Juice Generation Inc v Jateen Mistry

[2018] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by Juice Generation, Inc to registration of trade mark application 1775052 (32, 43) - Juice Farmacy - in the name of Jateen Mistry.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Watermark Patent & Trade Mark Attorneys – written submissions Applicant: Self represented
Decision:	2018 ATMO 99 Section 52 opposition to registration: sections 58; 59, 60, 62, 62A and 42(b). Grounds not established – Trade Mark to proceed to registration.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Jateen Mistry (‘the Applicant’) has applied for the registration of the trade mark which appears below:

Application No:           1775052

Priority Date:               5 June 2016

Goods/Services:          Class 32: Beverages consisting of a blend of fruit and vegetable juices; Bottled fruit juices; Fresh fruit juices; Fresh vegetable juices; Fruit juice beverages; Fruit juice beverages that contain multi vitamins; Fruit juice extracts (beverages or for making beverages); Fruit juice extracts for use as a beverage; Fruit juice nectar (beverages or for making beverages); Fruit juices; Grape juice; Lemon juice (beverage); Orange juice; Vegetable juices (beverages)

Class 43: Arranging for the provision of food; Consultancy services relating to food; Consultancy services relating to food preparation; Consultancy, advisory and information services in relation to the provision of food and drink; Consultation services relating to food; Food and drink catering; Food cooking services; Food hygiene services; Food preparation; Food sculpting; Hospitality services (food and drink); Preparation of food and drink; Preparation of take-away and fast food; Providing information, including online, about services for providing food and drink, and temporary accommodation; Provision of carry out foods and beverages; Provision of information relating to the preparation of food and drink; Snack bars (provision of food and drink); Take away food services; Take out food and beverage services; Takeaway food and drink services

Trade Mark:                Juice Farmacy

(‘the Trade Mark’)

1. In compliance with section 31 of the Act the Trade Mark was examined and it was subsequently advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 27 October 2016.

2. Thereafter, on 15 December 2016, Juice Generation, Inc. (‘the Opponent’) filed a Notice of Opposition to the registration of the Trade Mark.  The opposition process has subsequently followed the timetable hereunder:

   13 January 2017 – Statement of Grounds and Particulars (‘the SGP’) filed by Opponent;

   24 February 2017 – Notice of Intention to Defend filed by Applicant;

   5 June 2017 – Evidence in Support filed by the Opponent:

   Declaration of Eric Helms, CEO of the Opponent, made on 3 June 2017 with Annexures EH-1 to EH-9;

   8 September 2017 – Evidence in Answer filed by Applicant:

   Declaration of Applicant made on 8 September 2017 with attachments;

   15 November 2017 – Evidence in Reply filed by Opponent:

   Declaration of Linda Xie, lawyer employed by Opponent’s Trade Mark Attorneys, made on 15 November 2017, with Annexures LX-1 and LX-2;

   17 November 2017 – Opponent seeks amendment of the SGP;

   7 December 2017 – Applicant objects to amendment of the SGP;

   19 January 2018 – Amendment to the SGP allowed;

   19 February 2018 – Evidence in response to amended SGP:

   Declaration of Heena Gita Mistry, the wife and business partner of the Applicant, made on 19 February 2018; and

   Declaration of Applicant made on 19 February 2018.

3. Both parties have been informed of their right to be heard or to make written submissions; neither party has requested to be heard and the Opponent has filed written submissions.

4. Now, in order that the Registrar of Trade Marks may discharge her obligation under section 55 of the Act to decide the matter, it has come to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

   Grounds and Evidence

   6. The grounds specified in the SGP are under sections 58, 60, 42, 59, 62A, and 62 of the Act.

   The Opponent

   7.    Relevantly, Mr Helms’s declaration in support of the opposition establishes that the Opponent runs a number of juice bars in New York in the United States of America under the trade mark JUICE GENERATION and Mr Helms states that the Opponent has used the trade mark JUICE FARMACY as a part of those operations such that the trade mark JUICE FARMACY has both use and reputation in Australia.

