Millwood Holdings Pty Ltd and Bellgrove Holdings Pty Ltd v Scalvino Pty Ltd

[2024] ATMO 64

TRADE MARKS ACT 1995

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

Re:Opposition by Millwood Holdings Pty Ltd and Bellgrove Holdings Pty Ltd to registration of trade mark application number 2135740 (31) – AUS-AVO – in the name of Scalvino Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponents: Kevin Ashby of IP Strategies International

Applicant: Martin O’Sullivan of O’Sullivans Patent and Trade Mark Attorneys Pty Ltd

Decision:

2024 ATMO 64

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 41, 42(b),43 and 62 pursed – s 41 established for some goods – s 43 established for remaining goods – registration refused

Background

1. This opposition is bought by Millwood Holdings Pty Ltd and Bellgrove Holdings Pty Ltd (‘Opponents’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Scalvino Pty Ltd (‘Applicant’):

   Trade Mark Number:             2135740

   Trade Mark:  AUS-AVO (‘Trade Mark’)

   Filing Date:  12 November 2020

   Specification:  Class 31: Fresh fruit; Fresh vegetables (‘Applicant’s Goods’)

   Endorsement:  Evidence and/or other circumstances provided under subsection 41(4)

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. The Application was examined as required by s 31 and advertised for possible registration on 26 May 2021.

3. On 26 July 2021 the Opponents filed a Notice of Intention to Oppose the registration of the Trade Mark followed by its Statement of Grounds and Particulars (‘SGP’) on 26 August 2021. The Applicant filed a Notice of Intention to Defend the registration on 20 October 2021.

4. Thereafter the parties filed evidence in accordance with the Regulations. The Opponents filed the following evidence in support:

• Statutory Declaration of David Bazzani, Manager of Bazzani Holdings, made on 19 January 2022.

• Statutory Declaration of Jared French, Assistant Manager of French’s Ironstone Rise, made on 19 January 2022.

• Statutory Declaration of Kevin Peter Ashby, Trade Mark Attorney for the Opponents, made on 20 January 2022, with Exhibits KPA01 to KPA09 (‘Ashby’).

• Statutory Declaration of Jolene Luzny, Director of S.F.Ag Pty Ltd, made on 20 January 2022.

• Statutory Declaration of Kane Luzny, Director of S.F.Ag Pty Ltd, made on 20 January 2022.

• Statutory Declaration of Travis Paul Luzny, Owner/Director of Terracept Orchards, made on 20 January 2022.

• Statutory Declaration of Liana McCulloch, Manager and Grower Liaison of Donnybrook Packing Pty Ltd, made on 20 January 2022 (‘McColloch’).

• Statutory Declaration of Mark Taranto, Sales Manager of J.H. Leavy & Co, made on 20 January 2022

• Statutory Declaration of Ian Hastings Tolson, Owner/Director of Tolson Farms Pty Ltd and Avorama Pty Ltd, made on 20 January 2022 (‘Tolson’).

• Statutory Declaration of Ross Bryant, East Coast Sales Manager of the Opponents, made on 21 January 2022.

• Statutory Declaration of Robert Andrew Delroy, Business Development Manager of the Opponents, made on 21 January 2022, with Exhibits EX01 to EX14 (‘Robert Delroy’).

• Statutory Declaration of Russell Andrew Delroy, Director of the Opponents, made on 21 January 2022, with Exhibits RAD01 to RAD02.

• Statutory Declaration of Guiseppe Masasso, Owner of Rocky Creek Orchards, made on 21 January 2022 (‘Massasso’).

• Statutory Declaration of Pantellis Toumbos, Director of Produce Time Pty Ltd, made on 21 January 2022 (‘Toumbos’).

• Statutory Declaration of Hugh Benjamin Walker, Sales and Marketing Manager of the Opponents, made on 21 January 2022.

1. The Applicant filed the following evidence in answer (‘EIA’):

• Declaration of Graeme Thomas, former avocado farmer, made on 19 April 2022 (‘Thomas’).

• Declaration of Shane Bendotti, Company Secretary of the Applicant and a partner in Joe Bendotti & Co, made on 29 April 2022, with Annexures SB-1 to SB-8 (‘Shane Bendotti’).

• Declaration of Joseph Bendotti, Director of the Applicant and a partner in Joe Bendotti & Co, made on 27 April 2022 (‘Joe Bendotti’).

