Linecrest Pty Ltd v Cobannah Holdings Pty Ltd as Trustee for the Lollymania Trust

[2013] ATMO 2

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Linecrest Pty Ltd to registration of trade mark application 1449180(30) - BIG HAND - filed in the name of Cobannah Holdings Pty Ltd as trustee for the Lollymania Trust.

Delegate:	Iain Thompson
Representation:	Opponent: Written submissions by Herbert Smith Freehills, Lawyers Applicant: Gavin Adkins, trade mark attorney of EKM patent & trade marks
Decision:	2012 ATMO 02 s52 opposition: subsection 44(1) – notional user test considered – fair and normal use, evidence of actual use, trade marks deceptively similar. Registration refused

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Cobannah Holdings Pty Ltd as trustee for the Lollymania Trust (‘the Applicant’) has an application to register a trade mark, details of which appear below:

   Application No:         1449180
   Priority Date:             26 September 2011

   Goods:Class 30: Confectionery; flavoured sugar confectionery; lollipops (confectionery); sherbet (confectionery); sherbets (confectionery); sugar confectionery

   Trade Mark:               BIG HAND

   (‘the Trade Mark’)

2. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks (‘the Journal’) on 19 January 2012.

3. On 19 April 2012 Linecrest Pty Ltd (‘the Opponent’) served and filed Notice of Opposition to the registration of the Trade Mark.  The Notice includes the ground under subparagraph 44 under which I will decide this matter.

4. The matter is unusual in that the Opponent has chosen not to serve and file evidence in support of its opposition to registration but to instead rely on material on the public record.  As this material is such that it is obviously known to the Applicant, and reliance upon it was foreshadowed well in advance of the hearing, I informed the parties prior to the hearing that I would accept this material as evidence relevant to the matter.  Both parties referred to this material in their submissions and I am satisfied that its admittance as evidence is both procedurally fair and, in the circumstances, appropriate.

5. The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 14 November 2012.  The Opponent relied on written submissions by the firm Herbert Smith Freehills.  Gavin Adkins of EKM patent & trade marks represented the Applicant.

   Onus

6. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (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; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

7. The date at which the grounds of opposition must be established is the date of filing of the application for registration (‘the relevant date’): see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

   The Public Record Material

8. The Opponent is the registered owner of the following Australian trade mark registration which was assigned to it by the Applicant:

   Registration No:         902173
   Priority Date:             5 February 2002

   Goods:Class 30: Lollipops, lollies, candy, soda power lollipops, confectionery

   Trade Mark:               

   (‘Big Foot’)

9. The assignment of the above registration from the Applicant to the Opponent was recorded on the register of trade marks on 23 April 2007 and advertised in the Journal on 10 May 2007.

10. The products in relation to which the trade marks of the parties are used are sold in plastic packaging, representations of which appear in reduced size below:

11. As can be inferred from the packaging, the goods on which the trade marks are used are precisely the same goods: lollypops which the consumer dips in sherbet (soda powder) which is also contained in the packet.  Each package similarly contains six lollypops in the shape of hands or feet.

    Section 44

12. Subsection 44(1) of the Act provides:

    Identical etc. trade marks

    44.(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.

    Note 1:  For deceptively similar see section 10.

    Note 2:  For similar goods see subsection 14(1).

    Note 3:  For priority date see section 12.

13. The relevant definitions referred to at Notes 1 to 3, above are:

    Definition of deceptively similar

    10. For 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.

    14Definition of similar goods and similar services

    (1)For the purposes of this Act, goods are similar to other goods:

    (a)if they are the same as the other goods; or

    (b)if they are of the same description as that of the other goods.

    12Definition of priority date

    The priority date for the registration of a trade mark in respect of particular goods or services is:

    (a)if the trade mark is registered—the date of registration of the trade mark in respect of those goods or services; or

    (b)if the registration of the trade mark is being sought—the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark were registered.

14. The registration on which the Opponent relies has an earlier priority date than that of the opposed application and, as both specifications of goods include the general claim ‘confectionery’, are the same goods.  It thus remains for me to consider whether the trade marks are deceptively similar.

15. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe 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”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658

16. Consideration of whether the trade marks are deceptively similar is to take place against the context of the marketplace for the goods in question: In Re Application by Pianotist Company (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, where 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.

