Kicking Horse Coffee Co. Ltd
[2018] ATMO 193
•28 November 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1788446 (30, 43) - KICK ASS - in the name of Kicking Horse Coffee Co. Ltd.
Delegate: | Katrina Brown |
Representation: | Ben Hamilton of Hall & Wilcox Lawyers |
Decision: | 2018 ATMO 193 Trade Marks Act 1995 – section 33 proceedings – s 44 – deceptively similar – amendment to specification – trade mark application accepted. |
Background
This matter is an ex parte proceeding pursuant to section 33 of the Trade Marks Act 1995 (‘the Act’) involving an application to register the following trade mark.
Trade Mark No: | 1788446 |
Trade Mark: | KICK ASS (‘the Claimed Mark’) |
Applicant: | Kicking Horse Coffee Co. Ltd (‘the Applicant’) |
Priority Date: | 9 August 2016 |
Specification: | Class 30: Coffee, coffee beans, ground coffee, freeze-dried coffee, instant coffee, decaffeinated coffee, coffee blends, flavoured coffee, coffee products, coffee essences, artificial coffee, coffee extracts, coffee concentrates, coffee flavourings, additives for coffee, coffee-based beverages and preparations; iced coffee; tea, tea extracts, tea-based beverages and preparations; iced tea; malt-based preparations for human consumption; cocoa and cocoa based beverages and preparations; chocolate, chocolate products, chocolate-based beverages and preparations |
The application was examined and a ground for rejection was raised under s 44 of the Act on the basis of the following trade mark numbers: 1165039; 1165042 and 1371236.
Trade Mark numbers 1165039 and 1165042 have now been removed from the Register and as such are no longer a barrier to the acceptance of the Claimed Mark. The details of the remaining citation under s 44 of the Act are as follows:
Trade Mark No: | 1371236 |
Trade Mark: | (‘the Cited Trade Mark’) |
Owner: | Salas Holdings Pty Ltd |
Priority Date: | 9 July 2010 |
Specification: | Class 43: Services for providing food and alcoholic and non-alcoholic drinks including take-away food services, restaurant services and cafeteria services |
In respect of the Cited Trade Mark the first examination report stated:
Your trade mark closely resembles the earlier trade marks because they all contain the phrase KICK ASS, as a prominent, memorable feature. I do not consider the overall differences between the trade marks to be sufficient to prevent confusion. Consumers are likely to assume that the goods/services covered by your trade mark and the earlier trade mark are from the same trader, or are otherwise related.
1371236 claims Class 43: Services for providing food and alcoholic and non-alcoholic drinks including take-away food services, restaurant services and cafeteria services which covers the same/similar services as your own claims in class 43. It also covers related services to your own claims in class 30 relating to coffee products. This is because the broad claims of the earlier trade mark would include café/coffee house/shop services.
In response to an enquiry from the Applicant, the examiner provided further clarification in respect to what goods in class 30 were closely related to the services of the Cited Trade Mark and why:
Coffee, coffee beans, ground coffee, decaffeinated coffee, coffee blends, flavoured coffee, coffee products, coffee-based beverages and preparations
These goods are problematic because they are, or would include, ground coffee products as well as coffee beans
The office considers these specific goods to be in conflict with cafes and coffee-houses, in view of the fact that in the 21st century, it is becoming more common for coffee shops/cafes to market coffee under their own trade marks for consumers to brew at home.
Some well-known examples of this are brands such as Starbucks and Gloria Jean’s Coffee. Other cafes in Australia who roast and sell their own coffee under the same brand name as the café, are as follows: Seven Seeds; Peaberry’s; Wolff Coffee Roasters and Duke’s Coffee (the website addresses have been omitted).
The Applicant then made submissions in response to the first examination report. The examiner was of the opinion that those submissions were not sufficient for the ground for rejection to be withdrawn.
After the second examination report, the Applicant requested to be heard. The matter came before me, a delegate of the Registrar of Trade Marks, on 20 July 2018. Ben Hamilton of Hall & Wilcox Lawyers made written and oral submissions on behalf of the Applicant.
As a preliminary matter I mention that the focus here is not to review the examiner’s decisions and rationale, but rather to consider afresh the ground for rejection that has been raised.
Section 44
Section 44 of the Act relevantly provides:
(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.
…
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
…
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitation that the Registrar thinks fit to impose…
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Subject to s 44(3) and 44(4), I must reject the Claimed Mark if I am satisfied that the Cited Trade Mark:
has an earlier priority date than the Claimed Mark;
is held in the name of a person other than the Applicant;
is in respect of services which are similar or closely related to the services and goods of the Claimed Mark; and
is substantially identical with, or deceptively similar to, the Claimed Mark.
