Kellogg Company v Premium Brands Pty Limited

[2000] ATMO 70

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 741449(30) - WILLOW VALLEY OAT-BRAN BUBBLES and device- filed in the name of Premium Brands Pty Limited.

Background

Application number 741449 was filed in the name of Premium Brands Pty Ltd (the applicant) on 15 August 1997 in respect of 'prepared cereal containing oat bran'. The application was accepted without objection and advertised as such in the Australian Official Journal of Trade Marks (the Journal) of 15 January 1998. A representation of the mark is shown below.

Kellogg Company (the opponent) filed a notice of opposition to this acceptance on 16 March 1998. The notice listed grounds of opposition under s.57 in terms of s.39(1), s.39(2), s.41, s.42, s.43 and s.44, and grounds under s.58, s.59, s.60, s.61, s.62(a) and s.62(b) of the Act. Thereafter, the opponent filed and served its evidence in support of the opposition by 3 February 1999 and the applicant, after seeking an extension of time in which to do so, chose not to serve any evidence.

The matter came before me in Sydney on 13 March 2000. Mr Rohan Singh of Baker & McKenzie, Solicitors, of Sydney represented the opponent. The applicant was not represented.

The Evidence

The opponent's evidence in support consists of a single declaration from David A. Herdman, Trade Mark Counsel for the opponent. The declaration was made on 20 January 1999 and has, annexed to it, five exhibits, 'DAH-1' to 'DAH-5' inclusive, the final four of which are marked 'Confidential'.

This evidence goes to show that the opponent is a manufacturer of breakfast cereals and cereal-based bars. It has registrations in 22 jurisdictions (including Australia) for the words RICE BUBBLES, in two jurisdictions (Ireland and the United Kingdom) for the words BANANA BUBBLES and in the United States of America for both of the word trade marks BUBBLES and KELLOGG'S TOASTED RICE BUBBLES. The trade mark for the words RICE BUBBLES has a registration date of 15 October 1928 on the Australian Register. Use of the mark in Australia began in that same year. The remainder of the opponent's evidence is confidential, but goes to show the extensive use that it has made of the RICE BUBBLES mark in Australia, in relation to breakfast cereals, with sales and advertising figures for the years 1992 to 1997 inclusive. In addition, the opponent has provided sales and advertising figures for use of the trade mark RICE BUBBLE TREATS, in Australia, from the time of launch of its cereal-based bars in October 1996 to the end of 1997.

Submissions

Mr Singh opened his submissions by stating that the opponent intended to rely on only three grounds listed in the notice of opposition - those under s.44, s.60 and s.43.

In terms of the s.44 ground he said that both the opponent's RICE BUBBLES trade mark, number 51540, registered from 15 October 1928, and present BUBBLES application, number 728032, for which application had been made on 18 February 1997, had priority dates earlier than the present application. Both of these marks contain goods that are included within the applicant's present specification. Although Mr Singh conceded that the opponent's marks are not substantially identical with the present application, he said that they are deceptively similar. He submitted that because the entire trade mark of application 728032, BUBBLES, is contained within the applied for mark, that the average consumer would believe that a connection existed between the opponent's mark and the applicant's mark. Mr Singh directed me to the standard test for deceptive similarity of trade marks from Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd. (1937) 58 CLR 641 at 658. He claimed that the usual manner in which persons behave must be the test when assessing the impression or recollection of a trade mark. Mr Singh submitted that cereals are not the kind of goods purchased with great care, costing only a few dollars, and this could lead to confusion of the marks. He also stated that the applicant's mark could readily be abbreviated to simply 'BUBBLES' in a spoken description of the goods, which could lead to deception or confusion.

In relation to s.60 Mr Singh claimed that similar issues existed in relation to deceptive similarity of the applicant's mark with the opponent's RICE BUBBLES mark. Sales made under that mark prior to the present application could be measured in the millions of tons annually, as set out in the confidential exhibits to the Herdman declaration.

