Kellogg Company v Exxon Company

[2001] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by KELLOGG COMPANY to registration of trade mark application 724327(42) - TIGER MART- filed in the name of EXXON CORPORATION.

Background

Exxon Corporation ("E") filed trade mark application 724327 on 18 December. Registration is sought for two trade marks, to be registered as a series under s 51 of the Trade Marks Act 1995 ("the act").  The two trade marks are as follows:

 

E seeks registration for services in class 42 of the International (Nice) Classification of Goods and Services, being "Convenience store services offered at retail gasoline stations".  I should note that these services are now classified in class 35 but this is a recent variation of the index and does not affect earlier filings.

Kellogg Company ("K") opposes registration of the application.  K is the registered owner of a cartoon tiger device, familiar to most people as "Tony the Tiger", used in association with a breakfast cereal, FROSTIES.

The opposition has followed the scheme set out in Part 5 of the Trade Mark Regulations 1995 and I am now to decide it in the light of the evidence on which the parties rely. 

Evidence

K did not file any evidence in support of its opposition. E filed evidence in answer to address the matters set out in the notice of opposition filed by K.  K thereafter filed evidence in reply.

The evidence consists of:

Evidence in answer

Declaration by	Dated	Annexures
William Cohrs	28.10.98	WRC-1 to 9
Joseph Calderone	11.11.98	A

Evidence in reply

Declaration by	Dated	Annexures
David Herdman	18.1.00	DH-1 to 9
Kenneth Taylor	18.1.00	A to F
Elisabeth Coffey	7.2.00	EJC 1 & 2
Elisabeth Coffey ("Coffey 2")	13.4.00	EJC 1 to 4
David Herdman ("Herdman 2")	10.7.00	DAH 1 to 5

Factual Background

The international dealings between the parties can be seen from the Cohrs declaration.  In general, I think it is fair to say that E has had a fairly successful advertising campaign based on a tiger, either a real tiger or a cartoon device, in relation to what I will call petroleum/car-related products.  The theme used for this campaign was originally "put a tiger in your tank".  Mr Cohrs seeks to extrapolate this pattern of successful and continuous use to Australia.  To what extent this pattern applies is somewhat difficult to establish.  However, I think there is sufficient in clause 5 of the Cohrs declaration and exhibit WRC-3 to say that the overseas pattern did, some time ago, apply here.  I accept that the original "put a tiger in your tank" campaign, and the cartoon tiger, were used to a fairly significant degree in Australia during the late 1960s and early 1970s

It is clear from the Cohrs declaration that there has, internationally, been a pattern of dispute between E and K.  In the USA, K filed a complaint about E's actions under a trade mark apparently much like the tiger device that is now part of the presently-disputed trade mark. 

Under the heading "Factual Background", I think it is worth commenting that very little of K's material deals with matters in this jurisdiction.  The majority of the Cohrs declaration is thus not helpful, except as background.  In volume terms, most of it is related to court proceedings in the USA about an action instigated by K.  The largest single part is a deposition of Mr Herdman, a K employee, in those proceedings.  A deposition sets out facts in response to questions from the other party.  It is not, prima facie, a vehicle for one party to bring its own case into evidence, so much as a result of the other sides' seeking supporting facts.  Therefore, I should take very little regard of the fact that, for example, K did not, at the time of the deposition, have documents other than some unspecified "confusion studies" that substantiated its claim of unjust enrichment.  The absence of such documents proves nothing about the validity of the case being argued by K at the time.

The court decision, at the end of that process, was not initially favourable to K, though Mr Cohrs notes that an appeal has been filed and is now under way.  From the Coffey declaration, this appeal was successful.  The suit filed by K and dismissed by summary judgement on grounds of, essentially, acquiescence, has been reinstated for further consideration by a district court in the U.S.

There has also been conflict in Canada.  Mr Calderone is a Canadian-based lawyer for E and his declaration largely relates to the situation in that country.  The exhibit to his declaration is an affidavit he made when K opposed registration of a TIGER EXPRESS trade mark in that country.

