LD&D Foods Pty Ltd v Fantasyonice Limited

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by LD&D Foods Pty Ltd to protection of international registration designating Australia 1396422(35) - YOGORINO & DEVICE – (International Registration 1056817) filed in the name of Fantasyonice Limited.

Delegate:

Debrett Lyons

Representation:

Opponent: Gabriella Rubagotti of counsel, instructed by Baker & McKenzie, Solicitors.

Holder: Not represented and no written submissions

Decision:

2012 ATMO 105

Reg 17A.29 opposition: ss 43, 44, 59 and 60 pressed. None established. Opposition unsuccessful. Protection extended to Australia.

Background

This is an opposition brought by LD&D Foods Pty Ltd (“the Opponent”) pursuant to Reg 17A.29 of the Trade Marks Regulations 1995 (“the Regulations”) to extension of protection to Australia of the trade mark shown in paragraph 2 below, the subject of international registration designating Australia (‘IRDA’) number 1396422 in the name of Fantasyonice Limited (“the Holder”).
Full details of the IRDA are as follows:
Application Number:  1396422
International Registration:          1056817
Filing Date:  19 October 2010
Priority Date:       11 October 2010  (“the Priority Date”)
Services:Class 35: Advertising; Business management; Business administrations; Office functions
(“the Services”)
Trade Mark:     (“the Trade Mark”)
The Opponent filed a Notice of Opposition (“the Notice”) on 10 May 2011.
The Opponent’s Evidence in Support comprises a Statutory Declaration of David Tyack made 2 November 2011, together with Annexures DT-1 to DT-26. There was no Evidence in Answer from the Holder and so the Opponent requested to be heard.
The matter was set down for hearing on 16 August 2012. As a delegate of the Registrar of Trade Marks I heard the matter on that date in Sydney. The Opponent was represented by Gabriella Rubagotti of counsel, instructed by Baker & McKenzie, Solicitors. The Holder has not given an address for service in Australia, was not represented at the hearing and did not submit any written statements.
Whilst the Notice lists a large number of grounds corresponding to various provisions of the Act, Ms Rubagotti made it clear by both her written and oral submissions that the Opponent pressed only those grounds dependent on sections 43, 44, 59 and 60.
I treat the remaining grounds listed in the Notice as abandoned and note here that in order to succeed in its opposition the Opponent bears the onus of establishing at least one of the grounds pressed on the balance of probabilities[1]. The relevant date at which the rights of the parties are to be determined is the Priority Date[2].
Discussion
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32] and, most recently, Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011) per Stone J at [11] to [12] and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) per Kitto J. at p.595.
Section 44
So much of section 44 of the Act as is relevant to this matter is reproduced below:
Identical etc. trade marks
44.(2) Subject to subsections (3) and (4)[footnote 2 here instead?], 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.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
The Opponent is the registered owner of a number of trade marks but for the purposes of section 44(2) it relies on registrations 1411670 and 900499, the relevant details of which are given below (“the Opponent’s Registrations”):
Registration Number:                   1411670
Priority Date:       1 March 2011
Services:Class 35: Distribution of food products including milk, yoghurt and yoghurt based products and other dairy and dairy based products (not being transport services); wholesaling of food products including milk, yoghurt and yoghurt based products and other dairy and dairy based products

Class 43: Providing food and drink including milk, yoghurt and yoghurt based products and other dairy and dairy based products
Trade Mark:  YOGO
Registration Number:                   900499
Priority Date:       16 January 2002
Services:Class 9: …

Class 16: …

Class 28: …

Class 35: Business and marketing consultancy services; marketing and promotional services

Class 41: Production of television, video, radio and global computer network programmes; productions of shows, live performances and concerts; arranging and conducting seminars; conferences; radio television and global computer network entertainments; organisation and conduct of competitions; production of films, music videos and recordings; publication of books, magazines and texts; organisation of exhibitions for educational purposes provision and distribution of information for training, educational, entertainment and recreational purpose; planning of parties and special events