17. And the process of assessing whether the concurrent use of the trade marks is likely to deceive or cause confusion is informed by the considerations mentioned in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50] (‘Woolworths’) by French J who said:

    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.”

18. The Opponent submits that the Trade Mark could be used in various forms and that these forms ought to be considered when making the comparison.

19. The ‘fair and normal’ use test is referred to in Woolworths by French J in the following terms:

    Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of the trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

20. In many trade mark applications and registrations the trade marks consist of plain, necessarily unadorned, typed or printed words such as WHITE HORSE, GOANNA or BAREFOOT (‘unadorned trade marks’).  What is the potential or scope for the fair and normal use of such plain, unadorned trade marks?

21. The ‘fair and normal’ or notional use of a trade mark is understood to be the range of potential uses which the Registrar or Court can properly impute to a pending or registered trade mark in regard to both the trade mark and also the goods or services in relation to which the particular trade mark is pending or registered. It is improbable to suppose that such unadorned trade marks are used as plain typed words – they are apt to be used with alterations or additions which do not substantially affect their identity. Accordingly, as far as such an unadorned registered or pending trade mark itself is concerned, similar considerations usually apply as those within the provisions of section 7 of the Act which defines the use of a trade mark.

22. Subsection 7(1) of the Act provides:

    7Use of trade mark

    (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

    Note:For prescribed court see section 190.

23. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd[2] (‘Gallo’)the High Court considered the whether the device of a footprint added to the word BAREFOOT was an alteration or addition which did not substantially affect the identity of the trade mark BAREFOOT.  The Court said:

    The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which “do not substantially affect the identity of the trade mark.” Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1). [Stress added]

    [2] [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381

24. As may be inferred from the above, the question of what might be considered to be fair and normal use may change considerably when evidence is adduced of the actual use or intended use of the trade mark, or trade marks at issue.

25. Accordingly, in the light of the public record evidence, when considering the fair and normal use of the trade mark BIG HAND, it is appropriate to conclude that the notional use of the Trade Mark might extend to include the representation of a hand in the same way that the use of the trade mark BAREFOOT extended to include the use of that trade mark with the device of a human footprint.  Consistent with Gallo, the Registrar or Court would consider the use of the Trade Mark with the device of a hand to be a use of the registered trade mark.  Further, here the notional use of the Trade Mark extends to use in relation to the exact same goods – the material submitted by the parties confirms this is in fact the case.

26. The Applicant submits that:

    The words BIG FOOT and the two stylised feet in the earlier mark also have a secondary meaning and invoke the ape-like creature known as Bigfoot that purportedly inhabits forests in North America. It is submitted that the Bigfoot (or Sasquatch) is an enduring image in popular culture including films, television and advertising and therefore has a degree of notoriety and familiarity of which “judicial notice” can be taken.

27. The above submission requires considerable qualification.  The word ‘foot’ in the Opponent’s trade mark may be seen as having some reference to the goods which are foot-shaped confectionery on a stick which might otherwise be described as foot-shaped lollypops.  However, the juxtaposition of the word ‘foot’ with the word ‘big’ takes the word ‘foot’ out of the realm of pure description and refers indirectly to both the nature of the goods (which are not ‘big’) and (via the use of the two words ‘big’ and ‘foot’) alludes to Sasquatch.  The oblique reference within the words ‘big foot’ to the nature of the goods (and the division of the word ‘bigfoot’ into the two words ‘big foot’) does, however, make it quite unlikely that consumers will think only of Sasquatch when recalling the Opponent’s trade mark.

28. The word ‘hand’ in the Trade Mark makes the identical reference to the nature of the Applicant’s goods and its juxtaposition with the word ‘big’ uses the same linguistic construction as the distinctive expression ‘big foot’ which prominently appears in the Opponent’s trade mark.  Because the expression ‘big foot’ is both distinctive and indirectly refers to the nature of the goods it is likely to be readily recalled by consumers.

29. The words TASTY TREATS are comparatively small within the Opponent’s trade mark and the initial impression of that trade mark is of the prominent words ‘big foot’ with devices of two feet.  This impression accords strongly with that occasioned by the notional use of the Trade Mark accompanied by the device of a hand which only illustrates the both nature of the goods and the word ‘hand’ within the trade mark in a very similar way as does the Opponent’s trade mark.