5. Further, I note that the Opponent has an application to protect its JUICE FARMACY trade mark in Australia:

   Application No:           1809877

   IR No:  1219672
   Priority Date:               4 October 2016
   Services:  Class 43: Juice bar services
   Trade Mark:                JUICE FARMACY

   (‘the Opponent’s Trade Mark’)

6. Mr Helm attests to the advertising of juice bar services under the Opponent’s Trade Mark within the United States of America and promotion of the Opponent’s Trade Mark on social media, along with the appearance of the Opponent’s Trade Mark twice within a book which Mr Helm states has sold 70,000 copies within Australia. The Applicant has submitted that this claim is unsupported and, subject to my comments below when discussing the ground under section 60, I weight the claim accordingly. I further note that there is no apparent claim as to the trade mark status of the words ‘Juice Farmacy’ within the extracts from the book which are appended to Mr Helm’s declaration and that the trade mark JUICE GENERATION appears more prominently in those extracts.

   The Applicant

   10.    It is simplest for the purposes of this decision to discuss the Applicant’s evidence quite briefly and then to elaborate as is necessary whilst discussing the grounds of opposition.

7. The Applicant states:

   Juice Farmacy Pty Ltd was registered with the Australian Securities and Investments Commission on 14 June 2016 (see Annexure 1 and Annexure 2) and it began trading as Juice Farmacy at Westfield North Lakes shopping centre on 17 November 2016 (see Annexure 3 and Annexure 4). Annexure 4 demonstrates that the trade mark JUICE FARMACY has been used for the sale of goods and services before the date of opposition.

8. The records that the Applicant refers to are:

   ·    Australian Securities & Investments Commission (‘ASIC’) Record of Registration for Business Name:

   Juice Farmacy – registered on 14 June 2016 by the Holder – Heena Gita Trikam.

   ·    ASIC Certificate of Registration of a Company:

   Juice Farmacy Pty Ltd Australian Company Number 613 694 152 commencing 15 July 2016

   Director and Company Secretary Heena Gita Mistry

   Shares owned by J & H Mistry Pty Ltd.

   ·    ASIC Certificate of Registration of a Company

   J & H Mistry Pty Ltd Australian Company Number 613 689 651 commencing 15 July 2016

   Director and Company Secretary Heena Gita Mistry

   Shares owned by Heena Gita Mistry

   ·    A Deed of Trust in which the Trustee is J & H Mistry Pty Ltd, the name of the Trust is J & H Mistry Family Trust, and the primary beneficiaries under the Trust are Jateen Mistry and Heena Gita Mistry.

9. Also included with the above documents is a lease agreement dated 7 October 2016 between Juice Farmacy Pty Ltd and the owners of Westfield North Lakes.

10. Use of the Trade Mark commenced on or around 22 November 2016 from an island kiosk at Westfield North Lakes in relation to the sale of fruit and vegetable juices.

    Onus and Relevant Date

    15.    The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

    [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

11. With the exception of the ground under section 62 of the Act, the relevant date at which the grounds under section 52 of the Act must be considered are the filing dates of the opposed applications (or, in relation to the ground under section 60, the ‘priority date’ which is here the same as the filing date of the Trade Mark).

    Section 58

    The Ground

    17.    The Opponent’s amended SGP asserts:

    The applicant is not the owner of the opposed trade mark. The owner of the JUICE FARMACY trade mark is the opponent.

    The opposed mark is identical to the opponent’s JUICE FARMACY trade mark.

    The opponent has promoted its JUICE FARMACY trade mark in Australia since at least 2011. The opponent has also extensively used its JUICE FARMACY trade mark in the United States since at least 2009.

    The opponent’s JUICE FARMACY trade mark is used in respect of the same or similar goods and closely related services as the goods and services covered by the opposed application.

    The opponent’s JUICE FARMACY trade mark has been registered in the US since 17 December 2013 (US Registration No. 4452333) for juice bar services.

