Johnny Walker Pty Ltd v Chocolatier (Aust) Pty Ltd
[2002] ATMO 105
•22 November 2002
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Johnny Walker Pty Ltd to registration of trade mark application 734269(30) - CHOCOLATIER AUSTRALIA - filed in the name of Chocolatier (Aust) Pty Ltd.
Background
Chocolatier (Aust) Pty. Ltd. ("the applicant") seeks registration of trade mark application 734269, in class 30, for "confectionery including chocolate and chocolate products in this class". The filing date, at which certain critical matters must be shown, is 13 May 1997. The trade mark is as follows:
That trade mark has been examined at the Trade Marks Office and advertised as having been accepted for registration. It is proceeding under the provisions of s 41(5) and 44(3)(a) of the Trade Marks Act 1995 (the Act). Suffice to say for the moment that both of those provisions require the Registrar's delegate to consider evidence of use.
Johnny Walker Pty Ltd ("Walkers") now opposes registration of the trade mark. Both Walkers and the applicant have served and filed evidence to support their positions, as allowed for under Part 5 of the Trade Mark Regulations. That process completed, I was assigned to hear the parties and am now to decide the opposition under delegation from the Registrar of Trade Marks. The hearing was held in Canberra. The applicant was represented by Colin Oberin, patent attorney, of the attorney firm Allens Arthur Robinson. Walkers did not have a legal representative and relied on its own written submissions.
Walkers relies on two broad fronts for its opposition.:
Deceptively similar trade marks (grounds under s 44 and s 60 of the Act)
No proper case made for registration (ground under s 41)
While the first of these involves grounds under two different sections of the Act, it will be convenient to deal with them together in due course.
In support of these issues, Walkers relies on the evidence to which I will come below. This sets out details of Walkers' own registrations, which I reproduce below, and details of the business conducted under those trade marks.
Walkers' mark registrations consist of a device registered in what was then Part B of the old register, on the basis of its ability to become distinctive. This standard is roughly comparable to the present test of "capable of distinguishing" under the current s 41. The details are as follows
| Registration number | Goods/services | Registration endorsed: |
| 439963 | Chocolates | ... limited to Western Australia |
| 439964 | Chocolate making services and the retailing of chocolates | ditto |
| 558281 | Chocolates, novelty chocolates, confectionery and chocolate products in this class (30) | ".. shall give no right to the exclusive use of the words WALKER and CHOCOLATIER" |
| 555282 | Wholesale and retail services in relation to chocolates, novelty chocolates, confectionery and chocolate products | "... shall give no right to the exclusive use of the words WALKER and CHOCOLATIER" |
I will pause here to add an explanation of the significance of s 34(1), mentioned in the above endorsements. That provision existed under the former 1955 legislation. It is comparable to the current s 44(3). Its application recognises that Walkers itself obtained its registration in the face of the citation of two earlier and conflicting trade marks. One conflicting trade mark (JOHNNIE WALKER) was owned by a distillery, the other (trade mark no 526851) was owned by the present applicant. Trade mark registration 526851, which differs from the trade mark now in dispute, has since been removed because the current applicant did not pay the renewal fee. The registration of 526851 itself was a consequence of the exercise of the same - s 34(1) - provision. It seems that the history of these marks is that evidence of honest use has, over time, been sufficient to meet the onus that was on an applicant under former legislation. I will come, below, to the effect of the change in the legislative scheme.
Evidence in detail
Walkers' evidence in support
| Declaration by | Annexures |
| Robert Walker (dated 16.10.2000) | RJW1-4, 4A,5-20 |
| Grant Garraway | |
| Pamela Rothery | |
| Pamela Whittaker | |
| John Walker | JWW1 |
Applicant's evidence in answer
| Declaration by | Annexures |
| John Grisold | JG1 |
| Garen Holopikian | GH1 and 2 |
(I note that this evidence in answer, relied on now by the applicant, does not match precisely that which it relied on in the initial examination of the application.)
Walkers' evidence in reply
| Declaration by | Annexures |
| Robert Walker (dated 10.12.2001) | RJW21-23 |
Walkers' business has been conducted principally in Western Australia, with one outlet operating in New South Wales from October 1998. Walkers is keen to expand its operations by means of franchising and has obtained business name registrations in various states. Some of the business name registrations were obtained after the applicant filed the present application. However, I note that merely registering a business name does not mean that a business has been conducted. To demonstrate that this is so in practice, the applicant has shown, in its evidence in answer, that the business name registrations held by Walkers in South Australia, Victoria and New South Wales have, as places of business, the address of legal or patent attorney firms.
