison of the trade marks is therefore one which rests mainly on the get-up of the trade marks in which the words THE COFFEE BEAN are discounted (or not given the eminence that they might, if the feature was prima facie inherently adapted to distinguish).

The tests for substantial identity and deceptive similarity are the familiar ones from The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 and Australian Woollen Mills Ltd v F S Walton & Company Limited (1937) 58 CLR 641 at 658. It is obvious, when the trade marks are compared side-by-side that there are major differences between them. The trade marks are not substantially identical.

Similarly, when the trade marks are compared (no longer side-by-side) for deceptive similarity, the impression based on recollection of the opponent’s trade mark that persons of ordinary intelligence and memory would have as with that of the applicant’s trade mark, are, I consider, as far as the get-up or presentation of the trade marks is concerned, quite different. 

The ‘idea’ of the trade marks is somewhat similar – however, I note the following passage in Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA (18 December 1998):

In Cooper Engineering[2] the application was for registration of the words "Rain King". The opponent's mark was "Rainmaster". Dixon, Williams and Kitto JJ cited (at 538) the principles summed up by Parker J in the Pianotist case (1906) 23 RPC 774 at 777 as follows:

[2] Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536

"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case."

After pointing out the differences between the suffix "master" and the word "King" in appearance and sound their Honours continued:

"The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument. But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive."

Thus the fact that two marks convey a common idea becomes relevant only if the marks themselves look or sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.

The trade marks of the parties are not deceptively similar.  The trade marks might, in essence, state the same thing but they are quite different ways of stating the same thing with some components in common which, as I have indicated, lack inherent distinctiveness.  I note the words of Cozens-Hardy M.R. from Joseph Crosfield & Sons Ltd's Appn (1909) 26 RPC 837 at 854:

"Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure".

I would be very hesitant, on this basis, to imply any monopoly in the words THE COFFEE BEAN or the figurative representation of coffee beans per se as trade marks of any trader in respect of these goods or services without compelling evidence of prolonged, widespread, substantial usage which has demonstrably ensured factual distinctiveness for either indicium.  Here that is not the case: the evidence shows that the opponents’ trade mark is a composite one, rather than the words, used in relation to one café with relatively modest turnover in Rozelle.

Mr Sulman states in his submission that there is confusion between the trade marks of the parties.  His clients have, however, previously sworn that their own trade mark has had honest concurrent user relative to that of the applicant.  Their trade mark has been accepted and registered on that basis.  Honest concurrent user is one instance where confusion and/or deception is anticipated and accepted under the Act.  As observed by Dawson and Toohey JJ in New South Wales Dairy Corp. v. Murray Goulburn Co-Op Co. Ltd. (1990) 171 CLR 363 F.C. 90/053 at paragraph 12 of their judgment:

The doctrine of honest concurrent user meant that a degree of confusion had to be tolerated within the system.  The mere fact that the use of a mark would be likely to deceive or cause confusion was not necessarily sufficient to support an injunction restraining that use.

It would, in my opinion, be inappropriate to take into account any instances of deception or confusion where an opponent has previously invoked the honest concurrent user provisions of the Act (relative to the opposed trade mark) to have its own trade mark accepted and registered, which trade mark it alleges is, or has previously accepted to be, deceptively similar or substantially identical to that which is opposed.  Absent evidence of blameworthy conduct or use in bad faith, to consider any instances of confusion or deception would be to take into account circumstances which an opponent has, in effect, previously stated are either non-existant, or tolerable and acceptable to it and which are stated by the Courts to be tolerable in the system.

Moreover, while evidence of confusion or deception might otherwise support a finding that trade marks are deceptively similar, this is not always so: if the trade marks are composed only of indicia which lack inherent distinctiveness or are common to the trade, any confusion might not be totally unexpected.  The confusion might stem, in fact, from the type of trade mark selected by the parties rather than from the deceptive similarity of the trade marks within the meaning of the Act.  These are quite different trade marks conveying a similar idea, using some components in common which lack inherent distinctiveness.  Neither trade mark has a single inherently distinctive component which is separately memorable.  Any confusion may be, in my consideration, consequent on the fact that where trade marks such as RAINMASTER or RAINKING are adopted which are fashioned out of components which lack inherent distinctiveness and/or are common to the trade and are utterly unmemorable, but convey a similar idea, they may not be remembered differently and might be confused on the basis of that commonality of idea.

As the trade marks in question are neither substantially identical nor deceptively similar, the opposition under sections 42, 58 and 60 of the Act cannot be established.  The opponent has also pursued grounds under sections 41 and 43 of the Act and I turn to those now.

