Latin Deli Pty Ltd v Gruma, S.A.B. de C.V
[2023] ATMO 149
•4 October 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Latin Deli Pty Ltd to registration of trade mark application 2085743 – MASA MIXTA– in the name of Gruma, S.A.B. de C.V.
Delegate: | Bianca Irgang |
Representation: | Opponent: Julie Simpson of Pizzeys Patent and Trade Mark Attorneys Pty Ltd Applicant: Malcolm Bell of Phillips Ormonde Fitzpatrick |
Decision: | 2023 ATMO 149 Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 44 and 60 grounds of opposition argued – no grounds of opposition established. |
Background
Gruma, S.A.B. de C.V. (‘the applicant’), filed trade mark application number 2085743 on 4 May 2020 in class 30 of the Nice Agreement Concerning the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark: MASA MIXTA (the ‘Trade Mark’)
Trade mark application no: 2085743
Priority Date: 4 May 2020
Specification: Class 30: Corn flour; corn dough flour; corn grits; corn meal; flour; corn dough; polenta; tortilla mixes; tamale mixes
Acceptance of the application for possible registration was advertised in the Australian Official Journal of Trade Marks dated 5 October 2020. Subsequently Latin Deli Pty Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).
The applicant then filed its Notice of Intention to Defend. Thereafter, the opponent and the applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’).
I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 21 July 2023. The opponent was represented by Julie Simpson of Pizzeys Patent and Trade Mark Attorneys Pty Ltd. The applicant was represented Malcolm Bell of Phillips Ormonde Fitzpatrick.
Grounds of Opposition
The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth ) (‘the Act’) and sections 44 and 60 were pursued at the hearing. The opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
Evidence
The evidence filed in this matter consists of the following declarations being:
Opponent’s evidence
Declaration of Benjamin Ayala, made on 3 August 2021 (‘Ayala Declaration’), and its exhibits BA-1 to BA-12.
Applicant’s evidence
Declaration of Rogelio Gonzalez made on 29 October 2021, and its exhibits 1 to 9.
Discussion
Section 44
Section 44 of the Act relevantly provides:
44 Identical etc. trade marks
(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.
To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:
a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and
the priority date(s) of the other person’s trade mark(s) is (are) the earlier.
The opponent is the registered owner of trade mark registration 592734 ‘MASA LISTA with devices’ and listed it along with trade mark registration 1843392 ‘MASA LISTA’ in support of its section 44 ground of opposition. Both of these trade mark registrations also have an earlier priority date to the Trade Mark. The Trade Mark covers the same and/or related goods in class 30 to those that relate to the opponent’s trade marks. Therefore, the remaining issue for me to determine is whether the Trade Mark is either substantially identical or deceptively similar to the previously registered trade marks put forward by the opponent. The details of those trade mark registrations are as follows:
Trade mark:
Trade mark registration: 592734
Priority Date: 18 December 1992
Specification: Class 30: Mexican style corn flour
Endorsement: The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.;
Registration gives no right to the exclusive use of the words MASA LISTA.
Trade mark: Masa Lista
Trade mark registration: 1843392
Priority Date: 9 May 2017
Specification: Class 35: Retail and wholesale services related to importation, sales and distribution of gourmet and fine Mexican and South American food products, foodstuff, ingredients, herbs, spices, condiments, flours, cornflour, beans, refried beans, whole grains, chillies, chilli sauces, maize and corn-based products, pickles, salsas, bottled and canned foods, sauces, soda drinks, general kitchenware and kitchen accessories, promotional services in the form of tasting food samples; providing advice to customers and consulting services related to the aforesaid services; business management planning, administration and research; managing and publishing of advertising material to an Internet web site; sales of a variety of goods via an Internet web site, computer network or from one or multiple retail or wholesale outlets, enabling customers to conveniently view and purchase those goods from a general merchandise Internet web site and retail or wholesale outlets; logistical distribution of advertising material for the aforesaid products; provision of space on web sites for advertising goods and services; advertising services relating to the aforesaid products and services; arrangement of advertising; arranging of demonstrations for advertising purposes; arranging of competitions for advertising purposes; arranging of displays for advertising purposes; arranging of presentations for advertising purposes; arranging the distribution of advertising samples in response to telephone enquiries; audio-visual displays for advertising purposes (preparation or presentation of); exhibitions (arranging) for marketing and commercial purposes; on-line advertising on a computer network; arranging of demonstrations of goods for marketing purposes; preparation of advertising material, preparation of advertising matter, preparation of printed matter; production of visual advertising matter; updating of advertising information on a computer data base
It is obvious that neither Masa Lista solus or MASA LISTA with device is substantially identical to the Trade Mark according to the side-by side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3]. While all of the respective trade marks contain the word ‘MASA’ this is where the similarities between them end. They each have a different second word which changes the visual and aural termination of each trade mark and precludes a finding of substantial identity.
