Kellogg Company v Societe Des Produits Nestle S.A

[2004] ATMO 45

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 814477(30) - K-BOOM - filed in the name of Societe Des Produits Nestlé S.A.

Delegate:

Mary Skivington

Representation:

Opponent: Michael Kirov, of Spruson & Ferguson Patent and Trade Mark Attorneys.

Applicant: Margaret Shearer of Banki Haddock Fiora Lawyers.

Decision:

Section 52 opposition - grounds of opposition under sections 44, 59 and 60 not established - registration allowed. Costs awarded against the opponent.

Background

1.     Societe Des Produits Nestlé S.A., ('the applicant'), filed trade mark application number 814477 to register the trade mark, K-BOOM, on 22 November 1999. The specified goods are in class 30 of the International Classification of Goods and Services and are described as:

Coffee, coffee essences and coffee extracts; mixtures of coffee and chicory; preparations to be used as substitutes for coffee; tea, tea extracts; cocoa, and preparations having a base of cocoa; chocolate, chocolate products (for food), non-medicated confectionery and candy; sugar; mayonnaise; flour, preparations made from cereals and/or rice and/or flour for food for human consumption; breakfast cereals, bread, biscuits (other than biscuits for animals), cookies, cakes, pastry; ice cream, water ices, frozen confections, and preparations for making ice-cream and/or

water ices and/or frozen confections; honey and honey substitutes; snack foods; prepared meals, desserts and puddings; all included in this class.

2.     Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 17 August 2000. Kellogg Company, ('the opponent'), filed a notice of opposition to registration of the trade mark on 17 November 2000. The nominated grounds of opposition covered the full range of possible grounds of opposition under the provisions of the Trade Marks Act 1995, ('the Act').

3.     The evidentiary phases of the opposition process were completed on 13 November 2003. The applicant applied to be heard and as a delegate of the Registrar of Trade Marks, I heard the matter in Sydney, on 15 March 2004. The opponent was represented by Mr Michael Kirov, a legal practitioner with Spruson & Ferguson, Patent and Trade Mark Attorneys. Ms Margaret Shearer, a partner with Banki Haddock Fiora Lawyers, represented the applicant.

The evidence

4.     Evidence in support

Date	Declarant	Exhibits
16 May 2002	Michael James Kirov, legal practitioner employed by Spruson & Ferguson, Patent and Trade Mark Attorneys.	MJK-1 to MJK-4
17 May 2002	Amanda Louise Wilson, employed by Kellogg Company as the Marketing Manager Snack Foods (Grocery).	ALW-1 to ALW-2
17 May 2002	Martin John Prebble, employed by Kellogg Company as the Brand Manager.	MJP-1 to MJP-4

5.     Evidence in answer

Date	Declarant	Exhibits
14 February 2002	Donna Margaret Bessell, Trade Marks Officer with Nestlé Australia Ltd.	DMB-1 to DMB-7
14 February 2002	Michelle Allison Anita Cooper, solicitor, employed by Banki Haddock Fiora Lawyers.	MAAC-1 to MAAC-5

6.     Evidence in reply

Date	Declarant	Exhibits
11 November 2003	Michael Rumore, a Principal in the firm Rumore & Associates Pty Ltd.	MR-1 to MR-4

Evidence in support

7.     Mr Kirov reports in his declaration that the opponent is the owner of 201 registered trade marks in Australia.  A number of these registrations include the word Kellogg or Kellogg's and some contain misspellings of words in which the correct letter 'C' has been replaced with a letter 'K', for instance KOMPLETE, KATER and KRUMBLES or contain the letter K as a separate element, for instance SPECIAL K, or K-SENTIALS. The letter K is sometimes represented in the font as shown below.

8.     Mr Kirov's declaration includes as exhibits two statutory declarations which were submitted by representatives of the opponent as evidence of use in support of then pending applications 574128, KOMPLETE and 642387, SPECIAL K. I do note however, that the letter K is not a special feature of the majority of the opponent's currently registered trade marks in class 30.

9.     Ms Wilson declares that her employer, Kellogg (Aust.) Pty Ltd., is a fully controlled subsidiary of the opponent. Ms Wilson declares that the opponent's earliest current Australian trade mark registration is registration number 18378, filed on 29 May 1915, for the trade mark shown below.

 

10.   Ms Wilson avers that the particular rendering of the letter K in this trade mark has been used continuously in Australia since 1924. Exhibit ALW-2 comprises packaging for K-TIME bars, twists and squares showing use of the letter K in this form.

