KFC THC v Ltd v Grill'd IP Pty Ltd - [2023] ATMO 192

*
TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by KFC THC V Ltd to registration of the trade mark subject of application 2119899 (29, 30) – HFC – in the name of Grill'd IP Pty Ltd

Delegate: Robert Wilson
Representation: Opponent: Gabriella Rubagotti of Counsel, instructed by Baker McKenzie
Applicant: Ed Heerey KC, instructed by Davies Collison Cave Pty Ltd

Decision: 2023 ATMO 192
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 60 and 62A considered – none established – nexus between application and impugned behaviour of applicant considered – trade mark may proceed to registration

Background

This decision concerns an opposition to registration of the trade mark which is the subject of the application for registration detailed below. The application is in the name of Grill'd IP Pty Ltd (‘Applicant’). The opposition was brought by KFC THC V Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth).[1]
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

Trade Mark:

HFC

(‘Applicant’s Trade Mark’)

Application Number:

2119899

Filing Date:

14 September 2020

Specification:

Class 29: (including) Foodstuffs and beverages in this class prepared for human consumption

Class 30: (including) Foodstuffs and beverages in this class prepared for human consumption

Full specification appears in the annexure to this decision.

(‘Applicant’s Goods’)

Following advertisement of the application’s acceptance in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose registration of the Applicant’s Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’). The SGP nominated grounds of opposition under ss 42(b), 43, 44, 60 and 62A. The Applicant subsequently filed a Notice of Intention to Defend.
Evidence
The Opponent filed Evidence in Support of its opposition, being:
·Declaration made on 19 October 2021 by Sally Spriggs, the Marketing Director at Kentucky Fried Chicken Pty Ltd, with Annexures SS-01 to SS-42 (‘Spriggs declaration’).
The Applicant filed Evidence in Answer, being:
·Declaration made on 5 September 2022 by Aimee Pomogacs, the Group Legal Counsel of the Applicant, with Exhibits AP-1 to AP-30 (‘Pomogacs declaration’); and
·Declaration made on 6 September 2022 by Nicholas Butera, Registered Trade Mark Attorney and Senior Associate employed by Davies Collison Cave Pty Ltd, with Exhibits NPB-1 to NPB-18 (‘Butera declaration’).
The Opponent did not file Evidence in Reply.
Once the time allowed for filing evidence had ended both parties requested to be heard. I am a delegate of the Registrar of Trade Marks. In that capacity, I heard the matter on 1 September 2023. Gabriella Rubagotti of Counsel, instructed by Baker McKenzie, appeared for the Opponent. Ed Heerey KC, instructed by Davies Collison Cave Pty Ltd, appeared for the Applicant. Counsels’ oral submissions were…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] ATMO 192
Decision Date: 27 November 2023

CaseChat Overview and Summary

This matter concerned an opposition by KFC Pty Ltd (the Opponent) to the registration of a trade mark by Grill'd IP Pty Ltd (the Applicant). The Opponent filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars, nominating grounds under sections 42(b), 43, 44, 60, and 62A of the *Trade Marks Act 1995* (Cth). The Applicant subsequently filed a Notice of Intention to Defend. Evidence was filed by both parties, and the matter was heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether any of the grounds of opposition raised by the Opponent had been established. These grounds related to the potential for deception or confusion, the distinctiveness of the mark, and whether the applicant was entitled to registration. The Opponent, part of the Yum! Group, argued it held significant brand recognition in Australia through its KFC restaurants, associated slogans, and imagery, and owned registered trade marks incorporating these elements.

The delegate considered the evidence and submissions presented by both parties. The Opponent's evidence detailed its extensive history and brand presence in Australia, including its use of the "KFC" initials, the "It's Finger Lickin' Good" slogan, and the image of Colonel Sanders. The Opponent also highlighted its ownership of registered trade marks featuring these elements. However, the delegate found that the Opponent had failed to establish any of the grounds of opposition it had nominated.