• Declaration of Cormac te Kloot, Divisional Manager, Avocado and Banana Marketing at Costa Group, made on 27 April 2022 (‘te Kloot’).

• Declaration of Barry Dunnet, Trustee of the BJ Dunnet Family Trust, made on 29 April 2022 (‘Dunnet’).

• Declaration of Eugene Henningheim, Director of Moonlight Forest Avocados, made on 29 April 2022 (‘Henningheim’).  

• Declaration of Dennis Raymond Roche, Director of D & D Roche (WA) Pty Ltd, made on 5 May 2022, with Confidential Annexure DR1 (‘Roche’).

• Declaration of Stephen Iacopino, employee of VB Scullli, made on 20 May 2022 (‘Iacopino’).  

1. The Opponents filed the following evidence in reply:

• Declaration of Robert Andrew Delroy, made on 19 December 2022, with Exhibits RAD2-01 to RAD2-03 (‘Delroy 2’).

  oExhibit RAD2-01 to Delroy 2 comprises the Declaration of Alfonso Sparacino, Director of Allcorps Pty Ltd, made on 4 February 2021(‘Sparacino’).

  oExhibit RAD2-02 to Delroy 2 comprises the Declaration of Thanh Tran, Store Manager, Market City Fruits Pty Ltd, made on 12 March 2021 (‘Tran’).  

• Declaration of David Weisz, Director of Reservoir Partners Pty Ltd, made on 19 December 2022, with Exhibit DW-01.

1. Once time for filing evidence had ended both parties were given the opportunity to request either an oral hearing or hearing by way of written submissions. The Opponents and Applicant requested an oral hearing via videoconference. As a delegate of the Registrar of Trade Marks, I heard the matter by videoconference on 19 February 2024. Kevin Ashby of IP Strategies International appeared on behalf of the Opponents. Martin O’Sullivan of O’Sullivans Patent and Trade Mark Attorneys Pty Ltd appeared on behalf of the Applicant. The representatives’ oral submissions were supported by written submissions filed prior to the hearing.

Preliminary Issue

1. On 12 February 2024 the Applicant filed the declaration of Martin Peter O’Sullivan made on 12 February 2024 with Annexure MO-1 (‘O’Sullivan’). The Applicant submits that the declaration was filed after the periods for filing evidence ended because the matters addressed therein were identified during preparation of written submissions for the hearing in relation to this matter.

2. On 16 February 2024 the Opponents filed a written submission objecting to the Applicant’s request for additional evidence. The Opponents argued that it was not in the interests of justice nor in the public interest to allow the evidence, and the Opponents representative would have to consider, assess and advise the Opponents on this further evidence which would incur additional costs. At the hearing the Opponents noted that it had indulged the Applicant by not objecting to its late filing of two declarations in the EIA.

3. Under reg 21.15(4), the Registrar is not bound by rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate. Regulation 21.19 provides the Registrar with a discretion to take into account information that is relevant to proceedings. 

4. Part 51.2.5 of the Trade Marks Manual of Practice and Procedure notes the Applicant must make a compelling case for the Registrar to take information into account that is not part of properly filed evidence. Other than addressing issues identified in the preparation of the Applicant’s submission, the Applicant made no compelling case for why this matter should be given weight. In any event, for reasons which follow O’Sullivan does not change the outcome. I therefore do not exercise my discretion under regs 21.15(4) or 21.19 to have regard to the further evidence filed by the Applicant.

Grounds of Opposition, Relevant Date and Onus

1. In the SGP the Opponents nominated grounds of opposition under ss 41, 42(b), 43 and 62(b).

2. The date at which the rights of the parties are to be determined is the filing date 12 November 2020 (‘Relevant Date’).

3. The Opponents bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

Section 41

1. Section 41 provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)  This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   (iii)  any other circumstances.

   (5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

2. In the SGP the Opponents particularise the s 41 ground of opposition as follows:

   The Opposed Mark is wholly descriptive: It consists of two commonly used abbreviations joined by a hyphen: AUS, a geographical descriptor for “Australia”, and AVO, short for “avocado pear”. Used in sequence, AUS AVO means an “Australian avocado pear”. The opposed Mark is not capable of serving as a badge of origin and distinguishing the goods of one trader from those of another.

   These words are reasonably required for use by other avocado pear traders, lacking improper motive, to describe their produce.