It is apparent that the opposed trade mark has been accepted as having sufficient inherent distinctiveness to distinguish the goods and services of the applicant.  It is also apparent that the principle in Diamond T to which I referred above applies to the assessment of the inherent distinctiveness of the opposed trade mark.  Thus, while the individual components of the opposed trade mark lack inherent distinctiveness, criticisms of the relative strengths of those components misses the point that the opposed trade mark draws its inherent distinctiveness from the arrangement, layout and particular graphics which have been used.  I would add, for completeness, that whatever problems that the opponents might see as applying to the applicant’s trade mark also should, a fortiori, have applied to their own trade mark.  The opponent has not established this ground.

Neither can the opponent establish its ground in terms of section 43 of the Act.  Any connotation in terms of section 43 must arise from the opposed trade mark itself – not through comparisons to another “name”: Big Country Developments Pty Ltdv TGI Friday's Inc, [2000] FCA 720, 48 IPR 513. The usage of the indicia within the opposed trade mark in relation to a coffee shop or a place where coffee is served appears to me to be entirely consistent with their connotations.

It is possible that a sign might, over time and/or with sufficient usage, sufficiently build a meaning to Australians distinct from whatever function it might have as a trade mark and enter parlance or usage to the extent that use by a person other than the originator might be deceptive: Durkan v 20th Century Fox Film Corporation 47 IPR 651 (BRAVEHEART); Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt 41 IPR 632 (CONFEST); Amalagamated Television Services Pty Ltd v Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard [1999] ATMO 103 (11 October 1999) (SUMMER BAY). Each of the opposed trade marks in those preceding cases were identical to words which had connotations which were both uniquely associated with the activities of the opponents and which were distinct from any trade mark use the opponents might have made of them. Thus the use of the words BRAVEHEART or SUMMER BAY was so thoroughly associated with the commercial activities of the opponents (although they had scant, if any, use as trade marks) that they had developed connotations, not as trade marks but connected with those activities, and thus use by another person of the sign as a trade mark would be deceptive as it would imply a connection with those activities which did not exist.

Thus, the registry decisions discussed above appear to be consistent with that in TGI Fridays.

Illustrative both of the process of how a trade mark (as opposed to other words which are uniquely associated with a person’s business activities) builds a connotation, the considerations and the risks involved to the owners of such trade marks is the genus of cases such as the one in which Mann J., in James A. Jobling & Co. Ltd. v. James McEwan & Co. Pty. Ltd. (1933) VLR, held that the trade mark "Pyrex" should be expunged from the Register on the ground that since registration it had ceased to be distinctive of the proprietor's goods and had, since the expiry of the proprietor's patent relating to such goods, become the name of or purely a description of a type of product with its own special properties and not distinctive of goods of the proprietor's manufacture. 

Similarly, as observed by Hearing Officer Williams in Cadbury Limited v Unilever PLC [1998] ATMO 36 (24 July 1998):

I do not think that a meaning is acquired, in the public domain, simply because a trade mark is famous.  The opposite is true.  The more an element is publicly known to be a trade mark, the clearer it is that it has not acquired a meaning.  COCA COLA does not "mean" a dark fizzy cordial, nor does ROLLS ROYCE "mean" a large, luxurious English saloon car.

However, while the words ROLLS ROYCE do not mean “a large luxurious English saloon car,” it is possible that they have developed a connotation through their use in such phrases as, “He was given the Rolls Royce treatment”, meaning that the person was subjected to a very luxurious time in which no expense was spared and every attention to detail was given.  Whether use by another trader within that meaning, or connotation, would be deceptive and that connotation would be in any way severable from the fame of the trade mark is not a question at issue here.  However, in line with Hearing Officer Williams’s observations and with the Jobling decision, it is apparent that if a trade mark does come to connote “a dark fizzy cordial” or “a large luxurious English saloon car” it has ceased to function as a trade mark within the meaning of section 17 of the Act as it no longer identifies the goods of a person: it connotes all goods of that type.

Thus, (apart from those cases where the applied for trade mark contains or consists of an obvious misstatement as to the nature, origin or quality of the goods or services), the instances where connotation will be most readily found are those where trade mark usage of the sign on which the opponent bases their opposition is low or non-existent, or very obviously distinct from any signification that the sign has as a trade mark, but the meaning or connotation of the words is well known, as is the connection of those words with the activities of the opponent.

Moreover, connotation is not an issue as regards the opponents’ trade mark - indeed it is far from it.  The opponents’ trade mark is used only in relation to one café in Rozelle.  I have not been shown that the name of the establishment has entered parlance or usage there (or what that might be, distinct from the functions of the opponents’ sign as a trade mark), let alone generally amongst Australians.

The opponents have not established this ground.

Decision

The opponents have not established any of their grounds of opposition.

Accordingly, the opposed trade mark application may proceed to registration 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 the appeal has been decided or discontinued.

Costs

It is not apparent that the applicant has incurred any costs which are claimable under the Schedule to the regulations.  However, should the applicant have incurred claimable costs, I order these against the opponents.

Ian Thompson
Hearings Officer
Trade Marks Hearings

18 August 2003