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McCormick & Company Inc v McCormick

McCormick & Company Inc v McCormick

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FEDERAL COURT OF AUSTRALIA
McCormick & Company Inc v McCormick [2000] FCA 1335
INTELLECTUAL PROPERTY – Trade marks – registration – application for registration of word marks “mccormick’s” and “mccormick’s instant batter simply add water” covering instant batter mix – marks deceptively similar to opponent’s registered trade marks – whether instant batter and goods the subject of opponent’s trade marks (including herbs, spices and seasonings) “goods of the same description” within meaning of s 14(1) of Trade Marks Act 1995 (Cth) – whether honest concurrent use of trade marks established for purposes of s 44(3) – whether geographic limitation on registration should be imposed – where initial use honest – where significant sales outside of Queensland before application filed not shown – where real likelihood of confusion – exercise of discretion under s 44(3) would result in registration under honest concurrent use in Queensland but not other states – discussion of applicant’s alleged media campaign against opponent and opponent’s alleged acquiescence in applicant’s use of mark
INTELLECTUAL PROPERTY – Trade marks – opposition – whether opponent’s marks had acquired a reputation for purposes of s 60 – nature of evidence required to show reputation considered – evidence of substantial sales, advertising and promotion sufficient to infer reputation – whether s 60 grounds for opposition subject to honest concurrent use exception – opposition successful
EVIDENCE – Expert opinion – whether evidence from Australian and North American chefs about composition, function and effect of batter relevant – evidence admitted – whether applicant qualified under s 79 of Evidence Act 1995 (Cth) to give expert opinion about relationship between relevant goods – applicant only qualified to give opinion about effect of own product
WORDS & PHRASES – “reputation”
Trade Marks Act 1995 (Cth) ss 6, 14(1), 44(1), 44(3), 60
Evidence Act 1995 (Cth), ss 76, 79, 144
Trade Marks Act 1955 (Cth)
McCormick & Company Inc v McCormick (1998) 42 IPR 515 reversed
In Re Jellinek’s Application (1946) 63 RPC 59 cited
In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 cited
In Re Frank George Whiting’s Application (1952) 69 RPC 219 cited
Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 cited
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 applied
In Re J & J Colman Ltd’s Application (1929) 46 RPC 126 referred
G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 referred
In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 90 IPR 140 referred
Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 cited
Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38719 cited
Browne v Dunn (1894) 6 R 67 (HL) mentioned
NMFM Property Pty Ltd v Citibank Ltd [No 7] (1999) 161 ALR 576 referred
O’Brian v Gillespie (1996) 41 NSWLR 549 referred
In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; 49 RPC 210; (1933) 50 RPC 147 applied
In Re…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2000] FCA 1335
Decision Date: 15 SEPTEMBER 2000

CaseChat Overview and Summary

In McCormick & Company Inc v McCormick, the appellant, McCormick & Company Inc (McCormick & Co), challenged the decision of the respondent, the Registrar of Trade Marks, to register trade marks owned by Mary McCormick, who carries on business as McCormick’s Instant Batter (Mary McCormick). The primary dispute revolved around the similarity of goods sold by both parties and whether Mary McCormick’s use of the McCormick name would cause confusion or deception due to the established reputation of McCormick & Co’s marks. The case also addressed whether the registration of Mary McCormick’s marks should be limited to certain states.

The central legal issues before the court were whether the goods sold by Mary McCormick and McCormick & Co were similar, and if the registration of Mary McCormick’s marks would infringe upon the established reputation of McCormick & Co’s marks, thus causing confusion or deception. Additionally, the court needed to determine if the registration should be limited to specific states, as decided by the delegate of the Registrar.

The court ruled that the goods sold by both parties were indeed similar, as they were both batter products. Furthermore, the court found that McCormick & Co’s marks had acquired a reputation in Australia prior to the relevant date, which meant that the use of Mary McCormick’s marks would likely deceive or cause confusion. Consequently, the registration of Mary McCormick’s marks should be opposed on the grounds specified in section 60 of the Act. The court also dismissed Mary McCormick’s cross-appeal regarding the limitation of registration to Queensland and New South Wales.

In conclusion, the court allowed the appeal, set aside the Registrar’s decision to register Mary McCormick’s marks, and instead refused the registration. The matter was adjourned to a future date, and the costs of the proceedings were reserved.

Orders

Orders of the court

1. The appeal be allowed.

2. The cross appeal be dismissed.

3. The decision of the delegate of the Registrar of Trade Marks (“the Registrar”) that the word marks “mccormick’s” and “mccormick’s instant batter simply add water” the subject of application No 574023 be registered subject to the endorsement that “Under the provisions of paragraph 41(3)(a) [sic] registration of this series of trade marks is limited to the states of Queensland and New South Wales”, be set aside.