For K, Mr Herdman, its Trade Mark Counsel, makes several points.  He states that Mr Cohrs should not have introduced the Herdman deposition into evidence as it was a confidential part of court proceedings in the USA.  Even so, the material is in evidence.  From it, and other evidence, it is clear that K has continuously used a cartoon tiger device as a trade mark in relation to its breakfast cereal sold under the trade mark FROSTIES.  K takes the view that E has not used a cartoon tiger between 1984 and 1991.  Although E has in the meantime used a real tiger as part of various advertisements, it would seem that the decision to discontinue use of the cartoon tiger was deliberate.  As part of Herdman 2 there is annexure DAH-3, an internal E document, to that effect. 

As with the evidence of E, K's evidence in reply is lacking all specifics about sales and advertising expenditure in Australia.  None the less, it is clear that, worldwide, the cartoon tiger device is used in conjunction with the sale of a very significant volume of breakfast cereal.  I find it somewhat unsatisfactory that both sides have left me to infer some of the critical elements. 

K is, it appears, resigned to the fact that E's cartoon tiger, when used in relation to car and petrol-related products, coexisted in earlier times with that of K for breakfast cereals, though K does not endorse that situation as being either appropriate or desirable.  However, K appears to be determined to strenuously resist any revival and expansion of the E cartoon tiger in relation to convenience store services or other services related to food.  This has happened in other jurisdictions such as Canada, France and Argentina, and K raised objection in such cases.

Opposition Hearing

At the conclusion of the evidence stages, both sides requested that the matter be heard.  At that hearing, E was represented by David Catterns of counsel, instructed by Richard Baddeley and Paul Fong of the patent and trade mark attorney firm of Watermark in Perth.  K was represented by Richard Cobden, also of counsel, instructed by Neils Jensen of the solicitor firm of Baker and McKenzie.  I conducted that hearing and am to decide the opposition under delegation from the Registrar of Trade Marks.

Issues and Decision

The Notice of Opposition filed by K catalogues a very wide range of grounds of opposition.  While reserving its right to rely on any of them in the event of an appeal from this decision, K has refined its grounds for the current purposes to just two.

1.  Deceptively similar trade mark - section 44

Section 44(2) is relevant to this, and provides:

Identical etc. trade marks

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) 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 services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.  ("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.)

Note 2:  For similar services see subsection 14(2).
Note 3:  For priority date see section 12. (In this case, the relevant filing dates are the priority dates.  The K registrations referred to below all are clearly earlier than E's application.)

Turning first to the question of deceptive similarity or substantial identity, I note that K relies on the following trade mark.  This trade mark is registered twice in class 30 as follows:

126136, with a priority date of 29 December 1955: Ready-to-eat cereal foods made from corn, rice, wheat or bran,

237644, with a priority date of 3 April 1970:  All goods in class 30

There are also other registrations with similar priority dates, in classes 25, 28 and 32.  These are for, in simple terms, clothing items, games and playthings and beverages other than wine and spirits.

The disputed E trade marks are, it will be recalled, as follows:

 

For E, Mr Catterns argued that there is a significant level of detail difference, both as to the positions of the tigers in question and the proportions of them that are visible.  Also, E's tiger did not wear a "distinctive" scarf.  K could not, he noted, claim a monopoly in all renditions of a tiger, as the trade marks in suit had strong visual aspects which overrode the verbalisation "tiger".

However, while I accept that K's registrations do not give it a monopoly on all tiger devices, I do not think the argument can be stretched to the limit Mr Catterns would take it.  The issues to be considered when assessing the likelihood of deception and confusion, in terms of section 10, above, have been given recent judicial consideration by French J in Registrar of Trade Marks v Woolworths, 45 IPR 411:

[050] In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

I appreciate Mr Catterns' argument that the prominent words TIGER MART in E's trade mark will direct attention away from breakfast cereals or other goods.  This is certainly one of the "surrounding circumstances"[1] that, when comparing marks, must be considered.  None the less, while the issue of goods versus services may sensitise potential customers, giving them pause to note what might otherwise be negligible differences, that principle can run only so far.  Mr Cobden characterised both tigers as 'hail fellow - well met' characters.  That in my view puts the matter on the right basis: the cartoon tigers are different only in details that are easily overlooked or, if noted, taken to be deliberate and trifling variations to what is "really" the same trade mark.  The trade marks at issue, while not substantially identical, are deceptively similar.