Trade Mark:  YOGO ALLEY
Section 44 requires that the priority date of the Opponent’s Registrations be earlier than the Priority Date which in this case is clearly satisfied.
To succeed under section 44 it is sufficient if the Opponent now establishes that the Services are “similar services”[3] to those covered by one or both of the Opponent’s Registrations and that the Trade Mark is at least “deceptively similar”[4] to that of one or both of the Opponent’s Registrations.
[3] As defined in s 14(2) of the Act, namely the same services and/or services of the same description.
[4] As defined in s 10 of the Act, which provides that “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”.
Although French J (as he then was) noted in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (“Woolworths”) that the structure of section 44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, relevant other goods and services is “logically antecedent to” assessment of the deceptive similarity of the trade marks under comparison[5], in this instance that process can be bypassed in the case of registration 900499 because, even assuming the identity of the services, there is no sustainable argument whatsoever that the Trade Mark is either substantially identical or deceptively similar to YOGO ALLEY, the trade mark of registration 900499.
[5] Also relevant in the context of “similar services” as defined in s 14(2) of the Act.
In the case of registration 1411670 there is a question whether or not the Services are similar to the class 35 or class 43 services of that registration and it was the Opponent’s submission that:
The applicant’s services (“Advertising; Business management; Business administrations; Office functions”) are similar to the services for which the opponent has obtained registration. … the relevant services are services of the same description. In this regard, “distribution…” and “wholesaling…” fall within the applicant’s services...
That submission lacks merit. The wholesale and distribution of foodstuffs has no similarity at all in terms of the case law or the practice of this Office to any of the Services.
The ground of opposition under section 44 has not been established.
Section 60
Section 60 of the Act is reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. 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.
Note: For priority date see section 12.
To satisfy section 60, the Opponent must demonstrate that, at the Priority Date, there existed a reputation in another trade mark, such that use of the Trade Mark for the Services would likely cause members of the public to be deceived or confused. The trade mark(s) relied upon by the Opponent need not be subject of an application or registration. Section 60 does not require those trade mark(s) to be deceptively similar to the Trade Mark, nor that it (they) be used on similar goods or closely related services.
Turning to the evidence, I noted at the hearing that essential parts of the statutory declaration of David Tyack are marked as confidential. At the hearing I asked Ms Rubagotti how I could take account of sales and advertising figures for the purposes of this decision and so, following the hearing, the Opponent’s solicitors wrote to me on 22 August 2012 in the following terms:
We refer to the recent hearing in the above matter, which took place in Sydney on Thursday, 16 August 2012.
We understand from your discussions with our client's Counsel, Ms Gabriella Rubagotti, that you may wish to refer to our client's advertising and sales figures in your written decision. This information is currently referred to in the Statutory Declaration of David Tyack dated 2 November 2011 (Tyack Declaration), in Confidential Annexure DT-4 and Confidential Annexure DT-5 respectively.
Our client is prepared to allow the publication and disclosure of this information in your decision, on the basis set out below.
Advertising figures
A statement along the following lines would be acceptable:
"Between 2007 and 2011, the Opponent spent in excess of $1 million on advertisements regarding products bearing the YOGO Marks."
Sales figures
Our client confirms that you may refer to its sales figures for the years from 2001 to 2010 as being "in excess of" the amounts shown below.
There then follows a table with two columns marked “year” and “expenditure in Australian dollars” which essentially reproduces sales information from the Tyack declarion. Why sales figures should be tabulated as an expense is unclear to me however in the period from 2001 to 2010 (inclusive) there are corresponding figures all in the tens of millions of dollars.
The letter goes on to say that:
Our client has no objection to you referring to some of these figures in your written decision, but it respectfully requests that you refrain from copying the … table in its entirety.
So, for example, the figure for 2010, the year of the Priority Date, is AUD$29 million.
It is not easy to deconstruct this information. For example, the letter implies that these sales and advertising figures are for “the YOGO Marks”. If I refer to Ms Rubagotti’s written submissions and in particular to that section concerned with reputation, she states that:
The opponent is the registered owner of a number of trade marks. The following are of particular relevance to this opposition:
(a)         YOGO in class 35 (“distribution of food products… wholesaling of food products…”) dated 1 March 2011 (no. 1411670);
(b)         YOGO ALLEY in class 35 (“business and marketing consultancy services; marketing and promotional services”) dated 16 January 2002 (no. 900499);
(c)         YOGO in class 29 (“milk”, etc) dated 25 October 1971 (no. 253136);
(d)         YOGORILLA in class 29 (“yoghurt”, etc) dated 24 October 1991 (no. 900499) (sic) ;
(e)         LIQUID YOGO in class 29 (“milk” etc) dated 1 February 2000 (no. 822039).
(f)          YOGO in class 30 (“ice cream” etc) dated 28 August 2000 (no. 848086); and
(g)         YOGOO in class 30 (“sauces” etc) dated 28 August 2000 (no. 848082).
See DT-1 and DT-2 for details of these trade marks (“opponent’s prior marks”) and related marks.
I find that I do not need to revert to Exhibits DT-1 and DT-2 of Mr Tyack’s declaration to determine these “related marks” since my focus should remain on Ms Rubagotti’s primary submissions and on those trade marks she has already identified in (a) to (g) above as being of particular relevance. In so doing I see trade marks other than YOGO have contributed to the combined sales and advertising figures including YOGOO, LIQUID YOGO, YOGO ALLEY and YOGORILLA. I see, too, that it is only YOGO and YOGO ALLEY that are registered in relation to services of any kind.
