Kellogg Company v TJ Kokkinakis Pty Ltd

[2017] ATMO 58

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 1685319 (25, 28, 41) – Special K - filed in the name of TJ Kokkinakis Pty Ltd

Delegate:	Nicholas Smith Decision on the Written Record
Decision:	2017 ATMO 58 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 43, 58 and 60 considered – none established – trade mark to proceed to registration

Background

1. This is an opposition brought by Kellogg Company (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark subject of the application detailed below in the name of TJ Kokkinakis Pty Ltd (‘Applicant’): 

Application Number:	1685319
Filing Date:	7 April 2015
Goods and Services:	Class 25: Clothing for sports; Shoes for sports wear; Sports clothing (other than golf gloves); Sportswear Class 28: Apparatus for racquet sports Class 42: Arranging of sports competitions; Organisation of sports competitions; Provision of apparatus for sports; Sports club services; Sports coaching; Sports consultancy (‘Applicant’s Goods and Services’)
Trade Mark:	Special K	(‘Trade Mark’)

2. Following the advertisement on 27 August 2015 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 23 October 2015.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 23 November 2015. The SGP was assessed by this office as adequate. The Applicant filed a Notice of Intention to Defend on 18 December 2015. The SGP raised grounds of opposition under ss 42(b), 43, 58, 58A, 60 and 62A of the Act.

Evidence

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 12 April 2016.  This evidence consists of a declaration made on 11 April 2016 by Joanne Doran, Brand Manager, Special K of Kellogg (Aust) Pty Ltd (‘Kellogg Australia’), the Australian subsidiary of the Opponent, with Annexures A-M (‘Doran 1’). 

4. The Applicant filed Evidence in Answer (‘EIA’) on 1 August 2016.  This evidence consists of a declaration made on 1 August 2016 by Garry Simon Winter, who describes himself as the legal representative of Thanasi Kokkinakis of the Applicant, with Annexures A-EE (‘Winter Declaration’).

5. The Opponent filed Evidence in Reply (‘EIR’) on 14 October 2016.  This evidence consists of a declaration made on 14 October 2016 by Joanne Doran, with Annexures A-B (‘Doran 2’) and a declaration made on 14 October 2016by Maria Sun, Senior Associate with Ashurst Australia, the Opponent’s legal representatives, with Annexures A-L (‘Sun Declaration’). 

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 5 December 2016 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  On 4 January 2017, the Opponent filed its submissions (‘Opponent’s Submissions’).  The Applicant chose not to file submissions.

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

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

The Opponent

8. The Opponent is a multinational food manufacturing company, founded in 1906 with its corporate headquarters in Battle Creek, Michigan, United States.  

9. The Opponent is the owner of a number of registered trade marks in Australia that feature or include the words ‘Special K’, including the trade marks listed below (‘Opponent’s Trade Marks’).  The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods’.

Number	Trade Mark	Priority Date	Goods and Services
150093	SPECIAL K	7 August 1958	Class 30: Breakfast foods and all other cereal foods
642387	SPECIAL K	5 October 1994	Class 30: Breakfast Foods in this class
956733	SPECIAL K	4 June 2003	Class 30: Breakfast cereals; preparations made from cereals; cereal bars, and other cereal-derived food products to be used as a breakfast food, snack food or ingredient for making food

1. Doran 1 and Doran 2 contain the following claims/statements:

   ·    Kellogg Australia is the subsidiary of the Opponent and is the authorised licensee of the Opponent’s Trade Marks.  Kellogg Australia has manufacturing facilities in Botany, NSW and produces cereal and snack products for Australia, New Zealand and the Asia-Pacific region.    

   ·    The Opponent and Kellogg Australia have offered products for sale under the Opponent’s Trade Marks in Australia since 1966.  This includes numerous cereals, snack products, cereal bars, cracker crisps and biscuits which are sold through numerous grocery retailers and supermarket chains. 

   ·    The Opponent’s Trade Marks are promoted with a strong focus on healthy eating, wellbeing, fitness and a healthy lifestyle.  The Opponent has launched numerous promotions in line with the brand essence, including the ‘3 Step Challenge’, ‘Free Eating and Exercise Plans’ which promote healthy eating, wellbeing and fitness.  As part of those promotional campaigns, the Opponent and Kellogg Australia have distributed various fitness products, such as weight control booklets, exercise books and videos, Pilates videos and pedometers.

   ·    The Opponent’s Trade Marks are promoted through websites, social media accounts, sporting events and advertising generally, including sponsorship of sporting events such as the 1994 Australian Commonwealth Games Team and the 2000 Australian Ladies Masters golf tournament.  The Opponent’s Trade Marks are often coupled with sport, health and fitness related promotional campaigns.