    Further particulars will be provided in the opponent’s evidence in support.

    Alternatively, the applicant is not the owner of the opposed trade mark as he has never used the trade mark.

    The Act

    18. Section 58 of the Act provides:

    58Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:For applicant see section 6.

12. Ownership of a trade mark may arise in two ways: firstly, by use of a sign as a trade mark; or, secondly, by the filing of an application for registration as a trade mark.  In the case of a dispute as to the ownership of a trade mark, the first person to publically use the trade mark in the course of trade in Australia in relation to particular goods or services, or to apply to register it as a trade mark for those goods or services (whichever is the earlier) is the owner of the trade mark.  In order to displace a statutory claim to ownership, an opponent must show first use of a trade mark in Australia which is at least substantially identical[2] to the impugned trade mark in relation to goods or services which are, as a minimum, ‘the same kind of thing’.[3]

    [2] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 at [62].

    [3] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.

    Submissions

    20.    The Opponent submits:

    The Helms Declaration states in paragraph 11 that the Opponent has been using and promoting its JUICE FARMACY trade mark in countries, including in Australia since at least 2011 on social media and through the Juice Generation website.

    The Applicant’s trade mark is also for JUICE FARMACY. The trade marks under comparison are therefore identical.

    The Helms Declaration states in paragraphs 11 to 13 that the JUICE FARMACY trade mark has been used and promoted in Australia in relation to juice products and juice bar services.

    All of the applied for goods and services are of the same kind of goods/services as the Opponent’s goods/services.

    No evidence was filed by the Applicant to support that he has used, intended to use or authorised the use of the JUICE FARMACY trade mark:

    • The Applicant, having had an opportunity to respond, has failed to put forward any evidence to support his bona fide use or intention to use the opposed mark in Australia.

    • The Mistry Declaration was made on behalf of the company, Juice Farmacy Pty Ltd.

    • Annexure 3 of the Mistry Declaration contains a lease in the name of Juice Farmacy Pty Ltd, not the Applicant, to use the premises to provide the retail sale of “juice, smoothies, soups (in colder months), protein snacks and healthy drinks, Acai bowls, raw treats, raw vegan lunch options and gluten free bakery lines”.

    • Annexure 1 of the Mistry Declaration shows the business name, JUICE FARMACY, is held in the name of Heena Gita Trikam.

    • Annexure LX-1 of the Xie Declaration shows the Applicant is not a director, secretary or shareholder of Juice Farmacy Pty Ltd.

    • Annexure LX-2 of the Xie Declaration shows the Applicant is not a director, secretary or shareholder of J & H Mistry Pty Ltd, the sole-shareholder of Juice Farmacy Pty Ltd.

    • The Applicant was given an opportunity to file additional evidence of any use of the JUICE FARMACY trade mark by the Applicant in relation to the amended SOGAP. However, the Applicant did not file any evidence to support his use or intention to use the JUICE FARMACY trade mark.

    • Paragraph 5 of the Mistry Second Declaration and paragraph 5 of the Heena Declaration indicate that the Application was filed in the name of Jateen Mistry, the Applicant, for asset protection purposes, which supports a finding that the Applicant has not used the opposed mark, and is not the owner of the JUICE FARMACY mark.

    Discussion

    21.    The evidence suggests[4] that the Opponent has promoted its trade mark within the market in the United States of America; however, the Opponent cannot have promoted its goods or services to Australians as, at the priority date, it had had no product on the market within Australia (nor in the process of being delivered to Australia) to so promote.  In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[5] Rangiah J observed:

    [4] Much of the corroborative material attached to Mr Helm’s declaration is from dates after the priority date of the Trade Mark.

    [5] [2015] FCA 554; (2015) 112 IPR 494 at [47].