The second question then is that of "closely related" goods and services.  That critical term is not defined in the legislation, unlike "similar" goods or "similar" services.  As a threshold question, Mr Catterns argued, correctly, I think, that in deciding this I am required to take the opponent's registrations one at a time.  I think the correct approach is to test each item for which K has a relevant registration, one item at a time, for conflict with E's service.  It could lead to remarkable results if, following the contrary line, I took K's goods en globo and compared that category, as a whole, with E's service.  Such an approach wrongly suggests that the service becomes closely related to goods, not because of any basic relationship, but because K has amassed registrations in a range of diverse classes.  "Closely related" services is a term of art.  It has a fixed meaning, therefore.  It cannot be that goods and services are closely related at the hands of opponent X, who registers broadly in the goods classes, but not closely related if the opponent is Y, who has a narrower holding of such registrations.

Mr Cobden invited me to accept that services and goods are closely related if consumers, seeing the goods and services under deceptively similar trade marks, would expect a common trade source having regard to the nature, uses and trade channels of the goods and services.  I accept this as a good succinct summary of the approach that I will adopt, below. 

In doing so, I believe that I should not, in terms of s 55, deny registration unless a ground of opposition is established.  Therefore, I should proceed on the assumption that the goods and services are not closely related unless the contrary is established to the necessary degree.

In Registrar Of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 423, French J observed:

[1]  Application by Pianotist Co Ltd 23 RPC 774 at 777, 1A IPR 379 at 380.

[037] The concept of “closely related goods” in respect of a service mark was introduced into the 1955 Act by the 1978 amendment. It was not defined in the 1955 Act nor is it defined in the 1995 Act. It is also used in s 44 (1) to prevent registration of a trade mark in respect of goods which is substantially identical with or deceptively similar to a registered or priority trade mark in respect of “similar goods or closely related services”. 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”. As its use in the Mathys Committee report indicated, however, it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services: Cmnd 5601 para 70.

[038] 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 trade marks which attach to them. The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. 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. Similar examples were suggested in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co (1983) 1 IPR 265; 48 ALR 511 by Lockhart J who saw service marks as potentially giving rise to problems of confusion with goods marks and other service marks ‘‘… of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone”. His Honour observed (at IPR 276; ALR 522) that:

Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.

I heed the instruction of French J that the relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods.  Services with a close practical connection to the goods are likely to be treated as closely related to them, and it is likely to be the case that deception or confusion would arise if two different traders used deceptively similar trade marks for such services.  The presence or absence of confusion, referred to by Lockhart J, is obviously one yardstick by which public expectation is measured.  However, I do not think that it is, by itself, a sufficient inquiry in respect of a statutory provision posed in terms going directly to the closeness or otherwise of the relationship between the goods and the service.  I think that, in many instances, the question of deception or confusion can be influenced by reputation, which very clearly is dealt with elsewhere (s 60) in a provision that makes no stipulation about the inter-relation of the goods and services.  Equally, a finding under s 60 can be influenced by the fact that the competing marks are idiosyncratic, or strongly unusual, which can never bear at all on the relationship (close or otherwise) between goods and services.  Indeed, the novelty of a trade mark may serve to counter the extent to which goods and services are but distantly related. 

In Caterpillar, supra, to which French J referred, the decision did not turn on a finding of "closely related" goods and services.  Rather, that case was an infringement one, based on "same services", at a time just subsequent to the introduction of service marks.  Lockhart J, one of three judges hearing an appeal from the Supreme Court of South Australia, was commenting on the broad policy parameters of the newly amended 1955 Act.  That Act already included filters that did (s 33) and did not (s 28) require some sort of direct finding about the degree of connection between the competing lines of business.  Therefore, I do not think that the reference by Lockhart J to one of the salient points of all trade marks law is either surprising or indicative of the appropriate weighting to be given to that issue in this context.

In the present instance, there is no evidence that the operators of either service stations or of the convenience stores operated on such premises typically have any connection with the trade in any goods covered by K's registrations.