Ms Rubagotti submits that:
By reason of the opponent’s promotion of the YOGO brand, the opponent has built up a significant reputation in the prior registrations. This is evidenced by the opponent having gained a 37.9% value share of the $77 million children’s custard category and a 14.9% value share of the $200 million children’s fresh dairy category: see the independent Nielsen data referred to at Tyack [17].
Judged by the accepted standards in these matters[6], it can reliably be said that the Opponent has, before the Priority Date, established a reputation in Australia in respect of the trade mark YOGO in connection with dairy products, primarily the children’s dairy product market.
[6] McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].
I have already commented on the chasm in terms of visual and aural similarity that lies between the Trade Mark and YOGO ALLEY, a chasm not bridged in my assessment by the reputation of YOGO in relation to children’s dairy foods when compared with the Services (still less were a proper apportionment of that reputation to be attributed to the use of YOGO ALLEY in relation to business and marketing per se).
So far as the trade mark YOGO is concerned, there is no actual evidence of its use in connection with services. Absent such proof, I am unprepared to make an inference in favour of the Opponent that the term YOGO has been used in a trade mark sense in relation to services. To the extent that registration 1411670 may suggest use in connection with the wholesale and distribution of food products, the more reliable inference is that the term YOGO has only been used, if at all, in connection with the Opponent’s own activities and has not been used in connection with the provision of those services in trade to others.
In short, I find that the Opponent has no reputation at all in connection with the offering of services. Section 60 does not, as I have already noted, necessitate such a reputation but if, as in this case, the reputation is confined not only to goods, but to goods having no apparent nexus with the Services, then the Opponent’s burden to show that use of the Trade Mark would be likely to deceive or cause confusion weighs more heavily on it.
The Trade Mark and YOGO share some similarities. Ms Rubagotti argued that:
(a)      YOGO is the first element of the opposed mark and the opponent’s relevant marks; and as “the beginning of words is accentuated… the first syllable of a word is, as a rule, far the most important for the purpose of distinction”: this is significant: London Lubricants (1920) Ltd’s Application (11925) 42 RPC 264 at 279 (CA UK) per Sargant LJ;
(b)      YOGO – the common element – is inherently distinctive;
(c)       by reason of the common YOGO element the marks are visually and aurally similar: Pianotist Co’s Application at 777; Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318 at [78];
(d)      the “ideas” conveyed by the respective marks are inherently similar; both connote “yoghurt” and related products; see: Sports Café Ltd v Registrar of Trade Marks (1998) 42 IPR 552; Jafferjee v Scarlett (1937) 57 CLR 115. See also [21].
I agree with the submission founded on London Lubricants and at the hearing I conceded that the terminating letters of the Trade Mark, “ino”, are suggestive of the meaning “little” or “small” in Latin rooted languages, particularly Italian, and so at one level the term “yogorino” might be perceived as a diminutive version of the term “yogo”, regardless of whether that latter term was seen to connote certain products or not. Moreover, the letter “r” in the term “yogorino” would, according to normal patterns of pronunciation, be almost silent.
On the other hand, the two submissions that the element YOGO is “inherently distinctive” and “connotes ‘yoghurt’ and related products” can only stand together if it is understood that the term YOGO is less than 100% distinctive of the goods. I am reminded of Burchett J’s comment in Conde Nast Publications Pty Ltd v Virginia Taylor[7], when comparing the trade marks VOGUE and EUROVOGUE (for clothing), that “it should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question.”
[7] (1998) 41 IPR 505 (at 511-12).
At its highest, it might be said that in the right set of circumstances, the Trade Mark and YOGO could be seen as somehow related. In that respect Ms Rubagotti submits that:
Having regard to the actual use to which the opponent’s prior marks are put and notional use only for the opposed mark, the registration and use in Australia of that mark is likely to deceive or cause confusion. That is so for the following reasons.
First, the opponent’s prior marks are used extensively to promote the opponents good and services, including yoghurt products, in Australia.
Secondly, the opposed mark clearly connotes dairy food products by reason of the YOGO element and the stylisation of the mark: see [21]-[22] above.
Thirdly, it is submitted that the notional use to which the opposed mark will be put will be a use of the mark for the provision of advertising, business management, and business administration services and office functions in connection with the promotion, distribution, offer for sale and sale in Australia of dairy products, including yoghurts – one of the actual uses to which the opponent’s prior marks are put. In the circumstances where the opponent has a significant reputation in relation to its prior YOGO marks as a result of use in relation to yoghurt, dairy products, distribution, wholesaling marketing and promotional services, the applicant’s use will clearly overlap with the opponent’s prior use and registration.
I have already found the Opponent to have no proven reputation in connection with services. I am not persuaded that the term “yogo” is such a clear and obvious reference to “yoghurt” that it would be seen as an abbreviation for that word. Nor do I think that “the stylisation of the mark” - by which I understand the “whipped cream” embellishment of one of the letters “o” and the inclusion of the image of a spoon - indicate an exclusive reference to yoghurt instead of, for example, cream or ice-cream. Finally, the assertion that “the notional use to which the opposed mark will be put will be a use of the mark for the provision of advertising, business management, and business administration services and office functions in connection with the promotion, distribution, offer for sale and sale in Australia of dairy products, including yoghurts” is a claim without foundation either from the evidence before me, or intuitively, and I can give it no weight.

