LD&D Foods Pty Ltd v Mark Robinson, Brenda Robinson

[2012] ATMO 110

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 registration of trade mark application 1346779 (29) - LITE SMART - filed in the names of Mark Robinson and Brenda Robinson.

Delegate:	Debrett Lyons
Representation:	Opponent: Matthew Darke of Counsel, instructed by Baker & McKenzie, Solicitors. Applicants:   Not represented and no written submissions
Decision:	2012 ATMO 110 Sec 52 opposition: s 44 partly established. Opposition successful in part. Costs awarded against Applicants

Background

1. This matter relates to an opposition brought by LD&D Foods Pty Ltd (“the Opponent”) pursuant to section 52 of the Trade Marks Act 1995 (“the Act”) to registration of the following trade mark application filed in the names of Mark Robinson and Brenda Robinson (“the Applicants”):

   Application Number:             1346779
   Filing Date:  22 February 2010       (“the Priority Date”)

   Goods:Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats       (“the Goods”)

   Trade Mark:  LITE SMART            (“the Trade Mark”)

1. The application was examined under section 33 of the Act after which it was accepted on 11 May 2010 and it was advertised for possible opposition to registration on 24 June 2010. LD&D Foods Pty Ltd (“the Opponent”) filed a Notice of Opposition (“the Notice”) on 23 September 2010, after which both parties served and filed evidence.

2. The Opponent’s evidence in support comprises a declaration made by Mark Davis dated 23 March 2011 together with Annexures MD-1 to MD-32.  The Applicants filed evidence in answer consisting of the declaration of Mark Robinson dated 20 December 2011 together with Exhibit MR-1.  The Opponent's evidence in reply consists of the declaration of Janet Boland dated 20 March 2012 together with Annexures JB-1 to JB-4.

3. The matter was set down for hearing on 17 August, 2012.  On that date in Sydney and acting as a delegate of the Registrar of Trade Marks I heard Matthew Darke of Counsel, instructed by Baker & McKenzie, Solicitors, who made submissions on behalf of the Opponent.  The Applicants were not present or represented at the hearing and relied on written submissions which they had made to the Office on 12 June 2012.  Those submissions were copied to the Opponent before the hearing.

4. The Notice lists a number of grounds corresponding to various provisions of the Act but Mr Darke made it clear that the Opponent pressed only those grounds dependent on sections 42, 44, 59 and 60. I treat the remaining grounds listed in the Notice as abandoned. I note here that in order to succeed in its opposition the Opponent bears the onus of establishing at least one of those grounds on the balance of probabilities. and the relevant date at which the rights of the parties are to be determined is the Priority Date.

   Reasoning

5. For the purposes of the grounds of opposition under sections 42, 44 and 60, the Opponent relies on its use and registration of the trade mark, LIGHT START (“the Opponent’s trade mark”).

   Section 44

6. Section 44 provides a ground for refusal of registration based on earlier third party trade mark rights. The Opponent is the owner, inter alia, of registration 585199 for LIGHT START registered from 26 August 1992 in Class 29 for "milk and dairy products" (“the Opponent’s Registration”)

7. Subject to exceptions having no applicability in this case, section 44 of the Act provides that an application for the registration of a trade mark in respect of goods must be rejected if it is substantially identical with or deceptively similar to a trade mark (with the same or an earlier priority date) registered by another person in respect of similar goods.

8. The priority date of the Opponent’s Registration is earlier than the Priority Date.  It remains for the Opponent to establish that the Trade Mark is either substantially identical with or deceptively similar to that of the Opponent’s Registration and that the goods of that registration - milk and dairy products – are the same as, or are of the same description as, the Goods.

9. The Federal Court directs me to determine those issues in an orderly way, for as French J (as he then was) noted in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, the structure of section 44 suggests that 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” an assessment of the deceptive similarity of the trade marks under comparison.

10. Plainly, the Goods nominated as “milk and milk products” are identical to the goods of the Opponent’s Registration.  The remaining enquiry is whether the Goods nominated as “meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, edible oils and fats” are goods of the same description as those goods.