French J went on to refer to Rowntree plc v Rollbits Pty Ltd[2].  In that case, registration was sought for a trade mark in respect of foods that included biscuits, cakes and pastry goods.  The same applicant also sought registration for "services rendered or associated with restaurants, takeaway food stores and other retail food outlets which sell and promote prepared food and drinks for consumption; the preparation of carry out food".  Both applications were accepted and unsuccessfully opposed.  French J said, of the appeal decision:

[2] (1988) 10 IPR 539

[039] In Rowntree plc v Rollbits Pty Ltd ... Needham J found the applicant’s mark in respect of goods to be deceptively similar to the opponent’s registered mark as covering goods “of the same description” under s 33 (1). His Honour also concluded that the goods covered by the opponent’s registered mark were “closely related” to the services in respect of which registration of the applicant’s service mark was sought.  While accepting that it was not a logical necessity that the relevant question under s 33 (2) of the 1955 Act must be answered in the same way as the question under s 33 (1), his Honour said at 546:

… I think, in the present case, that the conclusion that the goods are goods of the same description requires a conclusion that the services contemplated by the defendant, which would feature the goods already held to be goods of the same description as those of the plaintiff, are services closely related to the plaintiff’s goods.

There is no disputing the fact that convenience stores will trade in precisely the same goods covered by K's registrations, for example class 30 goods.  It is common knowledge, on which I am entitled to rely, that such stores sell a range of foods and other consumer products.  That is their entire purpose.  The Taylor declaration shows that, at sites where the service stations sell BP, MOBIL and other brands of petrol, such convenience stores sell a wide range of breakfast cereals.  These breakfast cereals, bearing the trade marks KELLOGGS, SANITARIUM and UNCLE TOBYS, are from three apparently different manufacturers.  Goods bearing those trade marks are, I think it is common knowledge, available in stores and supermarkets generally, and the trade marks are not, therefore, generic.  Conversely, there is no evidence that any such convenience store sells generic or "own label" foodstuffs.

Can it be said that, simply because a retailer sells particular goods, the retail service itself is closely related to the goods?  There is no disputing, obviously, that the retailer is trading in goods; that is not in question.  Equally, it must be accepted that E is now proposing to trade, not in goods per se, but in a particular retail service.  That retail service is in some ways akin to the corner store, providing the most elementary retail facilities to motorists who pass through the site in the course of filling their cars with, and paying for, petrol.  In the present case, there is none of the close inter-relationship between, say, the restauranteur and his product.  One of the key factors relied on by Needham J in Rowntree, supra, is thus absent.  It is therefore necessary to look closely at the relationship, if any, between such merchant services and the relevant goods.

I turn therefore to what Mr Cobden called a catalogue approach, that which was applied by Hearing Officer Thompson in Caltex Corporation v Y.E. Choices Merchandising SDN BHD [2000] ATMO 97. In that case, the Hearing Officer concluded, with reluctance and for reasons to which I will come below, that in the absence of any argument or evidence, the "retail of clothing" and "clothing" were closely related. In reaching that conclusion, he referred to one of his own earlier decisions, Re: Aussat (1993) 27 IPR 309, as follows:

I believe that the tests must lie in the adoption of criteria similar to those oft quoted from Re John Crowther & Sons (Milnsbridge) Ltd’s Appn (1948) 65 RPC 369 at 372 adopted by the High Court in Reckitt and Colman (Aust) Ltd v Boden (1945) 70 CLR 84 at 94. I believe that these criteria should include:

• are the services performed directly upon or by means of the goods? if so,

• are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry?

In consideration of the latter point some guide-lines might be suggested and I stress that these are not in any particular order of priority:

• are the goods and services of matching technical complexity?

• is the technical training of the people who make the goods or provide the services the same?

• do the people who make the goods or provide the services belong to the same unions or associations?

• are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services? (For example, in “vehicle hire services” and the goods “cars”, there are the ancillary personnel common to both, such as car detailers, mechanics, salespersons, credit checkers, and so on which give both the same flavour).

• do the goods usually have this service as a related service agreement or package? For instance, it would be most unusual for a person buying a very expensive piece of machinery not to enter some sort of service agreement. Conversely, are the goods usually offered as part of a service agreement?

• is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source? (Such as “transportation services” and “vehicles” ; or, “vehicle hire services” and “vehicles” ; or “restaurant and take-away food services” and “food”).

• does the service consist of altering, matching and/or installing the goods to a customer’s or client’s requirements? (Such as “curtains and furnishings” and “the sewing of furnishings”). It must be observed that the person doing the service of sewing the furnishings is also exercising the same or very similar skills as were involved in mailing the curtains. Also, the installers of domestic and industrial equipment are often employed either directly or indirectly by the manufacturer.

