Jomoo Group Co Ltd v Nature Wine (Aust) Pty Ltd

[2020] ATMO 163

TRADE MARKS ACT 1995

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

Re:Opposition by JOMOO GROUP CO LTD to registration of trade mark application 1891747 (33) – JOMOO (Fancy) – in the name of Nature Wine (Aust) Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: GBIP Limited Applicant: Self-represented
Decision:	2020 ATMO 163 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered and not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by JOMOO GROUP CO LTD (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Nature Wine (Aust) Pty Ltd (‘Applicant’): 

Application Number:	1891747
Filing Date:	4 December 2017
Goods:	Class 33: Alcoholic beverages containing wine; Beverages containing wine (wine predominating); Blended wine; Cooking wine; Dessert wine; Drinks containing wine (wine predominating); Dry fortified wine; Dry red wine; Dry sparkling wines; Dry white wine; Dry wine; Fortified wines; Ginger Wine; Low alcohol wine; Mulled wines; Non-sparkling wines; Red wine; Sparkling fruit wines; Sparkling wines; Still wines; Sweet fortified wine; Sweet red wine; Sweet sparkling wine; Sweet white wine; Sweet wine; Vintage wines; White wine; Wine  (‘Applicant’s Goods’)
Trade Mark:	(‘Trade Mark’)

1. Following the advertisement on 26 April 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 25 June 2018.  The Opponent then filed a Statement of Grounds and Particulars (subsequently rectified by this office) on 18 July 2018 (‘SGP’). The SGP as rectified raised a ground of opposition under s 44 the Act. The Applicant filed a Notice of Intention to Defend on 10 September 2018.

   Evidence and Submissions

2. Neither party filed any evidence in this matter.

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 18 June 2019 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had three months from the date of the letter to file any written submissions they wished to reply upon.  Neither party filed any submissions.

4. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.

   In doing so, I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

5. The Opponent has provided no evidence and, therefore, I am unable to provide any information about the Opponent other than what is set out in the Register of Trade Marks. 

6. The Opponent is the registered owner of the trade marks set out below (‘Opponent’s Trade Marks’).  I refer to the Goods and Services for which the Opponent’s Trade Marks are registered collectively as the ‘Opponent’s Goods and Services’.

Number	Trade Mark	Priority Date	Goods and Services
1434026	30 Jan 2011	Class 6: Poles of metal; nozzles of metal; valves of metal for piping (other than parts of machines); flashing of metal for building; railway material of metal; wire gauze; rope thimbles of metal; stops of metal; clothes hooks of metal; ironmongery; padlocks; safes (strong boxes); hooks (metal hardware); tanks of metal; signboards of metal; rods of metal for brazing and welding; mooring bollards of metal; wind vanes of metal; works of art of common metal; ores of metal Cass 7: Filtering machines; cord making machines; wrapping machines; dishwashers; washing machines; disintegrators; superheaters; glass working machines; rinsing machines; mixing machines; belt conveyors; wine presses; foundry machines; lathes (machine tools); generators of electricity; pumps (parts of machines, engines or motors); blowing machines for exhaustion of dust, etc.; pressure regulators (parts of machines); acetylene cleaning apparatus; dust removing installations for cleaning purposes Class 11: Lamps; soldering lamps; soldering lamps; gas lighters; water heaters; refrigerators; air cooling apparatus; drying apparatus; drying apparatus and installations; water supply installations; hydrants; hydrants for water supply; heating installations; pressure water tanks; ornamental fountains; bath fittings; shower bath fittings; showers; toilet bowls; sanitary apparatus; sanitary apparatus and installations; flushing apparatus; hand drying apparatus for washrooms; water purification apparatus; radiators (heating) Class 17:  Casings of synthetic rubber for pipes; casings of synthetic rubber for tubes; pipe gaskets; seals; filtering materials (semi-processed foams or films of plastic); junctions, not of metal, for pipes; fire hose; substances for insulating buildings against moisture; insulating materials; waterproof packings; stuffing rings; water-tight rings; watering hose; jackets (insulating) for pipes; jackets (insulating) for tanks; jackets for insulating hot water tanks in central heating installations; non-metallic insulated pipe jacket muffs; non-metallic insulated pipe jackets; pipe jackets, not of metal; watering hose; plastic fittings (other than clips) for attachment to plastic tubing; plastics tubes for use in manufacture; glass wool for insulation
1434028	30 Jan 2011	Class 19: Building timber; potters' clay; gypsum; cement for blast furnaces; cement slabs; tiles, not of metal; bitumen; gutter pipes, not of metal; water-pipes, not of metal; water-pipe valves, not of metal or plastic; lighting slabs; cabanas not of metal; building glass; coatings (building materials); binding agents for making stones; works of art of stone, concrete or marble; memorial plaques, not of metal; buildings, transportable, not of metal; drain pipes, not of metal Cass 20: Cupboards; sideboards; chests of drawers; counters (tables); washstands (furniture); dressing tables; towel closets (furniture); closures, not of metal, for containers; water pipe valves of plastic; mirrors (looking glasses); bamboo; bead curtains for decoration; display boards; nesting boxes for household pets; identification bracelets, not of metal, for hospitals; coffins; towel dispensers, fixed, not of metal; furniture fittings, not of metal; pillows; poles, not of metal; clothes hooks, not of metal Class 21: Containers for household or kitchen use; napkin holders; glass (receptacles); ceramics for household purposes; China ornaments; tea services; toilet paper dispensers; soap dispensers; soap holders; rings for towels (bathroom fittings); combs; brush goods; toothbrush cases; toothpicks; cosmetic utensils; vacuum bottles; cleaning instruments (hand-operated); non-electric cleaning instruments; crystal (glassware); drinking troughs; insect traps Class 35:  Advertising; electronic advertising services; commercial information agencies; import-export agencies; sales promotion (for others); business management consultancy; personnel management consultancy; risk management consultancy (business); relocation services for businesses; photocopying; accounting; rental of vending machines; sponsorship search; administration of the business affairs of franchises; business assistance relating to the establishment of franchises; provision of assistance (business) in the operation of franchises; business assistance relating to franchising; franchising consultancy and business support services; franchising services (group purchasing, group advertising); management advisory services related to franchising; provision of business information relating to franchising

