Murray Goulburn Co-Operative Co. Limited v Biolife New Zealand Limited

[2019] ATMO 3

TRADEMARKSACT 1995

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

Re:Opposition by Murray Goulburn Co-Operative Co. Limited to registration of trade mark application 1790951 (5, 29) – natrapure (Fancy) – in the name of Biolife New Zealand Limited

DELEGATE:

Nicholas Smith

REPRESENTATION:

Opponent: Clayton Utz

Applicant:  James & Wells Intellectual Property

DECISION:

2019 ATMO 3

Trade  Marks  Act  1995  (Cth) - Section 52 opposition: s 44 considered – ground established – registration refused

Background

1.This decision concerns an opposition brought by Murray Goulburn Co-Operative Co. Limited (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Biolife New Zealand Limited (‘Applicant’):

ApplicationNumber:	1790951
FilingDate:	19 August 2016
Goods:	Class 5: Nutritional supplements and additives; dietary supplements; dietetic foods, substances, beverages; health food products and supplements in this class; nutritional meal replacement bars, powders and snacks for medical purposes; vitamins; vitamin  formulations for human consumption; minerals and mineral supplements for foodstuffs; nutritional additives, supplements and cultures; probiotic cultures, preparations and substances; probiotic supplements for human consumption, including probiotic powder, capsules and tablets; bacterial and biological preparations for nutritional purposes; cultures of micro- organisms; food fortified with vitamins, minerals and herbs for medicinal purposes, being the support of human functions; proteins and protein products for human consumption; dietary supplements and food for babies and infants; baby formula; infant formula; colostrum; colostrum milk powder; colostrum milk tablets;   colostrum   milk   capsules;   shark   cartilage

Class 29: Dairy products; dairy based beverages and powders; milk; milk products; milk substitutes; milk powder; protein milk; milk protein  concentrate powders; food preparations based on protein; dietetic substances with a milk base not for medical use; cream (dairy products); butter; edible oils; edible fats; cheese; cheese products; whey; whey protein and whey protein concentrates for human consumption; cultured dairy products; yoghurt; drinking yoghurt; dessert products in this class (dairy products predominating)

(‘Applicant’s Goods’)

TradeMark:

(‘Trade Mark’)

 

capsules, being a dietary supplement; mussel extract capsules, being a dietary supplement; cod liver oil and powders; Omega 3, bee pollen, bee propolis, being dietary supplements, marine collagen, being for medical use; casein dietary supplements; supplement preparations based on vegetables, fruits, meat and seafood and milk products in liquid, solid or powder form for human consumption

2.Following the advertisement on 12 January 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 13 March 2017. The Opponent then filed a Statement of Grounds and Particulars on 13 April 2017 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 58A and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 11 May 2017.

Evidence

3.The Opponent filed Evidence in Support of its opposition (‘EIS’) on 18 August 2017. This evidence consists of a declaration by Michael Walsh, commercial director of the Opponent, made on 18 August 2017 with Exhibits MW-1 to MW-17 (‘Walsh Declaration’).

4. The Applicant did not file any evidence in answer.

5.The Opponent makes a claim that the information contained in the Walsh Declaration, including publicly available information such as the identity of its trade mark registrations, is confidential.  I adopt the approach of the Delegate in Source Homeloans

Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (in that case solely by the then Opponent) stated:

The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.1

6.Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. By letter issuing from IP Australia on 4 January 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record. The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon. On 5 February 2018 the Opponent filed its submissions (‘Opponent’s Submissions’). The Applicant did not file any submissions.

7.I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

1 Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

(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.

In doing so I take account of  the written record comprised of the materials mentioned in the preceding paragraphs.

The Opponent

8. The Opponent is an Australian dairy food company.

9.The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’). The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods’.