• are the goods and services commonly offered by the one company or organisation? (For example, “retail sales” and the equivalent “goods”; or, “telephone communication services” and “telephones”).

• are the goods a necessary adjunct to a particular service or the only tangible result of it? (For example, “advertising services” and “directories”, or “publications”; or, “travel agency services” and “publications” ; or “telephone services” and “directories”).

This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be. However, taken as a general guide, these criteria build up a picture of the total of the considerations involved in assessing what are closely related goods and services. In complex cases such as oppositions, the issue may only become clear on the provision of evidence that addresses factors such as those above.

He then commented as follows, with my own italicised material added in parentheses:

Mr Munday (for the opponent, Caltex) drew my attention to the fact that many service station shops are now, in effect, mini markets, which sell a large range of household products and other goods as well as the more traditional lines of automotive products.  This submission is reflected in the evidence in support of the opposition that refers to 110 convenience stores attached to the opponent's service stations around the time of the priority date of this application as well as "1100 service stores".  I have already referred to the availability of certain items of clothing within such outlets: these items may carry the trade marks associated with the service stations.  I think that, on this basis, I accept Mr Munday's argument that the public would see the goods as being connected with the retail services carried on at the service station; or, that the owner of the service station had the goods made and the trade mark affixed under his aegis.  It may be that this conclusion might not be reached if the applicant had put in evidence and argument but this has not happened. 

Having regard to the way that the opponent has used its own trade marks, I am inclined to accept Mr Munday's submissions that the trade marks are deceptively similar; and, that the similarity between the trade marks is such that, in the context of the evidence before me, the concurrent use of the trade marks would lead to deception or confusion.  In the face of a more determined applicant and countervailing evidence and argument, these arguments may not have succeeded, but I am not to act as advocate for the applicant: Camelot Design[3], above. 

[3] Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd (1987) 9 IPR 596, at page 598

In summary, I am satisfied that the opponent has established prima facie that the trade marks are deceptively similar and that the goods and services are closely related....

In the case with which Mr Thompson was dealing, he was able to conclude, in the absence of argument or evidence to the contrary, that there would be some deception if a service station sold clothing apparently bearing the mark of the service station.  In the lack of argument, this authorised a qualified finding that the goods and service were closely related.  However, here I believe that Camelot Design manifestly does not apply and that I should look more fully at the catalogue of factors listed by Mr Thompson, particularly the first two, which are broad headings.  I will repeat them:

• are the services performed directly upon or by means of the goods? if so,

• are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry?

I will not repeat the list of supplemental factors that Mr Thompson set out.  Most of them are applicable to specialised goods or services such as those that applied in Aussat, supra.  This case, on the other hand, is one of simplicity: basic products vs the operation of a store that sells them.

I have already said that I do not think that the fact that the retailing service must, of necessity, be performed "by means of" the goods is decisive.  The service performed upon the goods is of the most superficial kind.  Indeed, were it not for the fact that the International (Nice) Classification confirms the existence of retailing as a service in its own right, I would be tempted to ask if there is any service being performed at all.

As things are, I put great weight, in approaching the second question posed by Mr Thompson, on the positive requirement that there be some expectation, on the part of the public, that the two are part of the one trade or industry.  There is certainly no evidence here that the public would see the running of convenience stores, particularly those in association with gasoline service stations, as part of the business of an ordinary trader in food products.  The same applies to such convenience stores vis a vis clothing, and again with respect to the toys and games in class 28.  True, perhaps, some such "expansion" might not surprise consumers, but no reason has been put forward for why it would be thought of, unprompted, or seen as a natural or convenient arrangement.  Therefore, I do not think that there is any reason for ordinary people to see such a development as either likely or predictable with any degree of confidence.  Much will depend on the specifics of each case: who is the opponent, what is its mark, how has it used that mark and others?  Thus it is possible for an opposition based on clothing versus clothing retail to succeed in Caltex Corporation v Y.E. Choices Merchandising, supra, yet essentially the same controversy here has not.  The fact that there is so much disparity between one retailer and another suggests strongly to me that the question of goods versus the retailing of goods should not generally be settled under the terms of s 44.  Subject to the facts that are generally applicable to the particular trade, it should usually be left to s 60 as part of the opposition process.