   ·    Sales of products in Australia under the Opponent’s Trade Marks have been significant, with products sold by reference to the Opponent’s Trade Marks being Kellogg Australia’s second best-selling cereal.

   ·    The Opponent has used the initial ‘k’ in red logo form since 1916 and the initial ‘k’ in logo form combined with the word ‘special’ (the ‘Logo Mark’) since 1953 in the United States.

2. The Sun Declaration contains the following claims/statements:

   ·    The term ‘special K’ is widely applied to athletes with a surname that begins with the letter ‘k’ including tennis players such as Anna Kournikova and Nick Kyrgios.

   ·    Google search results for the Opponent’s Trade Marks combined with sporting terms commonly result in references to the Opponent.    

The Applicant

1. The Applicant, despite statements in the EIA to the contrary, is a company, established in 1986 with directors and sole shareholders John Kokkinakis and Trevor Kokkinakis.  It is asserted in the Winter Declaration that the Applicant is the Australian tennis player Thanasi Kokkinakis (‘Kokkinakis’) though this is palpably not the case and there is no explanation of the connection between the Applicant and Kokkinakis. 

2. The Winter Declaration contains the following claims/statements:

   ·    Kokkinakis is an international tennis player who ended 2015 with a world ranking of 80.  Kokkinakis has been given the nickname ‘Special K’ to reflect his talent as a tennis player.  Kokkinakis seeks to use the Trade Mark to market various sporting goods in accordance with the Applicant’s Goods and Services.

   ·    There could never be any confusion between the Trade Mark and the Opponent’s Trade Marks as they refer to completely different products.

   ·    The Opponent’s trade mark is associated with a very distinctive brand, being the Logo Mark.  The Applicant does not intend to repudiate the Opponent’s characteristics associated with the brand and trade mark.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 58, 58A, 60 and 62A, however the Opponent’s submissions indicate that it only seeks to press the grounds of opposition under ss42(b), 43, 58 and 60. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

2. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 7 April 2015, being the filing date of the application in Australia (‘relevant date’) (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

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

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

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

Discussion

Section 60

1. Section 60 of the Act is reproduced below:

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

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

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

2. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[4]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[5]

   [4] [2000] FCA 1335, [81].

   [5] (1992) 33 FCR 302, 343.

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[6]

   [6] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

5. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[7] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[8]

   [7] (2000) 50 IPR 1.

   [8] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

6. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusions increases the more closely the trade marks resemble each other.[9]

   [9] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

7. The Opponent has particularised the ground of opposition in the SGP by reference to the substantial reputation that it has established in the Opponent’s Trade Marks, the Logo Mark and other marks that contain or feature the Opponent’s Trade Marks or Logo Mark.  The Opponent then notes that as a result of the significant reputation in the Special K brand and Opponent’s Trade and Logo Marks, consumers are likely to be confused that the Applicant’s Goods and Services are in some way associated with these marks or otherwise convey false or misleading representations to the public.  

8. Doran 1 and 2 contain sufficient evidence to support a view that the Opponent’s Trade and Logo Marks have acquired a substantial reputation in Australia at the relevant date.  The Opponent’s Trade and Logo Marks have been used in Australia for over 50 years and there have been substantial sales of products bearing the Opponent’s Trade and Logo Marks.

9. However, I find that the reputation that the Opponent has in Opponent’s Trade and Logo Marks is limited to the Opponent’s Goods, and not to any fitness products that the Applicant has provided customers as part of promotions connected to the Opponent’s Goods, or health, fitness and well-being generally.  The Opponent (and Kellogg Australia) have never offered for sale goods that relate to health, fitness and well-being generally.  To the extent that the Opponent and Kellogg Australia have offered free products as part of a promotion, such give-aways are merely incidental to the use of the Opponent’s Trade and Logo Marks for the Opponent’s Goods not a separate or distinct business for which the Opponent earns revenue.  Equally, I do not find that advertisements of the Opponent’s Goods that discuss their health benefit or sponsorship of sports teams and events are sufficient to establish that the Opponent’s Trade and Logo Marks have acquired a substantial reputation in Australia for goods and services outside of which they are commercially used, namely the Opponent’s Goods.

10. It is not sufficient for the Opponent merely to establish that one (or more) of its nominated trade marks has a significant reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:  

    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 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 observations of men considered in the mass affords the standard.[10]

    [10] (1937) 58 CLR 641, 658.

11. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[11]

    [11] [1979] RPC 410, 423 (citation omitted).

12. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

    A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[12]

    [12] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.

13. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

    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.