Ultimately, the delegate decided that the Applicant's trade mark application could proceed to registration. The Opponent was ordered to pay the Applicant's costs in accordance with the relevant regulations, as it had not succeeded in its opposition.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Following advertisement of the application’s acceptance in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose registration of the Applicant’s Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’). The SGP nominated grounds of opposition under ss 42(b), 43, 44, 60 and 62A. The Applicant subsequently filed a Notice of Intention to Defend. Evidence The Opponent filed Evidence in Support of its opposition, being: ·Declaration made on 19 October 2021 by Sally Spriggs, the Marketing Director at Kentucky Fried Chicken Pty Ltd, with Annexures SS-01 to SS-42 (‘Spriggs declaration’). The Applicant filed Evidence in Answer, being: ·Declaration made on 5 September 2022 by Aimee Pomogacs, the Group Legal Counsel of the Applicant, with Exhibits AP-1 to AP-30 (‘Pomogacs declaration’); and ·Declaration made on 6 September 2022 by Nicholas Butera, Registered Trade Mark Attorney and Senior Associate employed by Davies Collison Cave Pty Ltd, with Exhibits NPB-1 to NPB-18 (‘Butera declaration’). The Opponent did not file Evidence in Reply. Once the time allowed for filing evidence had ended both parties requested to be heard. I am a delegate of the Registrar of Trade Marks. In that capacity, I heard the matter on 1 September 2023. Gabriella Rubagotti of Counsel, instructed by Baker McKenzie, appeared for the Opponent. Ed Heerey KC, instructed by Davies Collison Cave Pty Ltd, appeared for the Applicant. Counsels’ oral submissions were supplemented by written submissions filed prior to the hearing.The Opponent According to the Spriggs declaration:The Opponent is part of an international group of companies (‘Yum! Group’) which operates a network of wholly owned and franchised restaurants. The Yum! Group operates and franchises restaurants under a number of brands, including KFC, Pizza Hut and Taco Bell in Australia. The Yum! Group comprises over 1.5 million employees and franchise associates globally and it operates restaurants in more than 150 countries and territories.KFC, originally known as ‘Kentucky Fried Chicken’, is a global quick service restaurant brand which it headquarters in Louisville, Kentucky, USA. It was founded by Colonel Harland Sanders … in Kentucky in 1930 …By 1963, there were 600 ‘Kentucky Fried Chicken’ restaurants across the United States and Canada. …Key elements of the KFC brand were developed in the 1950s and remain in use today. These include:(a)red and white vertical stripes;(b)‘It’s Finger Lickin’ Good’ slogan; and (c)Colonel Sanders’ image.The first ‘Kentucky Fried Chicken’ franchise opened in Guilford, NSW on 27 April 1968. …The Yum!Group first adopted the name ‘KFC’ in 1991. The initials ‘KFC’ were already widely used by consumers in the marketplace to refer to ‘Kentucky Fried Chicken’ restaurants. …[I]n the 1990s the number of KFC restaurants in Australia was expanded to 370 restaurants.There are now over 25,000 KFC restaurants in more than 145 countries and territories around the world … In Australia, there are over 680 KFC restaurants and over 34,000 local employees.

Decision

Reasons for decision

Section 55 relevantly provides:55Decision(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:(a)to refuse to register the trade mark; or(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established.Note:For limitations see section 6. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, trade mark 2119899 may proceed to registration after one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.Costs The Applicant sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Marks Regulations 1995 (Cth).Robert WilsonHearing OfficerDelegate of the Registrar of Trade Marks27 November 2023AnnexureThe Applicant’s GoodsClass 29: Foodstuffs and beverages in this class prepared for human consumption; snack food products; all of the aforementioned goods being predominantly made from chicken, meat, poultry, game, fish, eggs, dairy, nuts, fruits and/or vegetables; burgers; meat burgers; vegetable burgers; fish burgers; chicken burgers; poultry burgers; game burgers; meat, chicken, poultry, fish and game, including hamburger patties; meat extracts; sausages; meat products; chicken products; vegetable products; fish products; poultry products; game products; chicken nuggets; fried chicken; food packs consistency primarily of fried chicken; fried fish; grilled meat; grilled fish; grilled chicken; grilled poultry; grilled game; processed meat, fish, poultry and vegetable based foods; croquettes; sandwich fillings; preserved, frozen, dried, candied and cooked fruits and vegetables including potato chips; vegetable salads; salads in this class; coleslaw; potato salad; salads containing meat, chicken, poultry, fish or game; fruit chips; fruit salads; pickles prepared from fruits and vegetables; potato and onion products included in this class; vegetable patties; eggs, milk and milk products including milk shakes and malted milks; beverages consisting predominantly of milk; milk based beverages; yoghurt based beverages; aerated beverages (predominantly of milk); almond milk based beverages; coconut milk and coconut milk based beverages; kefir (milk beverage); preserves and pickles; desserts in this class; cream desserts; cream products; cream dessert toppings; creme fraiche; curds; custard style products; desserts made wholly or principally of dairy products; dairy desserts (except ice cream or frozen yoghurt); yoghurt; dairy products; dairy puddings; edible jellies made from milk, fruit and vegetable products; jellies; fruit desserts; soya dessertsClass 30: Foodstuffs and beverages in this class prepared for human consumption; all of the aforementioned goods being predominantly made from coffee, tea, cocoa, flour, grains, pasta, cereals and/or rice; hamburgers; sandwiches, buns, rolls or burger rolls containing fried chicken; sandwiches, buns, rolls or burger rolls containing chicken; steak sandwiches; sandwiches; preparations made from bread; sandwiches containing meat, meat products, poultry, game, fish, egg, vegetables, steak or hamburgers; steaks, meat, poultry, game, fish, egg, vegetables, steak, patties or burgers contained in bread rolls; steaks and hamburgers (sandwich with filling); bread buns; hamburgers in buns; burgers in buns; bread; biscuits; pastries; cakes; confectionery; prepared desserts (chocolate based); flavoured toppings for desserts; prepared desserts (confectionery); prepared desserts (pastries); dessert mousses (confectioner); frozen desserts; ice cream desserts; ice desserts; mousse desserts; muesli desserts; non-dairy frozen dessert products; souffles (desserts); salads in this class; pasta salads; rice salads; salad dressings; salts included in this class, pepper, mustard, sauces, spices, vinegar, sauces (condiments); relishes