In short, K has failed to convince me that any of its goods are closely related to the service of "Convenience store services offered at retail gasoline stations".  I therefore find that no ground of opposition has been established under s 44.

2.  Likely to deceive or cause confusion - s60

This provision reads:

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

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

I have already found that, for the purposes of s 44, the trade mark registered by K resembles that which E seeks to register to the necessary extent and is deceptively similar to it.  The trade mark relied on by K for s 60 purposes is essentially the trade mark it has registered.  I therefore accept that the first issue under s 60 is resolved. 

As to reputation at the priority date, the evidence before me shows that the mark has been used in the USA and presumably other countries over a considerable time.  Sales are, in dollar amounts, quite large.  In the USA, there appears to be a significant reputation in K's cartoon tiger in respect of breakfast cereal.  I note, too, the use has apparently involved minor variations over time to keep the image from becoming dated. 

I believe that, if this matter goes on appeal, the parties are likely to re-frame their evidence and develop much more of a focus on the Australian situation.  As matters now stand, the K evidence is very marginal.  However, both sides seem to have accepted that they can be judged, for my purposes, by what has occurred overseas.  With the express concurrence of the counsel for E, I will therefore accept that the evidence of K is sufficient, barely, to show a not-insignificant reputation in Australia in relation to breakfast cereals.

However, all of the material in evidence suggests that K is seen as being a cereal manufacturer, and that the cartoon tiger is seen as associated with only one of a stable of KELLOGGS cereal products. Moreover, if the KELLOGGS FROSTIES product bearing the cartoon tiger device is widely available, it appears from the K evidence that several other of its products are much more widely available at convenience stores.  From the Taylor declaration, products such as KELLOGGS RICE BUBBLES and KELLOGGS COCO POPS are far more readily available and, in the stores sampled by Mr Taylor, FROSTIES is actually relatively hard to find, stocked by only one store in eleven.  Were I not able to decide this matter on other issues, I would weigh the comparative obscurity highly.  For present purposes, let it suffice that the FROSTIES range is simply one of several produced, and known to have been produced for a considerable time, by K.

There is, even so, nothing in any of the evidence that would suggest that any reasonable consumer would expect K both to:

• have diversified into the operation of convenience stores at service stations, or to have any other connection with such businesses; and

• be likely to use the cartoon tiger as a trade mark for such stores if it did so.  

Of the two, the former is the one on which I put greatest weight.  The gap between what K is known to have done and what E proposes to do is simply too broad to be bridged by anything but unreasonable speculations.

In Registrar of Trade Marks v Woolworths, supra, French J said something of s 44 that is, with modification, applicable to s 60.  That was, deleting words that are inappropriate to s 60:

A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or ... services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

I do not believe that French J was suggesting, in referring to "some people", that it would be sufficient if a mere handful of people would be left in doubt.  Firstly, I do not believe that he was attempting to modify his previous stipulation, for which there is long-standing authority in a case to which he had just referred, that the doubt that must afflict the "ordinary" person must be a "reasonable" one.  Secondly, the formulation requiring that the number of people affected by doubt or confusion be "substantial" has been repeatedly endorsed.  The onus has shifted, but not the benchmark.  The latter comes from Smith Hayden's application[4] and Kendall Company v Mulsyn Paint and Chemicals[5], where Kitto J repeated and expanded what he said in Southern Cross[6].  He added the reference to " substantial" as an express adoption of that formula from comparable UK decisions subsequent to Smith Hayden.

[4] (1946) 63 RPC 97

[5] (1963) 109 CLR 300 at 305

[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595

Any level of doubt or uninformed speculation that exists in the present matter is of a very low level indeed.  Therefore there is no a basis on which to found an opposition under s 60.

Conclusion and costs

The opponent, K, has not established any ground of opposition.  I therefore direct that the application be registered unless, within one month of the date of this decision, the registrar is served with a copy of a notice of appeal.  In that event, I direct that registration be deferred until the appeal is either decided or discontinued.

As to costs, I direct that K pay the costs of E in terms of the official scale.

Terry Williams
Hearing Officer
8 August 2001