    The use must be at a time when there was actual trade, or an offer to trade, in the goods or services bearing the mark, or, at least, an existing intention to offer or supply the goods or services in Australia. In Lomas v Winton Shire Council [2002] FCAFC 413, the Full Court said at [39]:

    However, where there is no actual trade or offer to trade in goods bearing the relevant mark in Australia or any existing intention to offer or supply such goods in trade, but merely preliminary discussions and negotiations about whether the mark would be so used, there is no use so as to constitute ownership of the mark (see Moorgate Tobacco (No 2) at 434).

13. There has been no provision of juice bar services within the Australian marketplace by the Opponent under the Trade Mark and its claims to have used its trade mark in Australia in relation to such services are not well founded.  Consequently, the Opponent’s claims do not displace the Applicant’s claims to ownership of the Trade Mark.

14. The Opponent’s concerns as to whether the Applicant is the owner of the Trade Mark or if the owner is in fact Juice Farmacy Pty Ltd may be assuaged by observing that at the date of filing the Trade Mark by the Applicant, Juice Farmacy Pty Ltd did not exist.  The Applicant’s claim to the ownership of the Trade Mark (and intent to use the Trade Mark which is inherent in the filing of the Trade Mark) is not displaced by its possible use by a person other than the Applicant subsequent to the date of filing the application to register the Trade Mark.

15. The ground under section 58 of the Act has not been established.

    Section 59

    The Ground

    25.    This ground is particularised in the SGP in the following way:

    At the filing date of the opposed application, the [Applicant] had no intention to use the trade mark.

    The [Applicant’s] evidence shows he is not using and has not used the opposed trade mark.

    The Act

    26. Section 59 of the Act provides:

    59Applicant not intending to use trade mark

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)to use, or authorise the use of, the trade mark in Australia; or

    (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    Note:For applicant see section 6.

    Submissions

    27.    The Opponent submits:

    The intention to use a trade mark in Australia is a prerequisite to a valid application for registration.

    The evidence establishes a prima facie case of lack of intention to use the trade mark for the nominated goods and services.

    The prima facie case of lack of intention to use the opposed mark is based on the evidence and [submissions concerning ownership of the Trade Mark].

    In Enviro Harvesting Systems (Aust) Pty Ltd v Garasil Pty Ltd [2001] AIPC 91-737, (‘Garasil’) the applicant asserted during the proceedings that they did not intend to use the trade mark they had applied to register for any of the goods/services, and the opposition under s 59 was successful. Similarly in the present case, there is an admission in the Applicant’s evidence in paragraph 5 of the Mistry Declaration and paragraph 5 of the Heena Declaration that the Applicant did not intend to use the trade mark. The Applicant should therefore be refused pursuant to s 59 of the Trade Marks Act.

    Discussion

    28.    I first observe that the decision in Garasil was predicated upon the view that, with section 59 being drafted in the present tense, the intention was regarded as being a continuing intention and that the applicant in those proceedings had demonstrably changed its intention since the filing date of that trade mark. However, the relevant date for the consideration of intention is as at the filing date of the Trade Mark and not some subsequent date: Suyen Corporation v Americana International Limited.[6]  Any possible use of the Trade Mark by a person other than the Applicant after the filing date does not necessarily reflect on his intentions at the filing date.

    [6] [2010] FCA 638 per Dodds-Streeton J.

16. The passages in the Mr and Mrs Mistry’s evidence relied upon by the Opponent are these: Mr Mistry declared:

    Juice Farmacy Pty Ltd was registered with the Australian Securities and Investments Commission on 14 June 2016 (see Annexure 1 and Annexure 2) and it began trading as Juice Farmacy at Westfield North Lakes shopping centre on 17 November 2016 (see Annexure 3 and Annexure 4). Annexure 4 demonstrates that the trade mark JUICE FARMACY has been used for the sale of goods and services before the date of opposition.

    […] Annexure 4 illustrates that I have first use of the mark JUICE FARMACY in Australia and the oppositions application is for a mark that is the same as mine and pertains to “similar goods or closely related services”, and on this basis their application should be rejected.

17. And Mrs Mistry declared:

    Jateen Mistry is an authorised officer of the company, Juice Farmacy Pty Ltd, for the purpose of making declarations on behalf of the company in response to the opponent's opposition to our registration of the mark.