Mr Singh submitted that judicial note of the fame of the opponent's RICE BUBBLES mark should be taken and that the state of Register should also be considered. For cereals, he said, only three trade marks could be found on the Register which contained or consisted of the word BUBBLES, whereas the usual generic description for cereal grains expanded by use of high pressure steam was 'puff' or 'puffed'. Mr Singh also claimed that the use of the mark RICE BUBBLES from 1928, together with the millions of tons of use annually by the opponent for many years prior to the present date of application in 1997, established a substantial reputation for the opponent in the mark. Given this reputation, he submitted, and the lack of descriptive meaning in the word BUBBLES, the likelihood of deception or confusion between the opponent's mark and the mark applied for is quite high.

Under s.43, Mr Singh claimed that the connotation - or secondary or implied meaning - for the present trade mark lies in the word BUBBLES being a reference to the opponent and/or its goods. Rhetorically, Mr Singh asked 'If BUBBLES is not a description of the goods why is the word used within the applicant's mark?' He proposed that it was so because the applicant wished to make an improper benefit from opponent's reputation. Alternatively, he said, the word BUBBLES is misdescriptive of the applicant's goods.

Mr Singh's final contention concerned the onus on the applicant in this matter. He said that despite the interpretation of the presumption of registrability in cases of conflicting trade marks, the applicant did have to shoulder a burden of onus where evidence is led to show that the mark is not registrable. The onus in such a case, he claimed, reverts to the applicant. In the present case the applicant had not responded to the opponent's case and so the Registrar should refuse the application[1].

[1] Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd AIPC (1987) ¶90-436 at 37,830

Mr Singh concluded his submissions with a request for an award of costs in favour of the opponent in the matter.

Discussion

The grounds of opposition claimed in the notice of opposition encompassed ss. 58, 59, 60, 61, 62 and also listed grounds pursuant to s.57 involving ss. 39, 41, 42, 43 and 44 of the Act. At the hearing the opponent stated that it only intended to rely on three grounds - those taken under s.44, s.60 and s.43. For the sake of completeness, I therefore formally find that the opposition is not successful in relation to ss. 39, 41, 42, 58, 59, 61 and 62. I now turn to the remaining three grounds of opposition claimed.

(a) Section 44 - Identical etc. trade marks

The legislation, insofar as it is relevant for a comparison of trade marks owned by different parties, where goods but not services are involved reads:

44.(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) the applicant's trade mark 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).
Note 3:  For priority date see section 12.

In order to succeed in its opposition under this section, the opponent must establish a similarity of goods, a similarity of trade marks and a priority date for its trade mark earlier than the present application. For the two trade marks relied on by the opponent, two of these three factors are not in dispute. The specification for the present application claims 'Prepared cereal containing oat bran'. The opponent's RICE BUBBLES registration has a statement of 'Cereal breakfast foods', whilst its BUBBLES application claims 'Breakfast foods namely breakfast cereals including breakfast cereals in bar form excluding snack bars'. All three, therefore, have a commonality in at least 'prepared breakfast cereals containing oat bran'. Similarly, the matter of priority dates is not in contention. The opponent has registered its RICE BUBBLES trade mark from 15 October 1928 and has applied for registration of its BUBBLES trade mark on 18 February 1997, whereas the present application was filed on 15 August 1997.

The only remaining matter concerns the degree of similarity of the respective trade marks involved. At the hearing, Mr Singh directed my attention to the standard test for deceptively similar trade marks, having conceded that the respective marks of the applicant and the opponent are not substantially identical. This test is outlined by Dixon and McTiernan JJ in Australian Woollen Mills , supra, 658 in the words:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

The two trade marks relied on by the opponent are word only trade marks, being RICE BUBBLES (number 51540) and BUBBLES (number 728032). Number 51540 is registered in respect of the following script, whereas application 728032 claims all scripts.