    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.[13]

    [13] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

1. The Trade Mark is identical to the Opponent’s Trade Mark however on the face of it the Applicant’s Goods and Services are very different from the Opponent’s Goods. The Opponent’s submissions on this point (and indeed the s42(b) ground of opposition) appear to suggest that because concerted effort has been made by the Opponent and Kellogg Australia to focus its promotion of the Opponent’s Trade Marks and Logo Mark in the fields of sport, health, fitness and wellbeing, the use of the Trade Mark by the Applicant for the Applicant’s Goods and Services, which are also in the field of sports and well-being, would be likely to deceive and cause confusion.

2. I do not accept the Opponent’s Submissions. I have already found that the reputation of the Opponent’s Trade and Logo Marks is limited to the Opponent’s Goods. While there is no requirement in the Act for the reputation of a nominated trade mark to be in respect of similar goods or closely related services, the similarity or dissimilarity in goods/services is relevant in considering the likelihood of confusion[14].  The Applicant’s Goods and Services are dissimilar to the Opponent’s Goods.  They are generally sold in different retail environments (clothing stores compared to grocery stores), and the Applicant’s Goods and Services (particularly the Class 41 services) are generally purchased with some care. 

   [14] See Qantas Airways Limited v Edwards [2016] FCA 729, [143].

3. Furthermore, I consider that it is established on the evidence that a great many people have heard of the Opponent’s Trade and Logo Marks and they would be aware that for the past 50 years the Opponent’s Trade and Logo Marks have only been used for the Opponent’s Goods.  The Opponent is known as a manufacturer of cereal and related products, and the evidence before me appears to indicate that it has never supplied non-foodstuff products except as apart of its promotions incidental to the supply of the Opponent’s Goods.  Given this, I do not consider that ordinary members of the public, at the priority date, would consider the Applicant’s Goods and Services bearing the Trade Mark to be a brand extension of the Opponent’s Trade and Logo Marks.[15] I consider that a consumer upon seeing the Trade Mark applied to the Applicant’s Goods and Services, for example sports clothing or sports coaching services would either not think of the Opponent, or think of the Opponent and immediately dismiss the possibility of the Opponent’s involvement due to the difference between the Applicant’s Goods and Services and the Opponent’s Goods. I do not find that because of the reputation of the Opponent’s Trade or Logo Marks, that there is a real, tangible danger that the use of the Trade Mark would deceive or cause confusion and hence I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

Section 42

[15] See a similar discussion on this point in Qantas Airways Limited v Edwards [2016] FCA 729, [177].

1. Section 42 of the Act is reproduced below:

   42 Trade mark scandalous or its use contrary to law

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

   (a) the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law.

2. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[16]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[17]

   [16] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [17] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004]  59 IPR 343, 353.

3. The ground of opposition pursuant to s 42 of the Act was particularised in the SGP on a similar basis to the s 60 ground of opposition, namely the existing reputation in the Opponent’s Trade Marks was such that the use of the Trade Mark would constitute conduct in breach of s18 and 29 of the Australian Consumer Law (‘ACL’)[18], passing off, and trade mark infringement pursuant to s120(3) of the Act:

   [18] Set out in Schedule 2 of the Competition and Consumer Act 2010 (Cth).

4. The argument in respect of s120(3) of the Act was not pursued in the submissions, and can be dealt with by noting that upon registration, any use by the Applicant of the Trade Mark for the Applicant’s Goods and Services would be the exercise of use of a trade mark given to a person under the Act, a defence to infringement pursuant to s 122(1)(e) of the Act.

5. With respect to the remaining arguments set out in the Opponent’s Submissions, I note that the test for misleading or deceptive conduct under s 18 of the ACL is a more stringent one than that for deception or confusion under s 60,[19] and as I have found that the Opponent has failed to establish that ground I find also that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [19] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

6. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[20] Section 53 of the TPA is the equivalent provision to s 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[21]

   [20] [2003] FCA 104, [107].

   [21] [1989] FCA 506, [40] (citations omitted).

7. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Section 43

1. Section 43 of the Act is reproduced below:

   43 Trade mark likely to deceive or cause confusion

   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.

2. To establish a ground of opposition under section 43 of the Act, there must be an inherent connotation present within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [22]

   [22] [2006] FCA 1663, [53].

3. In Winton Shire Council v Lomas Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [23]

   [23] [2002] FCA 288; (2002) 119 FCR 416; (2002), [19].

4. The ground of opposition pursuant to s 43 of the Act was particularised in the SGP as referring to the similarity between the Trade Mark and the Opponent’s Trade Marks; in short on the same basis as that under s 60 (that is, the existence of and the reputation in a prior registered or unregistered trade mark). As can be seen in the case law referred to above, that is not the appropriate consideration as the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in its own trade mark.