    […]

    To clarify, Jateen Mistry is my husband and we have arranged our business structure for the purpose of asset protection. Between Jateen, myself and our company, we have registered domain names, business names and social media pages using 'Juice Farmacy'. We have always intended for the business we operated through Juice Farmacy Pty Ltd to use the trade mark Juice Farmacy.

18. However, when it is considered that Juice Farmacy Pty Ltd did not exist at the filing date of the Trade Mark, it is (in my view of the evidence) just as likely that the Applicant either intended to use the Trade Mark himself, or assign the Trade Mark to Juice Farmacy Pty Ltd, or intended that Juice Farmacy would be an authorised user of the Trade Mark as is the alternative hypothesis that he had no intention at that date of using the Trade Mark.  When Mr and Mrs Mistry stated that it was Mr Mistry’s intention for Juice Farmacy Pty Ltd to use the Trade Mark they were not, necessarily, negating the Applicant’s intentions at the filing date of the Trade Mark (particularly when it is borne in mind that Juice Farmacy Pty Ltd could – as it did not exist at the filing date – be subsequently either an authorised user of the Trade Mark or the assignee of the Trade Mark).

19. The Opponent has not established the ground under section 59 of the Act.

    Section 62(b)

    The Ground

    33.    The SGP specifies:

    The Application was accepted on the basis of representations that were false in material particulars.

    In O’Brien Glass Industries Ltd v Graeme Leslie Cleary (2004) 60 IPR 595, (‘O’Brien’) the Registrar’s delegate held that the applicant was not the owner of the trade mark (under s 58), but also that the application had been accepted on the basis of false representations. The applicant in the O’Brien case was shown to have been fully aware of the opponent’s mark when he lodged his application, and s 62(b) was established.

    Similarly in the current opposition, the Applicant either should have known the Opponent was the owner of the JUICE FARMACY trade mark, or alternatively, the Applicant clearly knew he was not the owner of the trade mark. We repeat and rely on the matters raised [as regards ownership in these submissions].

    The Act

    34. Section 62 of the Act relevantly provides:

    62Application etc. defective etc.

    The registration of a trade mark may be opposed on any of the following grounds:

    […]

    (b)that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

    Note:For file see section 6.

    Submissions

    35.    The Opponent submits:

    In O’Brien Glass Industries Ltd v Graeme Leslie Cleary (2004) 60 IPR 595, the Registrar’s delegate held that the applicant was not the owner of the trade mark (under s 58), but also that the application had been accepted on the basis of false representations. The applicant in the O’Brien case was shown to have been fully aware of the opponent’s mark when he lodged his application, and s 62(b) was established.

    Similarly in the current opposition, the Applicant either should have known the Opponent was the owner of the JUICE FARMACY trade mark, or alternatively, the Applicant clearly knew he was not the owner of the trade mark. We repeat and rely on the matters raised in paragraph 27 of these submissions.

    It follows that the opposed mark should also be refused pursuant to s 62(b) of the Trade Marks Act.

    Discussion

    36.    In O’Brien there had been a business relationship between the applicant and opponent such that there was a strong inference of the applicant’s knowledge that the trade mark in question belonged to the opponent.  Here there has been no business relationship between the Applicant and the Opponent; the Applicant has stated that the genesis of the Trade Mark stems from the qualifications as pharmacists that both he and Mrs Mistry possess.

1. In any event, as observed by Finkelstein J in Malibu Boats West Inc v Catanese:[7]

   [7] [2000] FCA 1141; (2000) 180 ALR 119; (2000) 51 IPR 134; [2000] AIPC 37-911 at [28].