11.   Mr Prebble declares that first use in Australia of the opponent's SPECIAL K trade mark began at least as early as 1966 and first use of KOMPLETE began at least as early as 1987. Exhibit MJP-1 comprises packaging showing use of these trade marks in respect of breakfast cereals. The letter K in KOMPLETE is not in a stylised form but the packaging also contains the word KELLOGG'S where the K is in the stylised format. Both of these trade marks, declares Mr Prebble, have been used and promoted continuously for 'many years' in all states and territories of Australia. Exhibit MJP-3 comprises a video showing television commercials for SPECIAL K. Exhibit MJP-2 contains the figures for sales, advertising and promotion of both SPECIAL K and KOMPLETE for the years 1994 to 2001.

Evidence in answer

12.   Ms Bessell declares that her employer of seventeen years, Nestlé Australia Ltd., (Nestlé), is an authorised user of the applicant's trade marks. Ms Bessell reports that in 1999 the applicant's WONKA range of confectionery was launched in Australia and in 2000 seven new products were added to the WONKA range including the K-BOOM chocolate confectionery. Ms Bessell declares that K-BOOM is a chocolate bar with a popping candy centre. The bar is promoted as 'tongue exploding chocolate'. Along with the other products in the WONKA range, K-BOOM is offered for sale on a rotating basis, declares Ms Bessell, which means that not all of the products in the range may be available for purchase at the same time. The market for K-BOOM bars is children aged 8-14 years. The bar is sold in supermarkets and convenience stores and petrol stations and enjoyed considerable success in the years 2000 to 2001 for which annual sales figures have been provided. Ms Bessell declares that to Nestlé's knowledge, use of the applicant's trade mark has not resulted in any instances of confusion with any of the opponent's products. Ms Bessell notes that the applicant also sells other products that feature a prominent or unusual use of the letter K including its top selling KIT KAT range.

 

13.   Ms Cooper declares that she conducted a number of searches of the Australian Trade Marks Office Search System, (ATMOSS), to determine the state of the Register with respect to trade marks in class 30 that feature the letter 'K'. Ms Cooper's search reveals that while the opponent owns a number of registrations where the letter 'K' is a feature there are other registrations with this feature, which are not owned by the opponent. Exhibit MAAC-3 is an ATMOSS print out showing a list of thirty registrations in class 30 where the letter 'K' has been indexed for searching purposes as a full word and which are not owned by the opponent. Of particular relevance are trade marks, 256399 for the letter 'K' in a simple hexagon, 288824 and 600737 where the letter 'K', forming part of a tree, is a distinguishing feature of the trade marks, 324882 for K MART, 427546 for K SUPERFOOD and 499910 for CIRCLE K and the letter 'K' in a circle. I note also that the later filed but now registered trade marks 855607, 912601 and 912603 which all include snack foods in class 30 are for the trade mark K-ZONE. The first two of these are stylized trade marks but 912603 is rendered in plain type script.

Evidence in reply

14.   Mr Rumore declares that his firm is a fully licensed private enquiry and commercial and investigation agency that has been in operation for approximately twenty years. Mr Rumore declares that in October 2003, under instructions from Spruson & Ferguson, he conducted a search through a range of Sydney outlets that display and sell snack bars.  He declares that his instruction were to include items such as muesli bars, energy bars, chocolate bars and confectionery bars which feature the letter 'K' as a discrete or unusual element. Mr Rumore declares that he visited a wide range of outlets including service stations, newsagencies, pharmacies and supermarkets. Mr Rumore reports that he found only five kinds of bars featuring the letter 'K' in an unusual or discrete manner. Four of these are owned by the opponent and one, KIT KAT, is owned by the applicant. Mr Rumore declares that he was unable to find any snack bars bearing the K-BOOM trade mark.

Grounds of opposition

15.   At the hearing the opponent pressed grounds of opposition under the provisions of sections 44, 59 and 60 of the Act. The remaining grounds were not pressed and I now find that they have not been established.

Submissions and the law

Section 44

16.   So far as it concerns the subject application, section 44(1) of the Act provides that an application for registration must be rejected if it is substantially identical with, or deceptively similar to, another trade mark application or registration that has an earlier priority date, and which covers similar goods. Section 10 of the Act defines a 'deceptively similar' trade mark as one that so nearly resembles another trade mark that it is likely to deceive or cause confusion. Section 14 of the Act defines similar goods as goods that are the same or of the same description.