   Other traders may consider themselves to be prevented by registration of the Opposed Mark from making descriptive use of “Aus” or be subjected to threats of infringement arising from such use to indicate the origin of an “avo” produced in this country.

   There is insufficient evidence of use of the Opposed Mark in commerce to justify its acceptance and registration.

   The Opposed Mark has not become known to the public to the extent necessary for it to be recognized as a trademark, nor to an extent that justifies allowance based on acquired distinctiveness through use.

   The Applicant has not itself used the Opposed Mark. Such use as may exist has been by a third party and has not been made under the control of the proprietor in a way that could inure to the benefit of said proprietor.

3. Section 41 must be assessed having regard to s 33, which embodies a ‘presumption of registrability’. Section 33(3) compels the Registrar to accept a trade mark for registration unless the Registrar is satisfied that grounds exist for rejecting the application.

4. In Clark Equipment Co v Registrar of Trade Marks, Kitto J stated that the inherent adaptation of a trade mark is assessed:

   [B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[4]

   [4] [1964] HCA 55, [5].

5. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court explained that the test for inherent distinctiveness involves a two-step process. Firstly, determination of the ordinary signification of the sign to those who would purchase, consume or trade in the goods. Secondly, having determined the ordinary signification, determination of the likelihood of the sign being desired for use by others.[5]   

   [5] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).

6. The ordinary signification is the ordinary meaning of the words to any person in Australia concerned with the goods.[6]

   [6] Ibid [70].

7. The Trade Mark consists of two words, AUS and AVO with a hyphen joining the words. The parties agree that the words are well-known and commonly used abbreviations to designate the country AUSTRALIA and the fruit AVOCADO. I am satisfied that the abbreviations AUS and AVO have an immediate meaning which would be understood by the target audience, both buyers and consumers, as having a directly descriptive meaning in relation to the Applicant’s avocado goods. Accordingly, the ordinary signification of the Trade Mark in relation to avocados is Australian Avocados.

8. Having determined the ordinary signification, I turn to whether other traders might legitimately desire to use the Trade Mark, or something so nearly resembling it for its ordinary signification in respect of their own similar goods.

9. The Opponents submit that the words AUS and AVO are part of the common heritage and are used or could be reasonably required for use by other traders dealing in Australian avocados, as opposed to fruit from a different country.

10. The Applicant submits that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish its goods. The Applicant submits that there is no evidence that the Trade Mark forms part of the common heritage or that it that is ordinarily used to indicate any of the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of the goods, or the time of production of goods or of the rendering of services.

11. The Trade Mark has an ordinary meaning which directly names the Applicant’s avocados and their geographical origin. It strikes me as a combination of words which other traders, without any improper motive, would desire to use for its ordinary signification in connection with their own avocados. Moreover, the presence of the hyphen does not materially affect the Trade Mark visually, aurally or conceptually.

12. In my assessment the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s avocados. The Trade Mark is a combination of words which ‘cannot do the job of distinguishing without first educating the public that it is a trade mark’.[7] Accordingly it should be considered under s 41(3).

    [7]  British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, 306 (Jacob J).

13. As I have found that the Trade Mark is not to any extent inherently adapted to distinguish the Applicant’s avocados, the ground of opposition will be established in relation to these goods if the Applicant or predecessors in title have not used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact distinguish the Applicant’s avocados.

Evidence of use

1. In Thomas, Mr Thomas states that the AUS-AVO trade mark was first used as a trade mark in relation to avocados in the 1990’s. Mr Thomas states that he was the owner of the AUS-AVO trade mark from 1999 until 2001 and from 2005 to 2014. Mr Thomas states that between these times the AUS-AVO trade mark was owned by companies he was associated with. Mr Thomas estimates that, on average, each year he sold 100,000 boxes of avocados to the market bearing the AUS-AVO trade mark. These boxes were sold to wholesale agents in Queensland (‘Qld’) and New South Wales (‘NSW’) who sold them on to retailers in Qld, NSW and Victoria (‘VIC’). Mr Thomas states that he ceased his farming business in 2006 and authorised Joe Bendotti (‘JB’) to use the AUS-AVO trade mark in relation to premium quality avocados as part of his avocado farming business, Joe Bendotti & Co (‘JBC’). Mr Thomas states that he assigned the AUS-AVO trade mark to Joe Bendotti in 2014.