The Applicant

1. The Applicant has provided no evidence and therefore I am unable to provide any information about the Applicant.

   Grounds of Opposition, Onus and Standard of Proof

2. As indicated above in the rectified SGP the Opponent nominated s 44 as the sole ground of opposition under the Act. To successfully oppose the application the Opponent needs to establish this ground.

3. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 4 December 2017, being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595. See also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

4. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)            a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)           a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar goods see subsection 14(1).

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

5. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish all the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar services, or goods which are closely related to, the Applicant’s Goods (‘the third requirement’).

6. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks which are registered to the Opponent.  Each has a priority date that is earlier than the priority date of the Trade Mark, so the first requirement is satisfied.  I will now consider the third requirement.

   Similar goods

7. Section 14 of the Act relevantly provides:

   14Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

8. McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Marks are registered are goods of the same description as the Applicant’s Goods as follows:

   Whether the relevant goods are of the same description is essentially a question of fact.

   The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

   On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [4] 

   Closely related services

   [4] [2000] FCA 1335, [17].

9. The recent case of Paypal, Inc v Braintree Communications Pty Ltd[5] summarises the legal principles applicable when determining if the services for which the Opponent’s Trade Marks are registered are closely related to the Applicant’s Goods as follows:

   [5] [2017] ATMO 90.

   In Qantas Airways Ltd v Edwards[6] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[7]:

   [6] [2016] FCA 729, [111].

   [7] (1999) 93 FCR 365; [1999] FCA 1020, [37].

   ... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...

   Yates J continued:

   His Honour also said in this connection that “closely related” was of wider import than “similar”.

   Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

   Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...

   His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):

   ... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

   Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.

   However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.

   This understanding is supported by the following passage in [39] of his Honour’s reasons:

   ... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.

   His Honour concluded at [40]:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

   The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [8] 

   [8] [2017] ATMO 90, [28]-[29].

1. The Opponent has not identified any of goods and services for which the Opponent’s Trade Marks are registered that might be similar or closely related to the Applicant’s Goods. Nor, after a close reading of the respective specifications, do I see any.  The Applicant’s Goods are wine.  The Opponent’s Trade Marks are registered for, broadly, industrial products, building products, furniture and general business advisory and consulting services.  The Applicant’s Goods are goods of a fundamentally different nature for a different purpose and sold in different channels from the Opponent’s Goods and Services. 

2. The Opponent’s Trade Marks have not met the third requirement. Each requirement being essential, it is unnecessary for me to consider the second requirement in any detail. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Decision

3. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1891747 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   13 October 2020