[3] (1963) 109 CLR 407, 414.
I now consider whether the Trade Mark is deceptively similar to the earlier registered trade marks. Deceptive similarity is defined by section 10 of the Act, which states ‘[f]or the purposes of this Act, 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 determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, to the impression they would get from the opposed trade mark.[4] The probability of deception must be finite and non-trivial.[5]
[4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).
[5] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).
Trade mark registration 592734 consists of the words Masa Lista in plain text with the devices of corn and man playing a guitar with no colour limitations but does contain an endorsement being the preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995. Registration gives no right to the exclusive use of the words MASA LISTA. It is important to note that this endorsement does not apply to the expression MASA LISTA when applied to the opponent’s services, only to the opponent’s goods.
Trade mark registration 1843392 consists of the words MASA LISTA in plain text. It is fair to say that the main shared word elements of all the respective trade marks is the word MASA which is commonly understood in Latin American cuisine to be dough made from maize (corn) flour and used to make tortillas, tamales. The applicant has argued:
The basis of the argument of deceptive similarity in the current case is essentially the same as that rejected in Self Care[6]. That is, that the differences between the two are in respect of elements that are nonetheless visually and aurally similar. The High Court explicitly accepted that the only difference between BOTOX and PROTOX, being the first letter B versus the first letters PR which gave rise to syllables “BO” and PRO” which are “visually and aurally similar”. In the case at hand, there are also similarities between the two marks MASA LISTA and MASA MIXTA. However, it is submitted that the visual and aural differences and the surrounding circumstances are such that these two marks are less similar than the two marks at issue in Self Care. In Self Care the court also emphasised that it was necessary to consider the marks in the context of the relevant surrounding circumstances. In this case a relevant consideration is the fact that MASA LISTA has a descriptive meaning, which as noted above is READY DOUGH, with the word MASA meaning “dough”. Although not decisive, the fact that the two marks share the descriptive word MASA is relevant[7].
[6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (Self Care)
[7] See the discussion in Hatton Holdings (Vic) Pty Ltd as trustee for the Hatton Holdings (Vic) Trust v Knead (Holding) SAL [2022] ATMO 28
I agree with the applicant on these points. The opponent has argued:
The Applicant’s mark comprises the word MASA, which is also the first word of the Opponent’s mark. The second word MIXTA in the Applicant’s mark is visually and aurally similar to the word LISTA. Both words are 5 letters long. The second, fourth and fifth letters of the words “MIXTA” and “LISTA” are the same. The letter “X” and the letter “S” can sound the same, leaving the letters “M” and “L” being the only aural and visual differences between the word. However, when the marks are spoken it is likely the letters “M” and “L” are blended into the word MASA to such an extent that the sounds of the letter “M” and “L” are incoherent.
I am not persuaded by this reasoning. As already discussed, the word MASA is the common element in all the trade mark representations. It is an expression which other traders dealing in the same Latin American goods are likely to use in the ordinary course of their business. The use of such a prima facie non-distinctive term within each of the trade marks is unlikely to cause the potential consumer to wonder whether the trade marks are related.