17.   Mr Kirov submitted that in terms of section 44 the opponent relied on the following registered trade marks, which he described as a family of trade marks, all of which have earlier priority dates than that of the applicant's trade mark, K-BOOM and all of which are in respect of goods in class 30.

Number	Trade Mark	Goods
18378	Cereal foods
79150	KELLOGG'S KRUMBLES	Cereal foods
150093	SPECIAL K	Breakfast foods and all other cereal foods
152377	OKS	Breakfast foods, cereal foods and other substances used as food included in Class 30, but not including sauces or wet condiments of any type.
339417	Cakes containing fruit and/or yoghurt
574128	KOMPLETE	Breakfast cereals
622704	Preparations made from cereals
642387	SPECIAL K	Breakfast foods in this class
716091	KRUMBLY	Preparations made from cereals
718034	Cereal derived food products, including for use as breakfast foods, snack foods, or ingredients for making food
792823	K-SENTIALS	Breakfast cereals, cereal-based snack foods, toaster pastries, waffles and pancakes
800421	K-TIME	Breakfast cereals; preparations made from cereals; cereal bars, baked products (such as muffins) and other  cereal-derived food products to be used as a breakfast food, snack food or ingredient for making food

18.   Mr Kirov submitted that some of the goods specified in the subject application, namely, flour, preparations made from cereals and/or rice and/or flour for food for human consumption; breakfast cereals, bread, biscuits (other than biscuits for animals), cookies, cakes, pastry, are the same or of the same description as goods covered by the trade marks on which the opponent relied. This was conceded by Ms Shearer. As some of the goods are the same or of the same description I must now consider if K-BOOM is substantially identical with or deceptively similar to any of the cited trade marks.

19.   In the side by side comparison of the trade marks, necessary for determining substantial identity, as defined by Windeyer J, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407, the visual and phonetic difference are many. Clearly, K-BOOM is not substantially identical with any of the trade marks relied on by the opponent.

20.   Mr Kirov submitted that firstly in determining if K-BOOM is deceptively similar to any of the trade marks cited by the opponent I should have regard to the principles established in Australian Woollen Mills Ltd v F S Walton & Co Ltd, (1937) 58 CLR 641, where Dixon and McTiernan JJ said,

[T]he 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 ... for which the protection ... 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. ...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.

21.   And secondly I should have regard to Registrar of Trade Marks v Woolworths, (1999) 45 IPR 411, where French J re-stated the propositions of Kitto J, in the Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd case, (1954) 91 CLR 592, 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.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353,

[T]he question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.'

22.   Mr Kirov submitted that a taking into account all the surrounding circumstances in determining if a real risk of deception or confusion exists, has been reflected in a number of cases where the likelihood of confusion has been found on the basis of 'contextual confusion', as in John Fitton & Co Ltd's Appn, 66 RPC 65, where EASYJEST was refused in the face of JEST because it might be thought that the goods originated from the same source. Mr Kirov said that this reasoning was followed in Alan Chong v Tonka Corportion, [1994] ATMO 27 and in McDonald's Corporation v Macri Fruit Distributors Pty Ltd, [2000] ATMO 37. Mr Kirov contended that the letter 'K' is a 'stand out element' in the opponent's family of cited marks and that use by the applicant of its trade mark, K-BOOM, would be likely to lead to contextual deception or confusion as to the origin of those goods. The likelihood of deception and confusion is greater, Mr Kirov argued, because the relevant goods are comparatively cheap grocery items so that less care is likely to be taken in their purchase than would be the case if the goods were expensive items. He noted that the applicant's trade mark covers a much broader range of goods than those on which K-BOOM has actually been used, and, as French J states in Woolworths, supra,

The question of deceptive similarity 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.

23.   Mr Kirov noted that the first syllable should generally be given most weight when comparing marks: London Lubricants (1920) Ltd's Appn, (1925) 42 RPC 264, and that in revisiting the tests for deceptive similarity, Finn J said, in C A Henschke & Co v Rosemount Estates Pty Ltd, [1999] FCA 1561, (11 November 1999),

particular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks... save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.

24.   Ms Shearer argued that no matter which of the many guidelines for comparing trade marks is applied, K-BOOM is not deceptively similar to any of the trade marks cited by the opponent. She argued that the most visually similar Kellogg's trade marks are those with the prefix 'K-', being the trade marks K-TIME and K-SENTIALS, where apart from the common prefix they have no commonality of look or sound. Ms Shearer submitted that these trade marks would be pronounced 'kay-time' and 'kay-sentials' whereas the applicant's trade mark is the phonetic equivalent of the onomatopoeic word KABOOM and even if it were to be mispronounced 'kay-boom' it still has a different look and sound from the Kellogg's trade marks.