2. In Joe Bendotti, JB states that he is an avocado farmer, a partner in Joe Bendotti & Co and a director of the Applicant.[8] JB confirms that in 2006 Mr Thomas authorised the use of the AUS-AVO trade mark in relation to avocados until it was assigned to him in 2014. From 2014 to 2018 JB authorised the use of the AUS-AVO trade mark to the Applicant via its Bendotti Avocados (‘BA’) business. JB confirms that in 2018 he assigned the AUS-AVO trade mark to the Applicant.

   [8] Confirmed by documentation in PART-F of the SB declaration [Annexure SB-1].

3. In Shane Bendotti, Mr Shane Bendotti (‘SB’) states that JBC started using the AUS-AVO trade mark in relation to avocados in 2006 by selling avocados via wholesale agents in NSW through Allcrops and in VIC through Market City Fruits. The boxes of avocados bearing the AUS-AVO trade mark were sold by these agents to a variety of retailers in NSW and VIC including large supermarket chains such as IGA, Aldi, Coles and Woolworths and other independent fruit and vegetable retailers, who then on sold them to the general public. SB states that the Applicant has used the AUS-AVO trade mark in relation to avocados since 2014. From 2014 to 2018, use by the Applicant was under the authority of JB.

4. SB states that use of the AUS-AVO trade mark has been predominantly on boxes prominently displaying the AUS-AVO trade mark. SB states that it is usual for wholesale and retail agents to present the avocados for sale to retailers in the boxes the avocados are packaged in. SB states that he has been advised that some retailers leave the avocados in the packaging boxes to present them for sale to customers. Below I have reproduced an image of a photo taken in 2019 of the avocados for sale in AUS-AVO branded boxes at a Woolworths store in NSW:

1. Confidential Annexure SB-5 to Shane Bendotti comprises two tables providing a summary of Unit Sales and Revenue for avocados from JBC packed in AUS-AVO branded boxes. The first table refers to boxed avocados supplied to wholesale agents from 2009 to 2022. The second table relates to boxed avocados supplied to the Costa Group for the years 2012 to 2017 and 2021 to 2022.  

2. Confidential Annexure SB-6 to Shane Bendotti comprises four copies of remittances to J Bendotti from Market City Fruits dated from 2012 to 2016, and nine copies of remittances to Bendotti Avocado or Bendotti Avocado (Joe Bendotti) from Allcrops dated from 2017 to 2021.

3. The Applicant’s promotional activities includes sponsorship of the Southerners Football Club and local Pemberton area basketball club, signage at the Applicant’s premises, and a promotional video prepared by Compaq which shows footage of the Applicant’s packing shed operations and use of the AUS-AVO trade mark on boxes and signage as at 2014.[9]

   [9] Shane Bendotti Declaration [18], [19], [20] also note Compaq supplies packing shed equipment.

4. SB states that since 2017 the Applicant through its BA business has provided contract packing services to other Western Australian (‘WA’) avocado growers. The contract allows growers to sell their avocados under the AUS-AVO trade mark provided requirements and standards set out by the Applicant are met. These contracts have resulted in further use of the AUS-AVO trade mark in relation to avocados. SB states that in 2017 seven growers had their avocados packed in AUS-AVO boxes, and by 2021 the number of growers had dropped to four.  

1. The Applicant’s evidence of growers’ perception of the trade mark is provided by declarants involved in commercial farming of avocados. The deponents live in WA and have entered into a packing contract with BA which allows them to sell their own avocados under the AUS-AVO trade mark.  The deponents state that they have always associated AUS-AVO as a trade mark of BA and its use in relation to premium quality avocados. In the deponents’ experience, due to their quality, AUS-AVO avocados are highly sought after and often attract a premium price.[10] In addition, in Roche, Mr Roche states that he operates an avocado farm in WA and that he entered into a packing contract for his avocados with the Applicant in 2014. Mr Roche states that he has sold avocados under the Trade Mark every year since 2014 and estimates that he has sold 65,000 boxes of avocados in AUS-AVO boxes each year. Mr Roche states that customers for AUS-AVO avocados includes Costas, Allcrops, Market City Fruits, VB Sculli, Thompson Fresh and Fox Farms (export). Mr Roche states that aside from the packing contract Roche also signed a license with the Applicant in relation to use of the Trade Mark.[11]

   [10] Dunny and Hennningheim declarations.

   [11] Roche [Confidential Annexure DR-1].