The details of the Cited Trade Mark are set out above at [3] of this decision. From those details it is evident that the Cited Trade Mark is held in a name other than that of the Applicant and it is has an earlier priority date than that of the Claimed Mark.
My next consideration is whether the services of the Cited Trade Mark are similar to those of the Claimed Mark, or closely related to the goods of the Claimed Mark.
Comparison of goods and services
Pursuant to s 14(2) of the Act, ‘similar services’ are services that are the same or of the same description.
The test for determining similar services has generally been equated with the principles applicable to determining similar goods.[1] The factors to be considered include the nature and respective uses of the services and the trade channels through which the services are made available to the consumer.
[1] MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616.
In the terms set out in s 14(2) and the relevant authorities[2] I consider the following to be similar services:
[2] Jellinek’s Application (1946) 63 RPC 59; Beck, Koller & Company’s Application (1947) 64 RPC 76.
| Claimed Mark | Cited Trade Mark |
| Class 43: Services for providing food and drink; restaurant and cafe services; coffee bar and coffee house services (provision of food and drink); coffee shop services; tea room services; preparation of take-away food and fast food; provision of carry out food and beverages; catering services (Being all of the services of the Claimed Mark) | Class 43: Services for providing food and alcoholic and non-alcoholic drinks including take-away food services, restaurant services and cafeteria services (Being all of the services of the Cited Trade Mark) |
The Applicant’s submissions do not argue otherwise, instead they focus on whether coffee beans and ground coffee are closely related to services for providing food and drink. In this respect, I understand the Applicant’s position to be that coffee beans and ground coffee are neither food, or drink and as such they should not be considered closely related to services for providing food and drink.
Before delving into the concept of closely related, it is helpful to clarify two matters. Firstly, it is convenient to note the scope of the Cited Trade Mark’s registration in class 43. The Cited Trade Mark is registered in respect of services for providing food and alcoholic and non-alcoholic drinks and by virtue of the word ‘including’ is not limited to take-away food services, restaurant services and cafeteria services. In effect the Cited Trade Mark is registered in class 43 in respect of any service for providing food and drink including the provision of food and drink by cafes, coffee houses and the like.
Secondly, in the hearing submissions the Applicant submits that:
the key consideration to be addressed under section 44 of the TMA when examining the Applicant’s Mark is not whether café/coffee house/shop services also sell coffee beans and ground coffee but rather whether the Cited Services include the provision of coffee beans and ground coffee (that is; the provision of goods other than food and drink).[3]
Whether the services of the Cited Trade Mark include the provision of coffee beans and ground coffee is a factor which might be relevant in determining whether the goods and services in this matter are closely related. However the key consideration in respect of s 44(1)(a)(i) is whether coffee beans, ground coffee and other coffee goods of the Claimed Mark are closely related to the services of the Cited Trade Mark namely the provision of food and drink. At the heart of it, is whether ground coffee or coffee beans are closely related to the provision of coffee (as a drink) by a café.
[3] Hearing submissions [7.8].
Closely related goods and services
The words ‘closely related’ are not defined in the Act. In the Registrar of Trade Marks v Woolworths French J made the following observations:
The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related"… it is a term of wider import than “similar”…[4]
[4] [1999] FCA 1020 [37] (‘Woolworths’).
In 1979 around the time when the concept of closely related was first introduced into Australian trade mark legislation, FJ Smith, the then Registrar of Trade Marks explained the nature of the relationship between goods and services that would support a finding that they were closely related:
It will be an exercise of the Registrar’s judgement and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.[5]
[5] F J Smith, The Trade Marks Amendment Act 1978 (1979) 53 ALJ 118, 120. Referred to by French J in Woolworths and by Yates J in Qantas Airways Limited v Edwards [2016] FCA729 [107].
In Woolworths French J stated that the ‘relationships may, and in perhaps most cases will, be defined by the function of the service with respect to the goods’.[6] Similarly, in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co Lockhart J stated that ‘confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods’.[7]
[6] [1999] FCA 1020 [38].
[7] (1983) 77 FLR 139, 150.
The Applicant directed me to the factors for determining whether goods and services are closely related as set out in Aussat Pty Ltd.[8] The first two factors set out in that decision are as follows:
are the services performed directly upon or by means of the goods? If so,
are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry?
The remaining factors listed in Aussat are most applicable to specialised goods or services such as those that were at issue in that matter.[9] I also note that after listing the factors, the Registrar’s delegate remarked:
The list of criteria is not exhaustive, neither, I think it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be.[10]
[8] [1993] ATMO 55 (‘Aussat’).
[9] Kellogg Company v Exxon Company [2001] ATMO 67.
[10] Ausssat, above n 8.