25.   Ms Shearer submitted that in relation to the 'K-' prefixed Kellogg's trade marks and K-BOOM the general principle of the London lubricants case does not apply because although the 'K' is a clear strong sound it is short in comparison with the separate suffixes and it is recognisable as a single letter rather than a standard prefix of a complete word. The suffixes TIME and SENTIALS, she said, are words that are longer and stronger than the letter 'K' and which would be pronounced clearly and cannot be dismissed as 'other material' subservient to the letter 'K'. Ms Shearer argued that BOOM in the applicant's trade mark is likewise strong and resounding and given the pronunciation of K-BOOM, it is the prefix that is more likely to be swallowed than the suffix. Ms Shearer noted that trade marks with similar ideas may be found to be deceptively similar, Jafferjee v Scarlett, (1937) 57 CLR 115, however, she said, in this case, none of the Kellogg's trade marks create the idea of an explosion whereas the idea in the mark, K-BOOM, which is a slight misspelling of the known word, KABOOM, is of an explosion.

26.   Ms Shearer said that even taking into account the doctrine of imperfect recollection, and recognising that there is a similarity of structure in the Kellogg's 'K-' trade marks and K-BOOM she did not consider that this would be sufficient to create a real likelihood of confusion between the trade marks.

27.   Ms Shearer argued that the scope of contextual confusion is limited and that the existence of the letter 'K' somewhere in the various trade marks is not enough to establish contextual confusion. She submitted that by using the letter 'K' as an inconsistent theme through its trade marks the opponent has lessened rather than enhanced any family of marks against which contextual confusion might be claimed. Ms Shearer also referred to the presence on the Register of other trade marks not owned by the opponent which comprise or feature the letter 'K' and which cover similar goods.

28.   Finally Ms Shearer said that consumers have a high degree of awareness in respect of breakfast cereals, cereal bars and snack bars and consume these goods with a degree of opinion about which products they do and do not like and which brands they do and do not purchase. She submitted that consumers would not purchase a cereal product or cereal bar trade marked K-BOOM because of any similarity with any of the Kellogg marks and therefore K-BOOM used on any other goods specified in the application is not likely to cause deception or confusion.

29.   I agree with Ms Shearer that the obvious pronunciation of the applicant's trade mark is KABOOM, however, even if some consumers should pronounce it KAY-BOOM, this will have no bearing on my findings in respect of section 44.

30.   I do not agree with Mr Kirov that the trade marks cited by the opponent are a single family of trade marks. While a number of the opponent's registered trade marks contain the letter 'K' this letter cannot be described as a 'stand out element' in any more than a few and even then the rendering and placement of the letter does not follow a consistent pattern that might lead consumers to identify the marks as a family of trade marks. However, I think it could be argued that those trade marks, where the letter 'K' appears in the stylised font, are a family of trade marks. I think it is probable that consumers would consider that trade marks numbered 18378, 622704 and 718034  come from the same source. Given that the evidence shows that the letter 'K' in SPECIAL K and K-TIME is also in the same special font it is likely that consumers will believe that they too emanate from the same source.

31.   Trade mark 18378 is the signature of Will Keith Kellogg founder of the cereal company and inventor of the cornflake. Signatures belong exclusively to their owners and have long served as a means of identification and indeed it was Mr Kellogg’s signature that served to identify his goods in the early days of their manufacture. The applicant's explosion sounding trade mark K-BOOM  could hardly be more dissimilar to the opponent's signature trade mark. I find there is no likelihood of deception and confusion between the subject trade mark and trade mark number 18378.

32.   Trade mark 79150, KELLOGG'S KRUMBLES, combines the surname Kellogg with a misspelling, probably for the purpose of alliterative value, of the descriptive word, 'crumbles'. The only similarity between this trade mark and K-BOOM is that both trade marks use the letter 'K' as the first letter of the words that comprise the trade marks. Visually, phonetically and in their respective ideas they are different and I find that there is no real risk of deception or confusion between these trade marks.