2. Confidential Annexure SB-5 to Shane Bendotti comprises two tables showing Annual Sales Revenue and Units from growers that had their avocados packed in AUS-AVO branded boxes with the authority of the Applicant. In the first table, the unit data in the date range 2018 to 2022 refers to boxed avocados supplied to wholesale agents and the sales revenue data is only for the period 2021 to 2022. The figures in the second table relate to boxed avocados supplied to the Costa Group from 2021 to 2022.

3. The Applicant’s evidence from wholesale agents is provided by declarants employed by VB Sculli and the Costa Group. The deponents state that AUS-AVO branded avocados are delivered in boxes clearly marked with the AUS-AVO trade mark and are sold in the same boxes. The deponents state their customers include supermarkets and other independent fruit and vegetable retailers in NSW and VIC. The deponents state that the AUS-AVO trade mark is exclusively associated with the Applicant and identifies premium quality avocados which can attract a premium price in the market.[12] Other supporting statements for the Applicant from wholesale agents are also found at Exhibit RAD2-01and RAD2-02 to Delroy 2 which comprises the declarations of Mr Sparacino from Allcrops and Mr Tran from Market City Fruits. Both declarants state that they have been selling avocados from WA, supplied by the Applicant under the AUS-AVO trade mark every year since 2010.  

   [12] Iacopino and te Kloot declarations.

4. In response to the Applicant’s evidence the Opponents submit that there is no evidence that Mr Thomas assigned any unregistered rights to JB and that Mr Thomas only assigned rights to trade mark registration 603096, being a logo containing the words AUS-AVO. The Opponents assert that the evidence provided shows that the Trade Mark is used in relation to the Applicant’s packing shed services, not on fresh fruit and on (or in relation to) avocados in particular. The Opponents submit that the use on boxes of avocados does not constitute use on or in relation to the avocados in boxes, because although the boxes may temporarily contain avocado goods, the Trade Mark is to identify the packing shed and the services provided by the shed operator. The identity of the grower is displayed on a label applied to the boxes. The Opponents submit that this label identifies the source, or origin, of the goods and that the Trade Mark does not perform this function, otherwise there would be no need for the grower to be identified. The Opponents also note that contrary to widespread and typical industry practice, there is no evidence that the Applicant had ever applied the Trade Mark to small stickers that are then applied to individual pieces of fruit.

5. Overall I am not satisfied from the evidence that the words AUS-AVO have developed a secondary meaning as a trade mark of the Applicant such that the average Australian consumer would overlook the primary meaning of the words AUS-AVO when applied to the goods.  

6. Mr Thomas states that first use of the trade mark was in the 1990’s however there is no evidence to support this assertion. The confidential sales and unit figures supplied by the Applicant are from 2009 onwards and show modest and varying volumes of sales over the years. In support of these figures the Applicant provided a selection of remittances received from the wholesaler agents Allcrops and Market City Fruits since 2012. However, none of the remittances mention the Trade Mark. The deponents from these wholesale agents support the contentions that commercial transactions have taken place for the sale of avocados under the Trade Mark, however it remains unclear as to the market share enjoyed by the Applicant, especially as it targets the premium Hass market. I also note that the Applicant and wholesale agents assert that the avocados packed in the AUS-AVO branded boxes are sold to large supermarket chains and independent fruit and vegetable stores. However, there is no indication of which supermarket chain or store purchases the goods bearing the Trade Mark, other than a lone photograph taken in 2019 at an undisclosed Woolworths store in NSW. Further, the is no information showing how many stores within large supermarket chains are actually involved in the sale of the goods or whether these stores make regular in-season purchases of the goods.

7. Promotion of the Trade Mark has been limited to sponsorship and signage activities undertaken in and around Pemberton WA and participation in a case study as part of a wider promotion of a third party. No advertising figures have been provided and there is no evidence of any communications/promotional campaigns to show the Applicant has invested in the development of the brand especially in NSW and VIC markets.

8. In regard to consumer awareness of the Trade Mark it is noted that the Trade Mark is used predominately on the boxes that the avocados are packed in. Therefore, the wholesale agent would likely see the Trade Mark and present the avocados for sale to retailers in the AUS-AVO branded boxes. A retailer who purchases the avocados would likely see the branded packing box, and some end consumers who shop where the avocados are sold in the packing boxes would see the Trade Mark. However, the Applicant admits that only some retailers sell the product in the packing boxes and there is no evidence that the avocados are individually labeled with the Trade Mark or that retailers provide labeling which mentions the Trade Mark. In these circumstances it is difficult to see how the end customer’s recognition of the Trade Mark would be ignited if the avocados are not sold in their box. 