11. Whilst all are class 29 goods it is well understood that the trade mark classification scheme is not determinative of whether goods are of the same description and I refer  to the three-fold test first enunciated by Romer J in In Jellinek’s Application (1946) 63 RPC 59 at 70, namely the nature and composition of the goods, the respective uses of the goods, and the trade channels through which the goods are bought and sold. No one factor is to be considered as being conclusive and it is not necessary for all three factors to apply.

12. In my assessment “meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; and eggs” are not goods of the same description as dairy products.  They are not made in the same factories, or even usually by the same traders and they are not sold in the same parts of shops as dairy products.  On the other hand, “edible oils and fats” are goods of the same description as, say, ghee which, being clarified butter, is a dairy product.

13. Turning, then, to the compared trade marks and in spite of their similarities on a number of levels, I find that LIGHT SMART and LITE START are not substantially identical to each other. I must therefore consider section 10 of the Act which states 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.” The Opponent’s submissions in this respect were that:

    The LITE SMART mark will be likely to deceive or cause confusion, in the relevant sense, if there is a real risk or tangible danger of its causing some people to wonder whether it might not be the case that goods bearing that mark come from the same source as or have some other association with goods bearing the LIGHT START word mark.  … 

    First, visually they are very similar.  Each mark comprises two near-to-matching words.  “LIGHT” and “LITE” have three letters in common, including the first two (as well as being the same in sound and meaning, as to which see below).  “START” and “SMART” are identical, save for different second letters.

    Secondly, as spoken and as heard, the two marks possess a high level of similarity.  “LIGHT” and “LITE”, of course, sound identical.  “START” and “SMART” sound almost the same and, in particular, begin with the same consonant and end with the same “-ART” sound.  The two marks also consist of the same number of words with the same number of syllables.

    Thirdly, LIGHT START and LITE SMART convey similar meanings and give rise to similar impressions.  The dominant message of each mark, when applied to consumables, is that the product to which the mark is applied is “lighter” (e.g., in fat or sugar or calories) than comparable products.  The secondary aspect of the LIGHT START mark concerns the time of day at which the “lighter” product is consumed, namely the start of the day.  Implicit in this is that it is a good or healthy thing to do to start the day with something light.  The secondary aspect of the LITE SMART mark is that it is a good or “smart” thing to do to consume a “light” product. 

    Fourthly, both marks are to be applied to relatively inexpensive, fast-moving consumables.  These are not the type of goods that consumers linger over before purchasing.  They are the sorts of goods that are commonly pulled off a shelf in a hurry with little close consideration.  In these circumstances, the limited differences between the two marks diminish further in significance and are likely to be overlooked or inadequately appreciated by actual and potential consumers.

14. I agree with those submissions.  In the case of In Re Application by Pianotist Company (1906) 1A IPR 379 at 380; 23 RPC 774 at 777 Parker J said:

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

15. The process of assessing whether trade mark are deceptively similar to each other is informed by the factors discussed in Registrar of Trade Marks v Woolworths Limited, op. cit., per French J at [50]:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) 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.

    (iii) 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.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

16. I find the trade marks LIGHT START and LITE SMART to be deceptively similar and so I arrive at the further finding that the Opponent has established its ground of opposition under section 44 with respect to the goods nominated as “milk and milk products; edible oils and fats”. Section 44 does not prevent the application from proceeding to registration in relation to “meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; and eggs” and so I now turn to the remaining grounds.

    Section 60

17. Section 60 of the Act provides:

    60Trade 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.

    Note:For priority date see section 12.

18. To satisfy the ground of opposition based on section 60, the Opponent must show that its LIGHT START trade mark had acquired a reputation in Australia at the Priority Date and that, because of that reputation and the degree of similarity of the trade marks, use of LITE SMART would be likely to deceive or cause confusion.

19. In McCormick & Company Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, Kenny J said, at [81]-[82]:

    What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

    Does the evidence establish that in Australia before 9 March 1992 the  McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

20. The Opponent’s evidence which it submits establishes this reputation lies within the declaration of Mr Davis who is a marketing director of the Opponent.  He declares that the Opponent is a leading food, dairy and beverage business in Australia and that goods bearing the Trade Mark are sold within the PURA range of goods.  The PURA range of milk products has been sold in Australia since 1991.  Confidential sales and marketing figures are appended to his declaration.