30. The Applicant also submits:

    Critically, the opponent has not submitted any evidence, independent or otherwise, demonstrating a reasonable likelihood that the opposed mark and the earlier mark will be confused.

31. However, an assessment of whether there is a likelihood of deception or confusion is not dependent on evidence of actual confusion – although if such evidence is tendered it may be persuasive.  The question whether the use of a trade mark is likely to deceive or cause confusion is in the end a question of impression and common sense; it is a ‘jury question’ in which the decision maker is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion: Murray Goulburn Co-operative Ltd v New South Wales Dairy Corp (1990) 24 FCR 370; at 377; (1990) 16 IPR 289.

1. As I have stated, the fair and normal use of the Trade Mark extends to a visual illustration of the word ‘hand’ in the Trade Mark with the device of a hand.  The Trade Mark, if fairly used, thus exhibits strong thematic and conceptual similarities to the dominant features within the Opponent’s trade mark.  However, I consider that the packaging material shown above demonstrates that it is likely that the Trade Mark is such that its use may not be considered to be ‘fair’.

2. In view of that material tendered by the parties, I consider it likely that the Trade Mark was coined with the Opponent’s trade mark in mind and that the evidence shows that it is in use strongly imitative.  In Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641; (1937) 11 ALJR 186 the Court stated:

   The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.

3. The goods are of such a price and nature that not much time, care, or attention is devoted to their purchase and it is likely that the goods will be casually inspected prior to purchase and their provenance will be unquestioned.  Additionally, the purchase of the goods is likely to be attended a similar press of circumstances as those distractions referred to in Re Stuart Alexander and Co (Interstate) Pty Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV v Blenders Pty Limited [1981] FCA 152; (1981) 53 FLR 307. Lockhart J said:

   Shoppers in supermarkets are probably not anxious to prolong the agony of wheeling trolleys between rows of food products and avoiding collision with other trolleys, often to the unwelcome accompaniment of clamorous babies, and children impatient to escape from the shop or to buy everything in it except the household needs. I say nothing about attendant spouses who, if husbands, wait in varying degrees of impatience to perform their function as beasts of burden. Shoppers are probably inclined to select their goods quickly.

4. The Opponent relies in its submission on Rysta Ltd’s Application (1943) 60 RPC 87[3], where Luxmoore LJ said (at 108-109):

   The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistance ministering to that person’s wants.

   [3] Applied in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1; (2004) 61 IPR 212; [2004] AIPC 92-015.

5. Here, however, I consider what is more likely is that (because of the evidenced notional use similarities in the visual and linguistic themes and because the trade marks both similarly allude to the nature or appearance of the exact same goods – which have shapes that are related) the Trade Mark will be mistakenly recognized as being a variant of the Opponent’s trade mark in a similar way to the situation referred to in John Fitton & Co Ltd's Appn (1949) 66 RPC 110, (‘Fitton’) at 113 where the trade marks under consideration were EASYJEST and the registered trade mark JEST. In Fitton the Assistant Comptroller said that no limitation was to be placed “upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or deception as to the trade provenance of the goods”.  Here that contextual similarity is strengthened by the mode of use of the Trade Mark to become deception.

6. I consider that it is most likely that a consumer, knowing of the Opponent’s trade mark and looking for it on the shelves of shops would immediately conclude on seeing the Trade Mark similarly got-up (on exactly the same goods) that the goods sold under it emanate from the same trade source as do the Opponent’s goods.

7. The mistake occasioned by the similarity of the trade marks is, in my consideration, a species of deception rather than of confusion and it will be recalled that the Applicant once owned the Opponent’s trade mark.  In Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at page 174 Lord Denning said of the differences between ‘confusion’ and ‘deception’:

   Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.

8. The trade marks of the parties are deceptively similar as it is inevitable that deception will be occasioned by the use of the Trade Mark.

9. The Opponent has established its ground under section 44 of the Act.

   Decision

10. 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.

11. I refuse to register application 1449180.

    Costs

12. As the Opponent has been successful, it is entitled to its costs which I award at the Official Scale against the Applicant.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    9 January 2013