4. In lieu of the Registrar’s decision, registration of the marks referred to in par 3 above be refused.

5. The costs of the proceedings be reserved.

6. The matter be adjourned to a date to be fixed.

Background

Background to the litigation

By her amended notice of contentions, Mary McCormick asserted that:· her instant batter product and the goods the subject of McCormick & Co’s registered trade marks are not “similar goods”; and, consequently, s 44(1) does not prevent registration of her marks; and· s 60(b) does not bar registration of her marks since their use would not be likely to deceive or cause confusion because of the reputation of McCormick & Co’s marks. By her notice of cross-appeal, Mary McCormick also appealed against that part of the delegate’s decision limiting the registration of her marks to Queensland and New South Wales.background facts McCormick & Co has sold food products in Australia directly and through its wholly-owned subsidiary, McCormick Foods Australia Pty Ltd (“McCormick Australia”), since 1962. McCormick Australia manufactures and sells its products to the retail sector, including supermarkets. In addition, since the early to mid-1980s, McCormick & Co and McCormick Australia have sold batter to fast-food providers in Australia. Today, McCormick Australia manufactures and sells products (such as batters, seasoned flour and breaders) to fast-food providers, food processing companies and food service companies (such as venue caterers, hotels and hospitals). Sales through all outlets are substantial. McCormick & Co is the registered owner in Australia of a number of trade marks. McCormick Australia uses the marks in Australia under licence from McCormick & Co. In this proceeding, McCormick & Co relied on the following registrations, all of which bear a priority date. Since at least 1995, McCormick Australia has also sold batter and breading mixes through retail outlets under the mark “golden dipt”. The golden dipt range has been developed as a speciality brand available only where fish is sold in supermarkets. In the United States, the packaging for the golden dipt range features a registered mccormick trade mark on the front. In Australia, however, a mccormick trade mark appears on the side of the golden dipt packaging. McCormick Australia is identified as the distributor. Mary McCormick and her husband, who died in August 1984, first commercially marketed batter under the name “McCormick” in the early 1970s. The decision to market the batter product grew out of a fish and chip business conducted by the McCormicks from a roadside caravan in Innisfail in Queensland from the late 1960s. The batter product, marketed under the name, “McCormick’s Instant Batter”, was sold to the public, first from the caravan and then also from a local supermarket. Thereafter, Mary McCormick began to supply her batter product to supermarkets in Ayre and Cairns in Queensland. In the mid-1970s, Mr and Mrs McCormick sold their fish and chip business and moved to a flat with an adjacent shop in Ernest Street, Innisfail. They manufactured and sold the branded batter product from the shop. In 1979, the McCormicks purchased a house with a small factory attached to it. Until May 1995, all of Mary McCormick’s branded batter product was manufactured and packaged in this factory. whether the goods are similar goods

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

KENNY J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: KENNY J

In the circumstances of the case, Mary McCormick’s submission that, simply by reason of its failure to protest against her use of the marks, McCormick & Co is to be taken to have acquiesced in her subsequent registration application, must fail: see Electrolux Ltd v Electrix Ltd (1953) 70 RPC 127; 71 RPC 23. I accept, as McCormick & Co submits, that there is a real difference between a rival trader using her own name and a rival trader seeking to assert exclusive rights over that name by having it registered. Whilst a person’s bona fide use of her name as her mark does not infringe (see s 122), registration of the mark does not necessarily follow (see, e.g., Johnson & Johnson at 432, 437). It is relevant to recall that registration gives significant additional rights beyond mere use: see Woolworths at 372.is registration precluded by section 60 of the act? Almost as an afterthought, McCormick & Co submits that s 60 of the Act presents an insurmountable obstacle to Mary McCormick’s application. The Act deals with applications for registration in Part 4 and opposition to registration in Part 5. Division 2 of Part 5 is headed “Grounds for opposing registration”. Section 57 provides:The registration of a trade mark may be opposed on any of the grounds on which an application for the registration for a trade mark may be rejected under Division 2 of Part 4, except the ground that the trade mark cannot be represented graphically. By virtue of s 57, McCormick & Co opposes registration of Mary McCormick’s marks on the grounds provided by s 44 (in Part 4). Section 60, which forms part of the second Division of Part 5, further provides:The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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. McCormick & Co submits that the evidence establishes the circumstances set out in pars 60(a) and (b). The registration of a trade mark may be opposed on any of the grounds specified in Division 2 of Part 5 and on no other grounds: see s 52(4). Mary McCormick’s marks are substantially identical with, or deceptively similar to, the McCormick & Co marks. That was not in issue on the appeal. But does the evidence establish that before 9 March 1992 the McCormick & Co marks had acquired a reputation in Australia on account of which the use of Mary McCormick’s marks would be likely to deceive or cause confusion? Counsel for Mary McCormick submits that McCormick & Co fails at this fundamental point. 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”.