   While a local trader can deliberately adopt a foreign trade mark not previously used in this country, such action described by Williams J in Re Registered Trade Mark "Yanx" (at 202) as "sharp business practice", the court is inclined to regard this practice with suspicion and to "frown on these borrowings from abroad" (Aston v Harlee Manufacturing Co at 400 per Fullagar J). This is especially so where one of the local trader's motives in adopting the foreign mark is to prevent the foreign owner's use in this country. The corollary is that courts will regard a small amount of use, or slight use, of a mark in Australia by an overseas proprietor as sufficient to establish proprietorship of the trade mark in Australia: Aston v Harlee Manufacturing Co at 400; Moorgate Tobacco at 432; Riv-Oland Marble Co v Settef SpA at 353-354. As Williams J said in Seven-Up Co at 211:

   "The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia."

2. If the Trade Mark is a ‘foreign borrowing’, such borrowings are not contrary to law (absent use or reputation of the foreign trade mark in Australia).  Additionally, here it has not been shown that the Applicant was aware of the Opponent’s trade mark, and, further, it has not been established by the Opponent that the Opponent’s Trade Mark had either use or reputation in Australia.

3. Have regard to the ground as stated in the SGP I also note that the Opponent has not established its ground under section 58 of the Act.

4. The Opponent has not established its ground under paragraph 62(b) of the Act.

   Section 60

   The Ground

   41.    The Opponent’s ground specified in the SGP is:

   Before the priority date of the opposed mark, there existed a reputation and recognition by consumers in the opponent’s JUICE FARMACY trade mark such that use of the opposed mark in respect of the same or similar goods, or the same or related services would likely deceive or cause confusion.

   The JUICE FAMARCY trade mark has been used in the United States since at least 2009 and promoted in Australia since at least 2011.

   Further particulars will be provided in the opponent’s evidence in support.

   The Act

   42. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

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

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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:For priority date see section 12.

   Submissions

   43.    The Opponent submits:

   The Opponent has a large following on its social media pages, particularly given the Opponent’s goods and services are often targeted at health conscious consumers. For example, as of June 2017, the Opponent’s Facebook page had 52,301 likes and its Instagram page had 54.2k followers: see Annexure EH-3 of the Helms Declaration.

   Annexure EH-5 of the Helms Declaration includes screenshots showing use and promotion of the JUICE FARMACY trade mark by the Opponent, including a post on Facebook dated 9 January 2013 showing use of JUICE FARMACY.

   The JUICE FARMACY trade mark has also been used on the book titled ‘The Juice Generation: 100 Recipes for Fresh Juices and Superfood Smoothies’. [Mr Helms] attests that around 70,000 copies of the book has been sold in Australia as at the date of his declaration. The book is available through various bookstores, including Angus & Robertson Bookworld, Dymocks, Booktopia, Barnes & Nobel, Fishpond, and Amazon. The publication date of the book as can be seen in Exhibit EH-6 of the Helms Declaration is January 2014.

   Paragraph 13 and Annexure EH-6 of the Helms Declaration shows many world-famous celebrities have contributed to and promoted the Opponent’s book ‘The Juice Generation: 100 Recipes for Fresh Juices and Superfood Smoothies’, including Blake Lively, Jason Bateman, Michelle Williams, Kristen Bell, Edward Norton, Hillary Swank, Michael C. Hall, Martha Stewart, Laura Linney, Debra Messing and Australian actress Naomi Watts.

   Annexure EH-7 of the Helms Declaration shows that in 2015, there were around 12.3 million international travellers who travelled to New York City, and out of the 12.3 million travellers, 665,000 tourists/travellers were from Australia.

   In paragraph 15 of the Helms Declaration, he attests that he has noticed a significant portion of the Opponent’s customers are from Australia.

   Given the combination of:

   • promotion of the JUICE FARMACY trade mark on social media and the Opponent’s website;

   • the Opponent’s book sold in Australia;

   • the endorsement of the Opponent and its products, including its JUICE FARMACY branded products, by world famous celebrities;

   • the significant number of Australians who visit New York City each year;

   • the increasing connectedness between countries through e.g. technology and the Internet; and

   • Helms’ observation that his juice bars are visited by many customers from Australia,

   the Opponent’s JUICE FARMACY trade mark has become known to consumers in Australia, particularly health conscious consumers.