Mr Singh submitted that the word BUBBLES in the two above marks was not descriptive of the goods. He claimed support for this contention with the comment that the only trade marks on the Register consisting of, or containing, the word BUBBLES for cereals are the three involved in the current hearing. He said that if the word, BUBBLES, was required by other traders for normal description, then it would be expected that the word would form part of more trade marks on the Register. Additionally, Mr Singh claimed that the words PUFF or PUFFED were the usual generic words to describe cereal grains that had been expanded by use of high-pressure steam.

I find that I am at variance with Mr Singh's view here. Firstly, in relation to his claim that the number of occurrences of particular words on the Register were an indication for the likelihood that other traders might need the word for normal description, I believe this to be an extremely rough guide at best. Although the word BUBBLES is only to be found three times, the words PUFF and PUFFED, that Mr Singh did say had a descriptive connotation for breakfast cereals are only to be found once each on those goods. This material confirms the position taken by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 (25 February 2000) where he states:

35 The second matter mentioned by Ms Baird is that Ocean Spray adduced evidence of other registered marks that contain, or consist wholly of, the word "classic". That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar[2] at 305:

"Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat'. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence."

I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

My second point of divergence from Mr Singh's argument concerns whether the word BUBBLE affords any description for the goods of the application. The Macquarie Dictionary (Multimedia 1996) lists as its third meaning for the word BUBBLE (in a list of ten):

3. a globule of air or gas, or a globular vacuum, in a solid substance.

The primary definition found in the Oxford English Dictionary 2^nd Edition (OED) for this word reads:

[2] British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281.

1. A thin globular (or hemispherical) vesicle of water or other liquid, filled with air or gas; applied alike to those produced by the agitation of a quantity of the   liquid, or the uprising of gas to the surface, and to those artificially made by     blowing through a tube; often = soap-bubble. Also a quantity of air or gas          occluded within a liquid; spec., the portion of air left in the spirit-level.             Sometimes applied to cavities produced by occluded air in solid substances that have cooled from fusion. to blow bubbles: to produce bubbles by blowing      through a tube; often fig. to devise baseless theories, or to amuse oneself in a    childish manner.

Although I am not familiar with the details of the process that enables manufacturers to expand cereal grains by the use of high-pressure steam, in my opinion the above definitions are sufficient to show that the word BUBBLE could apply to air pockets in the grains of breakfast cereals that have undergone this process. Although not a vacuum, some sort of cavity containing air can be seen in the solid material in these cereals - whether wheat, corn, rice or any other cereal. Given this information I believe that the word BUBBLES, used in relation to expanded cereal grains, is generally apt for description of those goods.

Turning to a comparison of the respective trade marks of the applicant and the opponent, I believe that the net impression of the applied for trade mark particularly concerns a recall or recollection of the words WILLOW VALLEY and the device element. In this trade mark, the words OAT-BRAN BUBBLES, in my opinion, will be understood by the average consumer as a description of the goods, placing greater emphasis on the words WILLOW VALLEY and device as being the trade mark matter.

The particular set up of the words in the trade mark assists this understanding because the word BUBBLES immediately follows OAT-BRAN in a normal structure of the English language of a noun following an adjective. This provides a perception, in my opinion, that the purchasing public will view the cereal grain as now existing in the form of 'bubbles'. Although the words WILLOW VALLEY have some geographical signification, being two locations in the United States of America, in the states of California and Indiana, these words remain, in my view, the most significant trade mark matter and the usual words by which the purchaser will attempt to identify the manufacturer. Even allowing for an imperfect recollection of these words, the concepts or ideas that readily come to mind from the words WILLOW VALLEY are far removed from the opponent's marks of RICE BUBBLES and BUBBLES.