21. For her part Ms Boland, another employee of the Opponent, declares that the PURA trade mark operates as an independent brand under which a range of other branded products are sold, including LIGHT START products. 

22. For its part, the declaration of Mr Robinson consists principally of submissions and argument and does not help me from an evidentiary standpoint.

23. Judged by ordinary commercial standards, a very substantial business stands behind at least the PURA brand.  The evidence shows that name has been used in conjunction with the Opponent’s trade mark.  A representative example of how those signs are used together is illustrated by the trade mark of the Opponent’s registration 755335 shown below:

24. The evidence is that the trade mark LIGHT START has been used on milk and milk products. 

25. On my assessment of the evidence there is a respectable argument that both PURA and LIGHT START can perform a trade mark function, even though they appear together on the Opponent’s goods.  I refer to Chocolaterie Guylian NV v. Registrar of Trade Marks (20090 AIPC 92-355 per Justice Sundberg at paragraph 97 and to Sports Warehouse, Inc. v. Fry Consulting Pty. Limited (2010) AIPC 92-388 per Justice Kenny at paragraph 133.  That said, the evidence does not as a whole make a compelling case that LIGHT START has a substantial reputation on its own, divorced from its close relationship with the overarching brand name, PURA.  Moreover the words “light start” are entirely apt to describe low fat dairy products and, even ignoring their subordinate positioning to the word PURA on the goods, they are naturally less adapted to assume a source-indicating role than the word PURA. 

26. The onus is on the Opponent to show that it is more likely than not that use of the Trade Mark on meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; and eggs is likely to cause confusion in the sense that a number of persons will be caused to wonder whether it might not be the case that those products are put on the market by, or with the approval of, the Opponent.

27. I do not find that the Opponent has discharged that burden and so the section 60 ground of opposition has not been established against any of the remaining goods.

    Section 42

28. It follows from the findings already made and for reasonswhich have been explained in many earlier cases that the section 42(b) ground of opposition (namely, “contrary to law”) also fails.

Section 59

1. Section 59 of the Act will be satisfied as a ground of opposition if the Opponent shows that at the Priority Date the Applicants did not intend to use, or authorise the use, of the Trade Mark in relation to the residual goods.

2. Historically, section 59 has been problematic to opponents insofar as it puts them in the awkward position of attempting to prove a negative state of mind of an applicant. Whilst both the Registrar and the Courts have on occasion been willing to draw an inference about an applicant’s intentions, it has most frequently been in cases where a constellation of circumstances were damning to an applicant. Moreover I would observe that, taking those cases in the round, the majority were decided before “bad faith” was introduced as a separate ground of opposition and many were influenced either by proof or by an overwhelming suggestion of bad faith motivation at the time of filing.

3. In spite of a resurgent interest in section 59 as a ground of opposition the rule in Aston v Harlee Manufacturing Co (1960) 103 CLR 391 prevails and is not displaced by anything less than a direct statement from an applicant that it had no intention to use the trade mark when lodging the application or by inferential evidence which makes that state of mind manifestly clear.

4. In this case a Notice to Produce issued by the Registrar on 30 June 2011 at the petition of the Opponent and requiring the Applicants to show their intention to use the Trade Mark at the Priority Date on goods other than peanut butter elicited statements from Mr Robinson that it was common business practice to expand a trade mark to other products if it was successful on the initially marked goods and that the Trade Mark could be adapted to other products.

5. Neither of those statements displaces the presumption of intention to use in favour of the Applicants which is created by the act of filing the application.  The evidentiary burden has not moved to the Applicants and this ground of opposition has not been established.

   Decision

6. Subsection 55(1) of the Act provides:

   55Decision

   (1)Unless the proceedings are discontinued or dismissed, 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.

1. The Opponent has to some extent established a ground of opposition under section 44.

2. The Trade Mark is refused in respect of the goods nominated as “milk and milk products; edible oils and fats”.       

3. The Trade Mark may then proceed to registration one month from the date of this decision in respect of the goods nominated as “Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; and eggs”.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application be in accordance with the Court’s order or direction.

4. Having been partly successful in these proceedings, the Opponent is entitled to its costs which I order against the Applicants at the Official Scale.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
14 November 2012