9. In the absence of any discrete promotional campaigns undertaken by the Applicant, I am not satisfied that a consumer in NSW or VIC commenting on or hearing about AUS-AVO avocados would conjure associations with the Applicant rather than the descriptive nature of the words when applied to avocados. This is particularly so given the number of traders in the Australian market place selling avocados who would wish to label their goods as being from Australia, so that consumers can recognise and buy local fruit.[13]

   [13] Masasso [13].

10. I consider from what is demonstrated in the evidence before me, that the Applicant has only used the Trade Mark in relation to avocados and in the absence of evidence, the Applicant’s use of the term AUS-AVO on packing boxes, does not distinguish the Applicant’s avocados on its own. Nor does the evidence sufficiently demonstrated that the Trade Mark has acquired a meaning related to the Applicant’s avocados which overshadows its descriptive meaning. 

11. The Applicant’s evidence is not sufficient to satisfy me that the Trade Mark did in fact distinguish the Applicant’s avocados at the Relevant Date. Whilst the Trade Mark does not directly describe the remaining goods, it is nonetheless misdescriptive of them as will be seen in the following section.

Section 43

1. Section 43 provides:

   43  Trade mark likely to deceive or cause confusion

   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.

2. In the SGP the Opponents particularise the s 43 ground of opposition as follows:

   The connotations of the mark are:

   1. That goods in relation to which it is used emanate from Australia;

   2. That the goods in relation to which it is used are avocado pears, even though the specification extends to unspecified “fresh fruit” and “fresh vegetables” and could notionally be used on anything that qualifies as such. It is self-evident that use of the mark in relation to:

   a. anything but avocado pears, or

   b. avocado pears not produced in Australia would be misleading and would confuse the buying public.

   3. That the goods covered by the specification and bearing the Opposed Mark are the only avocado pears that emanate from [sic] Australia, when this is not the case. Such use is misleading and would confuse the buying public.

   4. The mark connotes an official authorisation or quality certification, for example that the goods bearing the mark are certified by a statutory or recognized industry representative body (such as AUStrade) to be Australian-produced or to be avocado pears, when no such authorisation exists. This is misleading and would confuse the buying public.

3. To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark itself. Justice Gyles in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question …[14]

   [14] [2006] FCA 1663, [53].

4. In Winton Shire Council v Lomas, Spender J noted:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[15]

   [15] [2002] FCA 288, [19].

5. The Opponents submit that the connotations the Trade Mark has are:

a.that the designated goods in relation to which it is to be used emanate from Australia;

b.that the goods in relation to which it is used are avocado pears, even though the specification extends to unspecified fresh vegetables and could notionally be used on anything that qualifies as such;

c.that the designated goods when bearing the Trade Mark are the only such goods that emanate from Australia, when this is not the case;

d.that the goods in relation to which it is used are of “export quality” and therefore superior to avocados packed in other boxes; and

e.that the goods in relation to which the Trade Mark would be applied carry an official authorisation or quality certification.

1. The Applicant did not address the Opponents points at (a) to (c), however it submits that in terms of the connotations at (d) to (e) there is no evidence that the term AUS-AVO bears those connotations.

2. I have already established the Trade Mark is an abbreviation for Australian Avocados. In these circumstances the identified connotation present in the trade mark is that the Applicant provides Australian avocados. I have found that under s 41(3) the Trade Mark does not distinguish avocados and by excluding the goods that the Trade Mark described the Trade Mark becomes misdescriptive of the resultant goods. It follows that the use of AUS-AVO in relation to the Applicant’s remaining goods presents a real tangible danger of consumers being misled into what they are purchasing. For this reason, because of the connotation, I am satisfied that use of the Trade Mark in relation to the Applicant’s remaining goods is likely to deceive or cause confusion amongst consumers.

3. For the reasons outline above, I am satisfied that the Opponents have established the ground of opposition under s 43 in relation to the Applicant’s remaining goods.

4. Section 55 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.

5. The Opponents have established its opposition in respect of all the Applicant’s Goods. Therefore, I refuse to register trade mark number 2135740. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought an award of costs. As the Opponents are successful in the opposition, I award costs against the Applicant under s 221 in accordance with the amounts detailed in Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

9 April 2024