33.   Trade marks 150093 and 642387 are for the trade mark SPECIAL K. These two trade marks are obviously a small family of two. Their only points of similarity with the subject mark are that they are rendered in upper case typescript and that they each contains the letter 'K' as a separate element. However, the placement of this element is different as in K-BOOM it is at the beginning of the mark and in SPECIAL K it is the final element. There is nothing in the letter 'K' that would define it as an essential feature by which these marks will be known and recalled, rather the marks will each be remembered as wholes.  Visually, phonetically and in idea K-BOOM is not deceptively similar to SPECIAL K.

34.   OKS, almost undoubtedly pronounced as OKAYS, is the subject of trade mark registration 152377. Other than the fact that it contains some of the same letters there is no other similarity in look or sound or meaning with K-BOOM.

35.   Trade mark 339417 registered for trade mark SMAK SNAK and the device of a mouth creates a totally different idea from that of K-BOOM. The only shared element is the letter 'K'. There is no risk of deception or confusion between these trade marks.

36.   Trade marks 574128 and 716091 are respectively for the trade marks KOMPLETE and KRUMBLY. These trade marks are obvious misspellings of the words COMPLETE and CRUMBLY. Likewise, trade mark 622704 for the series of marks, KELLOGG'S KATER-PAK and KELLOGG'S KATER-6-PAK contains misspellings of the words CATER and PACK. Consumers are well accustomed to seeing substitutions of the letter 'K' for the letter 'C' or letters 'CK' in trade marks. The trade marks so formed acquire a measure of adaptation to distinguish of their descriptive elements while retaining all of the sounds and meanings of conventionally spelt descriptive words.  I think that initially, consumers recognise misspellings as widely used attention grabbing ploys and rather than as indicators of the source of the goods. Generally it is only through use that such words may come to indicate the origin of the goods. Visually, phonetically and in meaning K-BOOM is not sufficiently similar to any of these trade marks for a ground of opposition under section 44 to succeed.

Trade mark 718034 is for the stylised letter 'K', arguably a famous trade mark, known as the Kellogg's 'K'. Clearly this particular representation of the letter brings to mind Kellogg's and only Kellogg's whereas an ordinary plain typescript rendering of the letter 'K' has no such connotation. Bearing in mind that in deciding if trade marks are deceptively similar I must consider ‘what the applicant can do if registration is obtained’: Woolworths, supra, and that a trade mark in the form of block capitals is not intended to be limited to that precise form: Morny Ltd’s Trade Marks, (1951) 68 RPC 55, I put it to Ms Shearer, subsequent to the hearing, that if the applicant’s trade mark were registered and it elected to use the trade mark in a script resembling the Kellogg’s K there would be a real risk of deception and confusion. I said that if the goods were amended to exclude the goods that overlap or if K-BOOM were amended to the stylized font shown in the evidence this would remove the risk of deception and confusion. Ms Shearer responded by submitting that fair notional use of a mark should be considered and that such use could not include use of a registered stylised single letter mark of another trader in an otherwise distinctive and overall distinguishable mark.

37.   Use ‘in a fair and normal manner’ was considered in Re Smith Hayden and Co's Application (1946) 63 RPC 97 where it was said,

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.

38.   I find I agree with Ms Shearer in that the use of an imitative script by the applicant would be beyond the bounds of what constitutes ‘fair and normal’ use. The applicant would not be free to use its trade mark in the same font or one similar to that for which the opponent’s trade mark 718034 is registered. I therefore find that the trade marks are not deceptively similar.

39.   Visually K-BOOM, K-SENTIALS and K-TIME have a degree of similarity in that they share the same 'K-' prefix. I am also conscious that these goods are more often purchased by self selection rather than by a verbal over-the-counter request so that visual similarity, particularly at the beginning of a word, is more significant than actual pronunciation. I also note that goods such as cereal bars and confectionery bars, are frequently stored in close proximity to each other in convenience stores. However, this must be weighed against the fact that each of these trade marks has a strong suffix that is dissimilar in look and idea. While consumers may not exercise great care in selecting chocolate bars and cereal bars they do have quite definite preferences and I think, will choose with enough care to note the significant differences in the trade marks and thus avoid confusion. On balance I am not persuaded that there is a real risk of deception and confusion between the applicant's trade mark and the opponent's trade marks K-TIME and K-SENTIALS.

40.   I find that there is not a real risk of deception or confusion, visually, phonetically or contextually, between K-BOOM and any of the trade marks cited by the opponent. This ground of opposition has not been established.

Section 59

41.   Section 59 of the Act provides that a trade mark may be opposed on the grounds that the applicant does not intend to use or authorise the use of the trade mark in Australia or to assign the trade mark to a body corporate in Australia for that body to use in Australia, in respect of the goods specified in the application.