The Applicant also drew my attention to Part 26.4.3.1 of the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) which provides guidance in relation to whether retail services in class 35 are closely related to goods. Putting to one side the fact that the relevant services in this matter are in class 43, the salient point that emerges from this part of the Manual, is whether consumers have come to expect that the goods and the services typically originate from the same source. An affirmative answer to this question weighs in favour of the goods and services being closely related.
The issue of whether class 30 goods are closely related to services for providing food and drink has been canvassed in various cases and decisions. It is fair to say that the path that has been carved out is a particularly windy one, with decisions not always wholly reconcilable with one another. In Sizzler Restaurants International Inc v Sabra International Pty Ltd[11] goods in class 30, including a specific claim for coffee, were found not to be closely related to services including the provision of food or drink not being takeaway services. In contrast, in Aroma Coffee & Tea Co Pty Ltd v Aromas Pty Ltd[12] goods in class 30, including a specific claim for coffee, were considered to be closely related to café services, catering services, restaurant and bar services, coffee shop services, take away food and drink services.
[11] (1990) 20 IPR 331 (‘Sizzler’). I note that this was decided under the 1955 Act where the applicant bore the onus of satisfying the Registrar that there was no reasonable probability of confusion.
[12] [1997] ATMO 82.
Turning to the matter at hand, it is difficult to imagine how a café providing barista made coffee as a beverage, would be able to do so without using ground coffee or coffee beans. It is not unusual for cafes to announce, usually via signboards near the entrance to the café, the brand of coffee beans, or ground coffee, that they use to make the finished beverage. Whether you see coffee as a way of life, or you just need it to get through the day (even if it is decaf), there is an ever increasing likelihood that you will be aware of the brand of coffee beans that the café uses to make your morning flat white.
It is now common, although I appreciate that it may not have been in the past[13], for cafés to sell ground coffee and coffee beans alongside and in addition to providing coffee as a beverage. In this respect, the Applicant concedes the following:
The Applicant does not take issue that cafes, coffee shops or coffee houses may from time to time sell whole coffee beans or ground coffee along with coffee as a finished beverage and other items of food and drink. The Applicant does not dispute that coffee shops or cafes may also market and sell their own trade marks in relation to coffee beans or ground coffee for consumers to brew at home.[14]
[13] McDonald’s Inc v Future Enterprises Pte Ltd [2007] ATMO 22; Societe Des Proucits Nestle SA v Cosi Sandwich Bar, Inc [2002] ATMO 113.
[14] Hearing submissions [7.7].
The examiner provided the Applicant with the following examples of cafés that market their services for providing food and drink, and their coffee beans or ground coffee, under the same brand name: Seven Seeds; Peaberry’s; Wolff Coffee Roasters and Duke’s Coffee.
From my own knowledge, which I am entitled to refer to, I am aware that the following cafés market their services for providing food and drink, and their coffee beans, under the same name:
| Coffee beans | Services for providing food & drink |
| Ona | Ona Coffee House Café Ona Marrickville Ona Manuka |
| Toby’s Estate | Toby’s Estate Signature Cafe |
| Campos | Campos Coffee Newtown Campos Coffee Alexandria Campos Coffee Dulwich Hill Campos Coffee Barangaroo Campos Coffee Carlton |
The examples provided by both myself and the examiner are illustrative of a market in which consumers have come to expect that the goods and the services typically originate from the same source.
It is also worth noting, that unlike supermarkets that stock ‘hundreds, perhaps thousands, of different lines produced by numerous manufacturers’,[15] cafes will generally only sell and use one brand of coffee beans. This increases the likelihood of a consumer assuming a connection between the source of the goods and services.
[15] Woolworths Ltd v Registrar of Trade Marks [1998] FCA 1268.
Considering all of the above it is my opinion that the relationship, between ground coffee, coffee beans and other coffee goods in class 30, and the provision of coffee as a beverage by a café, is neither tenuous nor remote. I am satisfied that they are closely related goods and services.
Comparison of trade marks
The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:
they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[16]
[16] [1963] HCA 66 [12] (‘Shell’).
The test for substantial identity involves a side by side comparison, as such I have reproduced the Claimed Mark and the Cited Trade Mark below:
KICK ASS
There are differences between the trade marks, the most obvious being the additional words and the device of a donkey in the Cited Trade Mark. These differences are unlikely to go unnoticed on a side by side comparison. In my opinion, the Claimed Mark is not substantially identical with the Cited Trade Mark.
My next consideration is whether the Claimed Mark is deceptively similar to the Cited Trade Mark.
Deceptively similar
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred 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 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.[17]
[17] [1979] RPC 410, 423.
In Shell Windeyer J provided the following insights on deceptive similarity:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.
Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[18]
[18] [1963] HCA 66 [13].
As such, I must estimate the impression that a person of ordinary intelligence and memory would have of the Claimed Mark and of the Cited Trade Mark. In doing so it is useful to note:
that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.[19]
[19] de Cordova v Vick Chemical Co (1951) 68 RPC 103, 106.