What counts, for the purposes of this opposition, is the positions of the parties as at the filing date of the present application, 13 May 1997. Those positions are staked out through seeking registration of, and/or by actual commercial use of, a trade mark.
In the evidence, there are some instances of possible confusion between the two firms. There is evidence of a misdirected fax, second or third hand evidence about a confused trade customer visiting a Walkers store, apparently believing it was connected with the applicant; and an error in the printing of an award at the Sydney Royal Easter Show. There is also evidence that, in recent times, the applicant has been referred to in radio promotions simply as "Chocolatier".
Mr Garraway, a declarant supporting Walkers, is the owner of Franchise Services Group. He has represented Walkers and a number of other franchisors at the Melbourne Franchise Expo in 2000. In the Garraway declaration, there is some anecdotal evidence that "members of the general public and members of the potential franchise owner community attending the Melbourne Franchise Expo in 2000" had stated that "they were confused between the trade marks" of the disputing parties. Mr Garraway declares that these unnamed people all stated that they believed the two trade marks denoted the same trade source.
Ms Whittaker, employed by Walkers, states that in the course of her work in Western Australia she regularly serves customers who know of the applicant's products and have asked if Walkers is part of the applicant company. "Many of these customers have stated that the trade mark of (the applicant) looks the same or similar to that of (Walkers)". What precisely those customers meant by this is, obviously, not in evidence.
Overall, Walkers is concerned that this perceived and apprehended confusion will restrict its future potential franchising operations.
Robert Walker asserts, in the evidence in support, that Walkers has "often" been referred to as "Chocolatier", rather than, as the evidence suggests, the (in my view more likely) "John Walker". Walkers understands full well that the word "chocolatier" is common to the trade, a French word meaning "chocolate maker".
Walkers seeks to cast the applicant's trade mark, when viewed as a whole, as unfit for registration because it is "descriptive" and "not distinctive enough in its own right - and therefore confusing". The evidence of Robert Walker seeks to undermine the correctness of the original decision that the application should be advertised as having been accepted for registration. He brings in new evidence which puts a different view to the picture painted before acceptance. It is now revealed that 75% of the applicant's product is sold unbranded. An article in Business Review Weekly, May 2 1994, asserts that the applicant "is far from becoming a household name, because 75% of its products do not carry the Chocolatier label". The article was apparently based in part on an interview with the manager and co-owner of the applicant, John Grishold. The article repeatedly refers to the applicant as "Chocolatier".
The applicant, for its part, has answered with evidence that shows that it supplies its product to a very large number of stores. I will come, under the heading of "Issues and decision" to look at this matter again in more detail. For the moment let me note that Mr Grishold does not resile from the terms of the Business Review Weekly article. However, he declares that his company recognises that the word "chocolatier" is utterly descriptive.
Issues and decision
Section 41 - mark not capable of distinguishing
Walkers has commented that the evidence relied upon by the applicant to gain acceptance of the application does not suggest that the trade mark is "distinctive". Walkers argues that, in general, there is not a sufficient case to justify registration. Walkers bears the onus of establishing a ground of opposition and it must, if it is to do so, bring in some combination of evidence and argument as to leave me sufficiently unconvinced about the appropriateness of registration.
However, as Mr Oberin pointed out, distinctiveness is a term applicable to Part A registrations under the now-repealed 1955 act. As a test, it was "more demanding", as Branson J accepted in Blount Inc v Registrar of Trade Marks, 40 IPR 498. It is no longer the minimum standard test. The present standard of registration equates roughly to the former Part B standard, "able to become distinctive", under the earlier 1955 act with which Walkers is obviously familiar.
I will not repeat the analysis that Branson J made of the mechanics of s 41 in the case I have just referred to. I am satisfied that there is sufficient in the combination of words CHOCOLATIER AUSTRALIA and the (minimal) amount of get-up applied to the words to show that the trade mark is correctly assessed against the yardstick of s 41(5). It is not, despite the argument of Walkers, of the sort that Branson J described as being "not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Therefore, it is not subject to the more stringent test of s 41(6). What is required is that the applicant makes a sufficient case that, through use in trade, the trade mark will, in the future, distinguish its goods.