I do not believe that an imperfect recollection of the applicant's trade mark, WILLOW VALLEY OAT-BRAN BUBBLES with device, could lead to a person being visually or aurally confused with the opponent's BUBBLES or RICE BUBBLES trade marks. The difference in the quantity of material in the respective trade marks weighs heavily against such a visual confusion. In spoken description, deception or confusion would rely on an abbreviation of the applicant's mark that would ignore the words WILLOW VALLEY. Because I believe that the words OAT-BRAN BUBBLES in the mark are descriptive of the goods, I believe that such an outcome is highly unlikely. Even allowing for the fact that the opponent's BUBBLES mark is entirely contained within the present application - as Mr Singh submitted - I find that the overall impact, both visually and aurally is more than sufficient to ensure that deception or confusion between the respective marks is very unlikely.

The remaining avenue of any possible confusion between these respective trade marks lies in the following statement from John Fitton & Co. Ltd's Application 66 RPC 110 at 113, where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks 'Jests' and 'Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

To find that such 'contextual' confusion could occur, I would need to assess that the common components in the respective marks would lead to an expectation in the minds of prospective purchasers that the trade marks shared the same source. In the present instance, the common element is the word BUBBLES. As stated earlier, I believe that such a word, used in trade marks for cereal grains that have been expanded by the use of high-pressure steam, holds a measure of descriptive connotation that traders in such goods may wish to exploit. For this reason, I do not believe that this common word will lead the public to the conclusion that the applicant's mark and the opponent's marks all have the same owner. The present situation is not on 'all fours' with the common element JESTS above - where the goods involved were 'medicated sweets' and 'medicated preparations for human use in the treatment of indigestion and similar ailments', for the applicant and the opponent, respectively. Where a word (or part word) is common in two trade marks and has no obvious descriptive meaning for the goods, the purchasing public are more likely to be caused to assume some other link - such as a mutual owner - than where the element is descriptive. Thus, I believe the JESTS case is readily distinguished from the present circumstances involving the word BUBBLES.

From the above commentary, I find that the present mark is not deceptively similar to either of the opponent's RICE BUBBLES or BUBBLES marks - visually, aurally or contextually. This being the case, I find that opposition in terms of the s.44 ground is not successful.

(b) Section 60 Trade mark similar to trade mark that has acquired a reputation in Australia

The applicable legislation under this ground reads:

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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

Success under this ground of opposition also relies upon the opponent establishing that the applied for trade mark is either substantially identical with, or deceptively similar to, a mark put forward by the opponent. At times, I believe it is possible that a trade mark may be found to be deceptively similar to another trade mark in circumstances peculiar to actual use in the market-place, where evidence has been submitted to establish the nature of the deception or confusion caused. However, no such additional relevant material is before me in the present instance.

As I have found that the respective marks are neither deceptively similar nor substantially identical - there is no need to consider the other factors for successful opposition under s.60 - the opposition under this ground cannot succeed.

(c) Section 43 - Trade mark likely to deceive or cause confusion

This ground of opposition encompasses the following legislation:

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The opponent sought to show that a 'connotation in the mark' existed for this application in its use of the word BUBBLES. Mr Singh submitted that as the word did not have descriptive significance in relation to the goods, the question must be raised as to why the applicant chose the word. The answer to that, he suggested, was that the applicant sought to obtain an advantage in having the purchasing public believe that the goods were sourced with the opponent. On this basis, Mr Singh submitted, the mark contained a word that provided a connotation that the goods were those of the opponent, which in turn would be likely to produce deception or confusion for the public.

In relation to the concept of what constitutes a 'connotation' in a trade mark, I turn to some recent decisions issued from this Office.

In the CONFEST decision, Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt, (1998) 41 IPR 632 Hearing Officer Forno observed, at 643:

"Connotation" is a new term in trade mark legislation and as such has not yet been interpreted by the courts.  The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary:

1. the act or fact of connoting.  2. that which is connoted; secondary implied or associated meanings(as distinguished from denotation): for example the word "bum" has connotations of vulgarity.