   Due to the reputation in the Opponent’s JUICE FARMACY trade mark, use of the opposed mark would be likely to deceive or cause confusion.

   Discussion

   44.    An initial consideration is the meaning of the word ‘reputation’; in McCormick & Co Inc v McCormick (‘McCormick’)[8] Kenny J said:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation  ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

   [8] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

5. Kenny J went on in McCormick[9] to state concerning the assessment of reputation that:

   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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [9] Op cit at [86].

6. Further, the assessment of the reputation of a trade mark is to take place in the context of the marketplace for the goods and services. Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[10] said (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955) that the reputation required to be demonstrated was to be:

   ... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   [10] [2000] FCA 1587; (2000) 50 IPR 1.

7. I observe that the screen-shots of the website referred to by the Opponent are from a date well after the filing date of the Trade Mark (and thus say nothing of the reputation of the Opponent’s trade mark at the filing date) and additionally:

   1.     The world famous celebrities mentioned in Mr Helm’s declaration appear to endorse the trade mark JUICE GENERATION, rather than the trade mark JUICE FARMACY;

   2.     The promotion of the Opponent’s services on social media appears to be directed at the marketplace in the United States and is under the trade mark JUICE GENERATION;

   3.     It is uncertain how many Australian customers the Opponent’s juice bars in New York would have had before the priority date and those juice bars apparently operate under the trade mark JUICE GENERATION;

   4.     The words ‘Juice Farmacy’ appear twice within the extracts of the book Juice Generation in evidence with no claim as to the trade mark status of those words. Further, the claims as to the quantum of sales of the book in Australia are not well supported: I note that a screen-shot at exhibit EH-2 claims an apparently world-wide total of 75,000 copies sold as at 31 May 2017 – it would be surprising if 70,000 of these sales of the book had been, as the Opponent claims, in Australia.

8. I would conclude that, on the above basis, the Opponent has not established that its trade mark had any reputation in Australia at the priority date.

9. The Opponent has not established its ground under section 60 of the Act.

   Paragraph 42(b)

   Ground

10. In its SGP the Opponent asserts:

    The opponent refers to the particulars in relation to section 60 ground of opposition.

    Before the priority date of the opposed mark, there existed a reputation and recognition by consumers in the opponent’s JUICE FARMACY trade mark such that use of the identical opposed mark in respect of the same or similar goods/services would likely mislead or deceive.

    The applicant’s use of the identical trade mark would be likely to mislead the public into believing that the products and services offered by the applicant originated with the opponent or are licensed by the opponent, which is not the case. Such conduct would be contrary to section 18 of the Australian Consumer Law – Schedule 2 of the Competition and Consumer Act 2010 (Cth) (“ACL”).

    Use of the opposed mark in relation to the same or similar goods/services would also:

    (a) falsely or misleadingly represent that the applicant’s goods have the particular qualities of the opponent’s goods in contravention of s 29(1)(a) of the ACL;

    (b) falsely or misleadingly represent that the applicant’s services have the particularly qualities of the opponent’s services in contravention of s 29(1)(b) of the ACL;

    (c) falsely or misleadingly represent that the applicant’s goods or services have the sponsorship or approval of the opponent in contravention of s 29(1)(g) of the ACL; and/or

    (d) falsely or misleadingly represent that the applicant has some sponsorship, approval or affiliation with the opponent in contravention of s 29(1)(h) of the ACL.

    For the reasons particularised above, use of the opposed mark in respect of the same or similar goods/services would be likely to cause harm and damage to the opponent and/or the opponent’s business, goodwill and reputation, constituting unlawful passing off at common law.

    Further particulars will be provided in the opponent’s evidence in support.

    The Act

11. Paragraph 42(b) of Act relevantly provides:

    42Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    ([…]

    (b)its use would be contrary to law.