42.   The filing of a trade mark application is evidence of an intention to use a trade mark: Aston v Harlee Manufacturing Co (1960) 103 CLR 391. However, to establish a ground of opposition under the provisions of section 59 it is necessary for the opponent to show that at the time it filed its notice of opposition the applicant no longer had an intention to use the trade mark. I note that Mr Rumore was unable to find any K-BOOM chocolate bars in his investigation but a reason for this may be found in the Bessell statutory declaration where Ms Bessell reports that the WONKA range of goods is produced on a rotational basis so that not all of the products will be available at the same time.

43.   Mr Kirov submitted that the evidence demonstrates that the applicant has only used the trade mark in respect of a chocolate bar, marketed as part of the WONKA range of chocolates and confectionery and that it does not intend to use the trade mark in respect of any other goods. He submitted that consistent with or relevant to the applicant's use of K-BOOM is registration 769761 for the trade mark, WONKA and hat device, for Cocoa and preparations having a base of cocoa, chocolate, chocolate products, confectionery, sweets, sugar, candies, toffees and chewing gum. Mr Kirov contended that this shows the applicant only intends to use the trade mark in respect of chocolate products and has no intention to use the trade mark in respect of the other goods specified. In support of his argument Mr Kirov referred to Pitman-Moore Australia Pty Ltd v Australia Feed Company Pty Ltd, [1997] ATMO 47 (2 September 1997) where Hearing Officer Williams observed that Lord Howarth M.R. in Ducker's Trade Mark (1928) 45 RPC 397 at 402 had said in respect of an 'intention to use',

I agree that the goods need not be in being at the moment, and that there is futurity indicated in the definition; but the mark is to be a mark which is to be definitely used or in respect of which there is a resolve to use it in the immediate future upon or in connection with goods.  I think that the words 'proposed to be used' mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered.

44.   While to date the applicant has only used the trade mark in respect of a chocolate bar I do not agree with Mr Kirov that this is an indication that the applicant does not intend to use the mark in respect of other goods. In any case an applicant is not required to use its trade mark at all prior to registration. I do not think it is relevant that the chocolate bar, K-BOOM is part of the WONKA range of confectionery or that the WONKA trade mark, 769761, is only registered for cocoa and chocolate based products and other confectionery. This is insufficient to establish that the applicant does not intend to use the trade mark in respect of other goods claimed in the specification. Incidentally, I note that there is a family of WONKA trade marks and that two prior registrations, 587400 and 587401 for WILLIE WONKA GOBSTOPPERS and the series WILLIE WONKA and WILLIE WONKAS respectively, cover a much broader range of goods than does registration 769761. Where a trade mark is successful in respect of some goods or services, it is a common practice for traders to build on that success, by extending the range of goods or services covered by the successful trade mark. I have no evidence before me to show that the applicant does not intend to extend the range of goods for which the K-BOOM trade mark will be used. The applicant is a large organisation producing a wide range of foods and beverages and obviously has the ability to produce all the goods nominated in the application. The opponent has not done sufficient to establish that the applicant does not intend to use the trade mark in respect of other goods in the specification, in addition to chocolate and as a consequence this ground of opposition has not been established.

Section 60

45.   In order to satisfy a ground of opposition under the provisions of section 60 of the Act, the opponent must establish that the applied for trade mark is substantially identical with or deceptively similar to another trade mark or trade marks that have acquired a reputation in Australia before the priority date of the applied for trade mark and, because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion.  Section 60 does not require the relevant goods or services to be the same or closely related nor does it require the trade mark/s on which the opponent relies to be registered or the subject of application/s for registration.

46.   In this opposition the opponent has relied on twelve of its registered trade marks. I have already found in terms of section 44 that the applicant's trade mark is not substantially identical with or deceptively similar to any of these trade marks. As this is a threshold test under section 60, it follows that the opponent is unable to establish this ground.

Decision

47.   The opponent has failed to establish any of the grounds of opposition on which it relied. I therefore direct that the trade mark application may proceed to registration one month from the date of this decision unless within that period the Registrar has been served with a notice of appeal. If the Registrar is served with a notice of appeal I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

48. I award costs against the opponent and direct that the opponent pay the applicant's costs in accordance with the Official Scale set down in Schedule 8 of the Trade Marks Regulations 1995.

Mary Skivington

Hearing Officer

Trade Marks Hearings

17 August 2004