I am concerned, in deciding this question, to note that the evidence now brought in by Walkers casts a very much harsher light on the evidence previously relied on by the applicant, in examination. There, the applicant at no stage revealed that three-quarters of its product reached the ultimate consumer without a trade mark upon it.
Mr Oberin argued, at the hearing, that I could and should have recourse to the evidence before the examiner and read it in conjunction with such things as updated sales figures in the Grisold declaration. However, his client has not served that evidence on Walkers, for whatever reason, and cannot now rely on it. That, of course, does not preclude me from doing so, provide that I deal fairly with Walkers. However, my general view is that, if an applicant fails to bring in evidence that goes to the use of its mark in the face of another, it probably has some good reason for this. In the present instance, my suspicions were aroused by the Business Review Weekly extract in the evidence in support and therefore, contrary to usual practice, I have had brief recourse to the material. I have seen sufficient to confirm that at least one critical fact was, as Walkers asserted, not disclosed to the examiner. I consider, on that basis, that the earlier evidence is questionable. Therefore, I am even more reluctant than usual to bring in material that the applicant has, apparently with quite good reason, chosen to leave out. If this puts the applicant in a difficult position, so be it.
On the evidence on which the applicant is now entitled to rely, the details of the applicant's trade are less than clear. Even so, it appears that at least some customers who buy the applicant's products through outlets such as Myers, Target, K-mart etc are aware of the trade mark. Sales since first use are huge, now totalling in excess of 15 million dollars. True it is, as Walkers argues, that the ultimate consumers may be unaware of the origin of the chocolates they eat. However, as Mr Oberin argued, the goods certainly reach the retailer under the trade mark in question.
Walkers' own evidence, ironically, assists the applicant in one respect. It shows that customers are, somehow, aware of the applicant as a trade source, if only to be able to speculate about Walkers' possible connection with the goods. Taking these things together, I do not think I can say Walkers has established a ground in terms of s 41.
Deceptively similar trade marks
This is a frequently-traversed area of law. The relevant principles of deceptive similarity are set out in Australian Law of Trade Marks and Passing Off, by D.R. Shanahan.
The only element in common between the two trade marks is the word "chocolatier". This, on the evidence, and on the submissions of both parties, is common to the trade. There is some evidence that there is a low level of confusion. However, much of the evidence is open to question or interpretation and I cannot give it particular weight. None of the individuals who have apparently speculated about a connection, or is said to have been confused, has given direct evidence. With all due respect to the veracity of declarants Garraway, Rothery and Whittaker, (on behalf of Walkers) I find it hard to accept at face value their identical statements that many customers or potential franchisees "have been confused between" the applicant's trade mark and those of John Walker. I doubt that this goes to a genuine inability to distinguish one mark from another, even allowing for the necessary degree of imperfect recollection. It is hard to see how such a thing could be. The confusion could, on the other hand, be nothing more than an inability to remember which trade mark indicates goods that originate in the Eastern states. If something more serious is alleged then the apparent instances of possible deception may result from some ill-conceived notion that the word CHOCOLATIER, prominent in both marks, is somehow an indication of trade origin. However, in terms of the current legislation, no ground of opposition is established unless there is a significant degree of risk. Mere possibility, or the existence of some low level of speculation in the minds of some members of the public, is not sufficient.
It is no longer the case that registration will be withheld until the registrar is satisfied, positively, that there will be no reasonable likelihood of deception or confusion arising from normal and fair use of the applicant's trade mark for any of the goods specified in the application. Under the 1995 legislation, s 44 will not preclude registration unless the registrar is satisfied that there is a significant risk of deception or confusion. This was clearly set out in Registrar of Trade Marks v Woolworths [1999] FCA 1020, (1999) 45 IPR 411. French J, delivering the majority decision, affirmed at para 46 that:
The question is not whether consumers might be confused (in the sense of wondering about a common origin or connection) but whether there is a reasonable likelihood that they will be confused.