Ratio Decidendi

Legal Principle Established

The Applicant filed Evidence in Answer, being: ·Declaration made on 5 September 2022 by Aimee Pomogacs, the Group Legal Counsel of the Applicant, with Exhibits AP-1 to AP-30 (‘Pomogacs declaration’); and ·Declaration made on 6 September 2022 by Nicholas Butera, Registered Trade Mark Attorney and Senior Associate employed by Davies Collison Cave Pty Ltd, with Exhibits NPB-1 to NPB-18 (‘Butera declaration’). The Opponent did not file Evidence in Reply. Once the time allowed for filing evidence had ended both parties requested to be heard. I am a delegate of the Registrar of Trade Marks. In that capacity, I heard the matter on 1 September 2023. Gabriella Rubagotti of Counsel, instructed by Baker McKenzie, appeared for the Opponent. Ed Heerey KC, instructed by Davies Collison Cave Pty Ltd, appeared for the Applicant. Counsels’ oral submissions were supplemented by written submissions filed prior to the hearing.The Opponent According to the Spriggs declaration:The Opponent is part of an international group of companies (‘Yum! Group’) which operates a network of wholly owned and franchised restaurants. The Yum! Group operates and franchises restaurants under a number of brands, including KFC, Pizza Hut and Taco Bell in Australia. The Yum! Group comprises over 1.5 million employees and franchise associates globally and it operates restaurants in more than 150 countries and territories.KFC, originally known as ‘Kentucky Fried Chicken’, is a global quick service restaurant brand which it headquarters in Louisville, Kentucky, USA. It was founded by Colonel Harland Sanders … in Kentucky in 1930 …By 1963, there were 600 ‘Kentucky Fried Chicken’ restaurants across the United States and Canada. …Key elements of the KFC brand were developed in the 1950s and remain in use today. These include:(a)red and white vertical stripes;(b)‘It’s Finger Lickin’ Good’ slogan; and (c)Colonel Sanders’ image.The first ‘Kentucky Fried Chicken’ franchise opened in Guilford, NSW on 27 April 1968. …The Yum!Group first adopted the name ‘KFC’ in 1991. The initials ‘KFC’ were already widely used by consumers in the marketplace to refer to ‘Kentucky Fried Chicken’ restaurants. …[I]n the 1990s the number of KFC restaurants in Australia was expanded to 370 restaurants.There are now over 25,000 KFC restaurants in more than 145 countries and territories around the world … In Australia, there are over 680 KFC restaurants and over 34,000 local employees. The Opponent is the owner of a number of registered trade marks which are, variously, comprised solely of the letters ‘KFC’, the letters ‘KFC’ in combination with a drawn representation of Mr Sander’s face, and those two things in combination with vertical red and white stripes. The Opponent also owns a number of trade marks which are comprised solely of the words ‘It’s Finger Lickin’ Good’, solely of the words ‘Finger Lickin’ Good’ and solely of red and white vertical stripes.The Applicant

Trade Mark:	HFC	(‘Applicant’s Trade Mark’)
Application Number:	2119899
Filing Date:	14 September 2020
Specification:	Class 29: (including) Foodstuffs and beverages in this class prepared for human consumption Class 30: (including) Foodstuffs and beverages in this class prepared for human consumption Full specification appears in the annexure to this decision. (‘Applicant’s Goods’)