Applying these considerations, I am not satisfied the Trade Mark is deceptively similar to either of the trade mark registrations put forward by the opponent, particularly when the trade marks are considered, as they must be, as wholes. To refuse the Trade Mark because of the descriptive word MASA would impermissibly seize on a single similarity between the trade marks, while ignoring the trade marks in their entirety. I recall, ‘it is the whole mark as used which is the subject of comparison with the registered mark.’[8].
[8] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).
In this case, the respective trade marks are all structured similarly. MASA LISTA and MASA MIXTA both contain a combination of what may be perceived by the average Australian consumer to be a descriptive term; MASA describing the corn dough the goods are made of or contain. The differences aurally and visually between MIXTA and LISTA as well as the graphic devices are all important and carry significant weight when considering the respective trade marks. Even if the general Australian consumer would not know the actual meaning of the word MASA and would identify it as a foreign word, it is likely that the differences between the respective trade marks would be given careful weight and consideration to ensure that the consumer was purchasing the Latin American food that they were familiar with.
Therefore, I am not satisfied there would be a real and tangible danger of confusion arising[9] between the respective trade marks. My finding is that the respective trade marks of the two parties are neither substantially identical nor deceptively similar. As a result of this finding, the ground of opposition under section 44 has not been made out.
[9] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).
Section 60 - Reputation in Australia
Section 60 of the Act relevantly provides:
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.
To establish the ground of opposition under section 60 the opponent relies on its use of and the acquired reputation in its MASA LISTA trade marks.
Unlike section 44 of the Act, section 60 does not require that the goods or services upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the opponent’s trade mark be substantially identical or deceptively similar to the Trade Mark. However, I note from the evidence of both parties that the goods both parties use their respective trade marks on are the same and the services of the interest to the opponent are closely related to those goods of the Trade Mark.
It is for me to determine whether the opponent has established that before 4 May 2020 its MASA LISTA with device and/or MASA LISTA trade mark solus were recognised by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of the Trade Mark would be likely to cause the public confusion.
In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[10]:
[i]n ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302 at 343 , Lockhart J said:
[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.
Justice Kenny continues:
[i]n practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …[11]
[10] (2000) 51 IPR 102, 128-129.
[11] Ibid [86].
In considering whether either of the MASA LISTA trade marks has acquired a reputation in its goods and services, I turn to the opponent’s evidence of use of its trade marks in Australia. The Ayala Declaration establishes that the opponent was created in 2005 for the purpose of selling and supplying Latin food products for the Latin-American community in Australia and the broader Australian community. During the last 16 years the opponent is stated to have steadily increased its reputation in the provision and sale of Latin food products in Australia.
According to Mr Ayala, the date of first use of the trade mark MASA LISTA in relation to the goods and services covered by the registration numbers 592734 and 1843392 in Australia by the pre-decessor in title was in about 1987. Confidential exhibit BA-1 establishes that the opponent purchased the trade marks (including the packaging and history) from the pre-decessor in title inNovember 2017.
I note from confidential exhibit BA-12 that the sales of the opponent’s cornflour are modest given the size of the Latin American food industry in the Australian marketplace. Confidential exhibit BA-8 outlines equally modest advertising, marketing and brand development expenditure during 2019 until 2021. I note that the opponent has sold a reasonable amount of its low-cost product to a number of Australian retailers listed in exhibit BA-10. However, taken all together and at its highest, the evidence does not demonstrate the type of reputation sufficient to trigger section 60.
In order to establish a section 60 ground of opposition the opponent must demonstrate that it has acquired a reputation in Australia because of which the use of the Trade Mark would be likely to deceive or cause confusion. This is more than the opponent merely indicating prior use, the opponent’s trade mark needs to be ‘associated in the minds of the Australian public’[12] to such a degree that confusion is likely. The opponent’s evidence falls short of establishing this sort of level of reputation.
[12] Seven Up Co v OT Ltd (1947) 75 CLR 203, 211 (Williams J).
The opponent has accordingly not established its ground of opposition under section 60.
Decision
Section 55 of the Act relevantly provides:
55 Decision
(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 not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar is served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
4 October 2023
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