Section 60 has been understood as requiring an opponent to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient and for the reasons already given, I find that the section 60 ground of opposition has not been established.
Section 59
Section 59 requires an applicant to have an intention to use the applied-for trade mark. The Federal Court decisions in Food Channel Network v Television Food Network GP (2010) 185 FCR 9 and Americana International Ltd v Suyen Corporation (2008) 75 IPR 596 have been partially responsible for a resurgent interest in section 59 as a possible ground of opposition but popular argument sometimes hinges on liberal readings of those cases.
In this matter the opponent submits that:
a prima facie case of lack of intention is made out by the following matters:
(a)      the applicant has not nominated a local address for service for the Yogorino Application;
(b)      the applicant has failed to respond to correspondence from the Trade Marks Office and Baker & McKenzie including in respect of this opposition;
(c)       on 4 November 2011, the opponent filed its evidence in support of its opposition; the applicant did not acknowledge service of this evidence and failed to respond to correspondence from the Trade Marks Office requesting confirmation of service;
(d)      the applicant did not file any evidence in answer;
(e)      the opponent requested a hearing in this matter on 15 March 2012; the applicant has not yet requested to be heard nor has it filed any submissions to date.
Put simply, none of those facts displaces the presumption of intention to use in favour of the Holder created by the act of filing for registration[8]. The evidentiary burden has not moved to the Applicant and this ground of opposition has not been established.
[8] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605.
Section 43
Section 43 is reproduced below:
Trade mark likely to deceive or cause confusion
43. 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.
It is the Opponent’s submission that:
The opposed mark gives rise to the following connotations, which taken singly or together, would be likely to deceive or cause confusion:
(a)      the stylised “G” comprising a spoon and swirl clearly connote a “soft serve” yoghurt or other dairy food product; and
(b)      the YOGO element clearly connotes the opponent’s YOGO trade mark; and
(c)       the YOGO element clearly also connotes “yoghurt” and related dairy food products.
By virtue of these connotations, the opposed mark would be likely to deceive or cause confusion with the opponent’s marks or the opponent.
The case of TGI Friday's Australia Pty Ltd v TGI Friday's Inc (2000) 100 FCR 358 is the oft-cited authority for the proposition that the connotation must be inherent in the trade mark and not depend on the reputation of some other sign. Nevertheless, there is a line of authority indicating section 43 might be invoked where, as Gyles J put it in Pfizer Products Inc v Karam[9], the connotation contained within the trade mark is “an implication of sponsorship or association”. Even if I were to accept that line of authority I do not, for reasons given, find that the other sign in this case, YOGO, has achieved such an ubiquitous position in the Australian market that the claim made by the Opponent that “the YOGO element clearly connotes the opponent’s YOGO trade mark” is made out.
[9] (2006) 70 IPR 599 at [55]. See also Durkan v Twentieth Century Fox Film Corp (2000) 47 IPR 651 (BRAVEHEART THE MUSICAL), Amalgamated Television Services Pty Ltd v Pickard (1999) 48 IPR 133 (SUMMER BAY), Amalgamated Television Services Pty Ltd v Clissold (2000) 52 IPR 207 (HOME & AWAY), McCorquodale v Masterson (2004) 63 IPR 582 (DIANA’S LEGACY & Device) and Marc Chagall Committee v Elite Wines & Spirits (2007) 73 IPR 552 (MARC CHAGALL).
This ground of opposition has not been established.
Decision
The Opponent has not established a ground of opposition. Protection of the IRDA may be extended to Australia 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 extension of protection of the IRDA shall not occur until the appeal has been decided or discontinued.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
9 November 2012

[2012] ATMO 105

8 November 2012

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Intellectual Property

Commercial Law

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