There follows, at para 50, a significant revision of the standard test arising from older law. French J realigned the test under Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 to reflect the situation as it now exists, "absent the imposition of an onus on the applicant". It is fair to observe that this realignment was not fully appreciated at the time that application 734269 was being examined, and equally fair to say that Walkers, who have conducted their own case in this opposition, do not seem to have appreciated its import.
Returning to the evidence of alleged confusion, it is, of course, possible that there is another explanation for the things in question. There may be some notion, among those individuals whose confusion has been suggested at second hand, that the two firms are connected for some reason that has nothing at all to do with the trade marks they use. Such an explanation might explain, in particular, the unsupported statement that a representative of a patisserie attended the opponent's premises, having (it is alleged, at second or third hand) been told by the applicant that the two firms were connected. Again, as Mr Oberin argued, it is one of many possibilities that might explain how Walkers came to receive a fax clearly addressed to Chocolatier Australia. This fax is part of exhibit RJW20 and comes from a sender in Singapore. There is no evidence before me about who substituted Walkers' fax number for the applicant's as a handwritten change to the address details, or why. However, such speculations are beyond the scope of the present opposition process.
More to the point, the courts have long recognised that it is not good policy to allow any single trader to claim a monopoly in a purely descriptive term. See the PUB SQUASH case, Cadbury Schweppes v Pub Squash Co, 1981 AllER 213, and Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) CLR 216. In the present case, I do not think that Walkers can be heard, with one breath, to point out that JOHN WALKER is but a small element in its own mark, JOHN WALKER CHOCOLATIER, and to complain, almost with the next, of confusion with the applicant's mark.
Accordingly, I find that the marks in question are not deceptively similar. This is a threshold question for both s 44 and s 60, and accordingly I find this duplexed ground of opposition has not been established. I also note, with respect to the latter provision alone, that the opponent is apparently concerned with protecting its future revenue and franchising options. It has argued, strongly, that it has the potential to grow and be far larger than the applicant. However, s 60 deals strictly with the reputation of the conflicting trade mark at the priority date of the opposed application.
Proposed Disclaimer
I note that, since the time of the hearing, the applicant has proposed that any registration be endorsed "Registration of this trade mark shall give no right to the exclusive use of the word CHOCOLATIER except as represented in the mark".
This voluntary endorsement is not of the form referred to in s 74(1), which reads:
74.(1) An applicant for the registration of a trade mark, or the registered owner of a registered trade mark, may, by notice in writing given to the Registrar, disclaim any exclusive right to use, or authorise the use of, a specified part of the trade mark.
(2) The disclaimer affects only the rights given by this Act to the registered owner of the trade mark on registration of the trade mark.
(3) The Registrar must, on registering the trade mark or on receiving notice of the disclaimer (whichever is later), enter the particulars of the disclaimer in the Register.
(4) A disclaimer properly made may not be revoked.
While the wording used by the applicant is somewhat reminiscent of the form traditionally applied under the older 1955 legislation, it is not a disclaimer per se. It does more than "disclaim any exclusive right to use, or authorise the use of, a specified part of the trade mark". Specifically, it does not simply disclaim any such rights in the word CHOCOLATIER per se. Rather, it goes on to make an assertion that rights in that word, as specifically represented, do indeed arise from the registration. It is therefore not a disclaimer so much as a Trojan horse and is not something that I am required to record.
Even if it were truly a disclaimer, the endorsement would not resolve the opposition. It sheds no light at all on the question of whether the two marks now in dispute are, or are not, deceptively similar. I can appreciate that traders, to settle a dispute, may find such endorsements helpful. However, as a delegate of the registrar, I am on shaky administrative ground whenever I might otherwise attempt to assess what rights will necessarily accrue from a registration. The existence of deceptive similarity between competing trade marks is a question of fact, to be answered by an assessment of the likely reactions of those who encounter the marks in use in the ordinary day-to-day circumstances of the relevant trade. Those perceptions will not be changed by an entry on the register. Equally, as here, it is easy to see that litigation could still be commenced between parties who disclaim rights in parts of marks while still asserting that, taking the marks as wholes, the necessary similarity, and a commercial conflict, both exist.
Conclusion
No ground of opposition has been established. If no copy of a notice of appeal is served on the Registrar of Trade Marks within the next four weeks, the application may proceed to registration. I award costs, to the extent set out in the scale, against Walkers.
Terry Williams
Hearing Officer
Trade Marks Hearings
22 November 2002
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