    Submissions

12. The Opponent submits:

    In view of the evidence, we submit that the use of [Trade Mark] would amount to conduct that:

    a) is misleading or deceptive or is likely to mislead or deceive in contravention of s 18 of the Australian Consumer Law (Sch 2 of the Competition and Consumer Act 2010 (Cth) (“ACL”);

    b) falsely or misleadingly represents that the Applicant’s products have the particular qualities of the Opponent’s products in contravention of s 29(1)(a) of the ACL;

    c) falsely or misleadingly represents that the Applicant’s services have the particular qualities of the Opponent’s services in contravention of s 29(1)(b) of the ACL;

    d) falsely or misleadingly represents that the Applicant’s goods or services have the sponsorship, approval or affiliation with the Opponent in contravention of s 29(1)(g) of the ACL;

    e) falsely or misleadingly represents that the Applicant has the sponsorship, approval or affiliation with Opponent, such as being a franchisee of the Opponent, in contravention of s 29(1)(h) of the ACL;

    f)    constitutes passing off at common law.

    For the reasons set out in relation to the s 60 ground, the Opponent submits that the use of the [Trade Mark] would be likely to mislead or deceive consumers in Australia to believe that there is some association with the Opponent or its JUICE FARMACY products, or that use of the [Trade Mark] would otherwise falsely or misleadingly represent some association with the Opponent or its products. Such conduct contravenes ss 18 and 29 of the ACL, and amounts to passing off.

    Discussion

13. As observed by the Registrar’s delegate in Monster Energy Co v USA Nutraceuticals Group Inc:[11]

    In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the [ACL] is a more stringent test than that for deception or confusion under s 60,[12] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

    Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[13] Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation[14] also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.

    [11] [2017] ATMO 22.

    [12] See, eg: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, at p 198 (Gibbs CJ).

    [13] [2003] FCA 104, at [107].

    [14] [1989] FCA 506, at [40].

14. Such is the situation here: the Opponent has not established the ground under subparagraph 42(b) of the Act.

    Section 62A

    Ground

15. In its SGP the Opponent asserts:

    The opposed application was filed by the applicant notwithstanding that the applicant knew, or ought reasonably to have known, that the opponent’s JUICE FARMACY trade mark has been used in relation to the same or similar goods and services. In light of this knowledge, the applicant has filed the opposed application in bad faith.

    The applicant is [sic] clearly aware of the reputation of the opponent’s JUICE FARMACY trade mark and has been in contact with the opponent in respect of the opponent’s JUICE FARMACY trade mark. In light of this knowledge, the applicant has filed the opposed application in bad faith.

    The Act

16. Section 62A of the Act provides:

    62AApplication made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

    Submissions

17. The Opponent submits:

    The Application was made by Jateen Mistry in bad faith as he knew that he was not the owner of the opposed mark at the time of filing the Application.

    We repeat and rely on the matters raised in paragraph 27 of these submissions.

    Further and in the alternative, the Applicant filed the Application in bad faith as the Applicant would have known about the Opponent and its JUICE FARMACY trade mark at the time of filing the Application.

    Discussion

18. The matters referred to at paragraph 27 of the Opponent’s submissions go to issues not canvassed against this ground in the SGP and have, in any event, been discussed under the hearing ‘Section 58’, above.  I do not need to further consider them.

19. There has been no evidence filed by the Opponent which supports its contention in the SGP that ‘The applicant is [sic] clearly aware of the reputation of the opponent’s JUICE FARMACY trade mark and has been in contact with the opponent in respect of the opponent’s JUICE FARMACY trade mark’.

20. The Opponent has not established its ground under section 62A of the Act.

    Decision

21. Section 55 of the Act relevantly provides:

    55Decision

    (1)Unless subsection (3) applies to the proceedings, 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.

    Note:For limitations see section 6.

22. The Opponent has not established any ground on which the application was opposed.

23. The trade mark application may then 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 and that the disposition of the application should be in accordance with the Court’s order or direction.

    Iain Campbell Thompson
    Hearing Officer
    Trade Marks Hearings
    27 June 2018