Oxford English Dictionary

1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  Considerations under s.43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.  For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

Hearing Officer Zars, in her decision on the HERO trade mark, N. V. Sumatra Tobacco Trading Co v Philip Morris Products Inc. [1998] ATMO 69 (30 December 1998), also comments concerning s.43:

With reference to the first point argued by Mr Burley, I will not be able to place much weight on it, as it is the Registrar's understanding that the provisions of section 43 were intended to allow a ground of rejection concerning possible deception or confusion arising from the nature of the mark itself when applied to the goods or services. The provisions exclude deception or confusion likely to be caused by a conflict between the marks. This was set out in an appendix to a recent, as yet unpublished, Trade Marks Office decision Down to Earth (Victoria) Co-operative Society Limited v George Schmidt, issued 9 April 1998, where the hearing officer stated the following:

The provisions of this section as explained in:

* The Working Party's Recommended Changes to the Australian Trade Marks Legislation - a report to the Hon. Ross Free MP, Minister for Science and Technology, July 1992,

* The Explanatory Memorandum, circulated by the authority of the Minister for Small Business, Customs and Construction, Senator the Hon. Chris Schacht, and

* The Trade Marks Office Draft Manual of Practice and Procedure,

provide that an application for registration must be rejected if the trade mark, because of some signification inherent to it, would be likely to deceive or cause confusion because of its use on the relevant services [or goods].

As explained in the above Draft Manual of Practice and Procedure, connotations of the kind that would debar a trade mark from registration under the provisions of s.43 may result from the whole trade mark or a part thereof. Grounds for rejection under s.43 are, however, absolute grounds in that the likely deception or confusion must arise from the trade mark itself. The provision does not apply to deception or confusion that might arise from conflict between two trade marks.

The legislation at s.43 only directly involves one trade mark - the application. It sets out a path for the possible rejection of a trade mark application based on the consideration of that mark alone. The assessment involves a determination of not only the trade mark in its entirety, but also each element and their combinations, to assess the likelihood that the mark suggests (or connotes) a meaning that will produce deception or confusion in the minds of the purchasing public.

As recorded above in the CONFEST decision, Hearing Officer Forno observed, 'the word connotation refers to that which is implied in a trade mark'. Hearing Officer Zars, in the HERO decision, concurs with the words 'the provisions of section 43 were intended to allow a ground of rejection concerning possible deception or confusion arising from the nature of the mark itself when applied to the goods or services'. This line of reasoning has also been examined by Justice Branson in Registrar of Trade Marks v Woolworths Limited [1999] 45 IPR 411 at 434-435:

79 The broad provision contained in s 28 (a) of the 1955 Act is now reflected in two separate sections of the Act - ss 43 and 60. Section 43, which is a ground for the rejection of an application for registration of a trade mark, looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion. Section 60, which is a ground of opposition to registration, is concerned with whether the use of the trade mark of which registration is sought would be likely to deceive or cause confusion by reason of the reputation in Australia of another trade mark.

It seems to me, from these comments, that if a connotation (or implied meaning) does exist for a particular trade mark, that could lead to deception or confusion in the minds of the purchasing public, then it must be possible to identify that meaning from that trade mark alone. Simply by a consideration of the mark applied for alone, it must be the case that a sufficiently strong meaning, from the inherent characteristics of the mark itself, would be apparent for a substantial number of Australians - if s.43 were to operate in favour of the opponent. The Trade Marks Office Draft Manual of Practice and Procedure in Part 29 at paragraph 1.4, in dealing with s.43 states as a guide:

Considerations under [s43] concentrate on the matter within the trade mark that could cause deception and confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to:

·Character of the goods and/or services including their composition, nature or other properties

·Quality or quantity of the goods and/or services

·Geographical origin of the goods and/or services

·Intended use or purpose of the goods and/or services

·The endorsement or licence of a product or service by a person or organisation.