5. The reference in the Opponent’s Submissions to George Schmidt v Down to Earth (Victoria) Co-operative Society Limited[24] to suggest that there is scope under s43 for the Registrar to find that the Trade Mark is likely to deceive or cause confusion because the use of the Trade Mark could create a situation where consumers consider that the Applicant’s Goods and Services are endorsed by the Opponent, is misconceived. As noted in Pfizer Products Inc v Karam referred to above the connotation must flow from the secondary meaning in the Trade mark itself; i.e. that the secondary meaning in the Trade Mark would result in an implied endorsement.  No argument has been made that the Trade Mark has any secondary meaning and as such the Opponent’s Submissions on this point cannot succeed.

   [24] [1998] ATMO 10; 41 IPR 632.

6. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Goods and Services, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

Section 58

1. Section 58 of the Act is reproduced below:

   Section 58. Applicant not owner of trade mark

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

   Note:For applicant see section 6.

2. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:

   ·    that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent;[25]

   ·    that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods  for which the trade mark(s) relied upon by the Opponent was used;[26] and

   ·    a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the trade mark by the Applicant.[27]

   [25] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   [26] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   [27] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

3. The ground under s 58 of the Act was particularised in the SGP by reference to the similarity between the Trade Mark and the Opponent’s Trade Marks, which have been used prior to the Priority Date. The Opponent’s Submissions, in respect of the requirement that the Opponent’s Trade Marks be used for ‘the same kind of thing’, make reference to:

   ·    The Opponent’s Trade Marks being used in relation to the ‘Special K Red Mini Skirt Challenge’ and the ‘Special K Jeans Challenge’ which aimed to promote a sustainable level of fitness.

   ·    The use of the Opponent’s Trade Marks on sport and exercise merchandise, including exercise plans, exercise books and Pilates videos.

   ·    The use of the Opponent’s Trade Marks in respect of various sporting campaigns, notably the sponsorship of the 1994 of the Australian Commonwealth Games team.

4. On the evidence before me and as noted in my early comments with respect to the s 60 ground of opposition, the Opponent (and Kellogg Australia) have never offered for sale goods that relate to health, fitness and well-being generally and certainly not for sale under the Opponent’s Trade Marks. To the extent the Opponent has promoted fitness and offered exercise merchandise as part of a promotion (and sponsored sporting teams) such activities are merely incidental to the use of the Opponent’s Trade Marks for the Opponent’s Goods not a separate or distinct business for which the Opponent earns revenue.

5. In order for the Opponent to succeed under this ground it is necessary to show that the Opponent’s Trade Marks were used as a Trade Mark by the Opponent and the Applicant’s Goods and Services are the ‘same kind of thing’ as the services for which the trade marks relied upon by the Opponent were used.  I find that the Opponent has only used the Opponent’s Trade Marks for the Opponent’s Goods, with any other application of the Opponent’s Trade Marks being for promotional purposes incidental to the use of the Opponent’s Trade Marks for the Opponent’s Goods. 

6. In respect of the ‘same kind of thing’ the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews stated as follows:

   The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[28]. …

   In respect of the Applicant’s services, I am not aware of any court authorities which discuss whether services may be “the same kind of thing” as goods, although the Registrar has at times considered the question. For example in The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Pty Ltd[29] the delegate considered the service of providing refreshments for immediate consumption (such as hot tea and coffee) not to be the same kind of thing as those goods in packaged, dry form to be later prepared for drinking. In James Arthur Daemar v Howe Laboraties, Inc[30] the delegate considered that the “treatment of common metals and their alloys, motors and engines” was not the same kind of thing as a conditioning additive for motor oil on the basis that the additive achieved only a temporary change in engine performance, not a transformation of the type contemplated by class 40.[31][32]

   [28] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

   [29] [2003] ATMO 61.

   [30] [1996] ATMO 48.

   [31] Australia adopts the Nice Classification of Goods and Services, and in the sixth edition of it (relevant at the time of the decision) the Explanatory Notes to class 40 stated that that class “includes, in particular services relating to transformation of an object or substance and any process involving a change in its essential properties” but did not include maintenance or repair services of the type contemplated by class 37.

7. The Opponent does not submit, and I do not find, that the Opponent’s Goods offered by the Opponent under the Opponent’s Trade Marks prior to the Priority Date are the same kind of thing as Applicant’s Goods and Services. As such the Opponent has not established the ground of opposition under s58.

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1685319 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Nicholas Smith
Hearing Officer
Trade Mark and Designs Hearings
18 April 2017

[32] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14].