The Claimed Mark consists of the slang expression ‘kick ass’, without any embellishments or other elements. The expression ‘kick ass’ is the essential feature of the Claimed Mark.
The Cited Trade Mark consists of three lines of text: the word ‘flavour’ is on the first line; ‘that kicks’ is on the second line; and ‘ass’ is on the third line. For ease of reference, I will refer to this text collectively as a slogan. To the right of the slogan is an image of a donkey.
The Applicant submits that the dominant cognitive cues[20], or essential features, of the Cited Trade Mark are the image of the donkey and the positioning of the words ‘flavour’ and ‘ass’.
[20] This expression was used in Accor Australia & New Zealand Hospitality Ltd v Liv Pty Ltd [2017] FCAFC 56. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 [51] it was confirmed that the dominant cognitive cues are the essential features of a trade mark.
I am not convinced that the positioning of any of the words is an essential feature of the Cited Trade Mark. Although I do accept that the word ‘ass’ has some prominence due to it being much larger than any of the other words in the Cited Trade Mark. Notwithstanding that prominence, the grammatical construction of the slogan is such that the emphasis is placed on the verb ‘kicks ass’. ‘Kicks ass’ is highly distinctive and has no descriptive or other significant connection with the services. Furthermore as ‘kicks ass’ is a known expression, I’m inclined to think that a person of ordinary intelligence and memory would naturally recall the expression rather than the single word ‘ass’.
In my opinion the expression ‘kicks ass’, is likely to be carried away and retained in the mind of an ordinary consumer. I also accept that the image of the donkey may make a lasting impression on the mind of some consumers. Although I do note that where a trade mark combines a device with a word (or words), customers will more naturally refer to the word.[21]
[21] Sizzler.
Having regard to the similarity of the impressions, I must now decide whether there is a real and tangible likelihood of confusion or deception. In doing so, I must consider the use to which the Applicant can properly put the Claimed Mark.[22] The Claimed Mark consists of capital letters in an ordinary font; it is completely unadorned. The Applicant could notionally use the Claimed Mark in a variety of fair and normal manners including varying the size of the word ‘ass’ in relation to the word ‘kick’ such as in the example below.
KICK ASS
[22] Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43.
In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’.[23] Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[24] Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source.[25]
[23] [2013] FCAFC 153 [70].
[24] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105].
[25] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110, 113.
In my opinion there is a real and tangible danger of confusion. To put it plainly, a person who knew of the Cited Trade Mark and had a general recollection or impression of it (i.e. ‘the kicks ass one, you know the one with the donkey’) would, on encountering the Claimed Mark, wonder whether the trade source of the ‘kick ass’ goods and services was the same as the ‘kicks ass one, you know the one with the donkey’.
I am satisfied that there is a ground for rejection under s 44 of the Act in relation to all of the services of the Claimed Mark in class 43, and in relation to the following goods in class 30:
Coffee, coffee beans, ground coffee, freeze-dried coffee, instant coffee, decaffeinated coffee, coffee blends, flavoured coffee, coffee products, coffee essences, artificial coffee, coffee extracts, coffee concentrates, coffee flavourings, additives for coffee, coffee-based beverages and preparations; iced coffee.
Prior use, honest concurrent use or other circumstances
Sections 44(3) and 44(4) of the Act enable a trade mark to be registered, which would otherwise be rejected under s 44(1) or 44(2), on the basis of honest concurrent use, other circumstances or continuous prior use.
In this matter, there is nothing before me to support the application of s 44(3) or s 44(4).
Decision
Section 33 of the Act provides:
Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.
Note: For this Act see section 6.
(2)The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(3)If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note: For this Act see section 6.
(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note: For applicant see section 6.
I am satisfied that there is a ground for rejecting the Claimed Mark under s 44 of the Act.
The ground for rejection relates to all of the services of the Claimed Mark in class 43 and to the goods in class 30 as set out in [48] of this decision.
I informed the Applicant’s representative that it was my intention to reject the Claimed Mark unless the specification was amended to:
Class 30: tea, tea extracts, tea-based beverages and preparations; iced tea; malt-based preparations for human consumption; cocoa and cocoa based beverages and preparations; chocolate, chocolate products, chocolate-based beverages and preparations
Class 43: deleted in its entirety
On 16 November 2018 the Applicant’s representative filed a divisional application in respect of all of the services in class 43 and the coffee related goods in class 30. The divisional application was examined and the specification of the parent (being the Claimed Mark) was amended to the goods in class 30 listed above at [54] of this decision.
As a result the Claimed Mark can now proceed to registration.
Katrina Brown
Hearing Officer
Trade Mark Hearings & Oppositions
28 November 2018
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