The opponent has submitted that the present trade mark does possess a connotation, being that because the word BUBBLES does not describe the goods, it must indicate a link with the opponent's RICE BUBBLES and BUBBLES trade marks. As I have set out above, I do not accept that s.43 operates in that manner. Section 60 of the Act exists for an examination of possible conflict with another trade mark, that could lead to deception or confusion, brought about by the use of the applied for trade mark.

In the present circumstances, a further compelling reason exists for me to accept that there is no connotation or implied meaning that can be assigned to the present trade mark. As I have outlined in my comments under s.44 above, I believe that the word BUBBLES does have a descriptive meaning in relation to these goods that other traders may wish to exploit. This factor effectively removes the question raised by Mr Singh in his submissions - 'why is the word BUBBLES in the mark unless to gain some advantage based on a link with the opponent?'

Accordingly, I find that the ground relied upon under s.43 has not been established and the opposition in relation to it is not successful.

(d) The matter of the Applicant's onus

Mr Singh raised the question of onus where the trade mark applicant had chosen not to submit evidence in answer to that led by the opponent. He cited Camelot Design v Bernard Leser, supra, to support his contention. In that decision, Chief Assistant Registrar Farquhar commented at 37,830:

By not responding in any way to the opposition proceedings the applicant renders its application more susceptible to refusal, since it is not appropriate that the Registrar act as advocate on its behalf. However, it is appropriate that I consider the opponent's case to the extent of finding whether or not there are matters for the applicant to answer. If there are, and the applicant has not answered them, the matter must be resolved in favour of the opponent.

Certainly, I agree with Mr Singh that 'it is not appropriate that the Registrar act as an advocate' on behalf of either party in an opposition matter. However, the above comments concerning onus were made under an opposition brought under the repealed Act, the Trade Marks Act 1955, where the onus borne by the applicant differs markedly from current practice. This factor has been clearly set out by French J in Registrar of Trade Marks v Woolworths Limited 45 IPR 411 at 426 with the words:

45 Somewhat surprisingly the submissions made by the Registrar before this Court posited a test which imported the old law as to onus. It was put in his written submission that the test be applied in considering likely deception or confusion may be stated as in Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8:

"Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration."

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

From the foregoing, it is apparent that a ground for rejecting the initial application, in the face of a possible conflicting mark with earlier priority date, will only satisfy the legislation where it is determined that there is a reasonable likelihood of deception or confusion occurring. The onus in the first instance is on the Registrar to find a clear reason why an application cannot progress. This position is, of course, a reversal of the onus under the repealed 1955 legislation - where the applicant bore the onus to justify why acceptance should occur.

Once accepted, I can see no compelling reason why this onus should then be reversed under the present legislation, thereby placing the applicant in the position to justify registration of the mark in the face of a possible challenge. It seems logical to me that in an opposition action, in the first instance the opponent would carry the onus of the need to establish 'a reasonable likelihood of deception or confusion' between possible conflicting marks rather than the applicant having to justify why this would not be the case.

In the present case, I do not believe that the opponent has established that the respective marks are deceptively similar. Had it done so, in the absence of any evidence or submissions from the applicant, the application would have been refused.

In Camelot Design v Bernard Leser, supra - the case to which Mr Singh directed me, Chief Assistant Registrar Farquhar commented that 'it is appropriate that I consider the opponent's case to the extent of finding whether or not there are matters for the applicant to answer'. In the present circumstances, I have found that there are no such matters before me.

Conclusion

From the foregoing I have found that the opponent has established none of the grounds listed in the notice of opposition. Accordingly, as a delegate of the Registrar, I dismiss this opposition and direct that, on payment of the registration fee, the mark should proceed to registration.

Costs

As the applicant has succeeded in this matter, it is entitled to its costs. I therefore direct that the opponent pays whatever costs that the applicant may have incurred according to the Official scale.

Don Nancarrow
Hearing Officer

17 July 2000