Number	Trade Mark	Prio rit y Date	Goods
959061	NATRA (‘NATRA Mark’)	24 June 2003	Class 5: Pharmaceutical products and dietetic substances adapted for medical use, including pharmaceutical products and dietetic substances based on milk, milk products and milk fractions, the foregoing dietetic substances not containing artificial sweeteners and the foregoing dietetic substances not constituting artificial sweeteners Class 29: Milk and milk products including powdered milk products and cheeses (‘Natra Goods’)
1380042	NATRASSAL	26 Aug 2010	Class 30: Flavour enhancers; natural flavour enhancers; flavour enhancers from whey and other milk and dairy products; flavour enhancers being milk mineral complexes; all of the aforementioned goods being for food and none of the aforementioned goods being essential oils
1382174	NATRAGUARD	8     Sep 2010	Class 5: Dairy-based products for human consumption in this class; dietetic substances in this class; dietary food supplements; dietary food supplements in powder, capsule or tablet form; dairy-based dietary food supplements; powders for dietary and/or medical purposes;

vitamin and mineral supplements and preparations, but excluding such goods to protect from or repel insects Class 29: Dairy-based products in this class; dairy-based sports nutrition products; dairy- based sports nutrition products in powder, capsule or tablet form; dairy-based powders; dairy-based powders with added protein; milk proteins; dairy-based beverages; protein powders for human consumption
1396963	NATRABOOST	29 Nov 2010	Class 5: Dairy-based products for human consumption in this class; dietetic substances in this class; dietary food supplements; dietary food supplements in powder, capsule or tablet form; ingredients for dietary food supplements; dairy-based dietary food supplements; whey based dietary food supplements; powders including whey powders for dietary and/or medical purposes; vitamin and mineral supplements and preparations Class 29: Dairy-based products in this class; dairy-based sports nutrition products; dairy- based sports nutrition products in powder, capsule or tablet form; dairy-based ingredients for sports nutrition products; dairy-based powders; whey based powders, dairy-based powders with added protein; milk proteins; dairy-based beverages; protein powders for human consumption; whey protein
1414558	NATRASTART	16 Mar 2011	Class 5: Infant formula; dairy-based food for babies; powdered milk for babies
1458016	NATRASTART	16 Mar 2011	Class 5: Dairy-based products for human consumption in this class; dietetic substances in this class; dietary food supplements; dietary food supplements in powder, capsule or tablet form; ingredients for dietary food supplements; dairy-based dietary food supplements; whey based dietary food supplements; powders including whey powders for dietary and/or medical purposes; vitamin and mineral supplements and preparations; none of the aforementioned goods being infant formula, dairy-based food for babies or powdered milk for babies Class 29: Dairy-based products in this class;

dairy-based sports nutrition products; dairy- based sports nutrition products in powder, capsule or tablet form; dairy-based ingredients for sports nutrition products; dairy-based powders; whey based powders, dairy-based powders with added protein; milk proteins; dairy-based beverages; protein powders for human consumption; whey protein
1459890	NATRAPRO	16 Nov 2011	Class 5: Dairy-based products in this class; casein for medical purposes; protein foods for dietetic purposes (adapted for medical purposes) including in powder and tablet form; protein products for  human consumption (adapted for medical purposes); meal replacement powders and beverages; dietetic substances adapted for medical use, dietetic beverages adapted for medical use, dietetic food preparations adapted for medical use; dietetic foods for use in clinical nutrition; dietetic milk shakes for medical use; preparations for use as dietetic additives for food; nutritional supplements Class 29: Dairy-based products in this class; dairy products in powder form; casein for food; dairy-based powders with added protein; powdered milk; dairy-based beverages; protein-based powders for human consumption; protein-based nutritional drink mix for use as a meal replacement; whey, whey protein, whey protein concentrates; milk proteins, protein-based food  preparations being dietetic supplements or nutritional additives (not for medical purposes); milk, low fat milk, milk beverages, flavoured milk, skimmed milk, semi-skimmed milk, high calcium milk, long life milk, milk with added dietary supplements (not for medical purposes), lactose-free milk; cheese, reduced fat cheese; sliced cheese, grated cheese; low fat cheese; butter, salt-reduced butter, dairy spreads, salt-reduced dairy spreads, low-fat dairy spreads, low fat dairy spreads with added dietary supplements (not for medical purposes); cream, thickened cream, long life cream, sour cream, long life sour cream, whipped cream, buttercream; curd; desserts made from milk products (except ice cream);

1. The Walsh Declaration contains the following claims/statements:

·The Opponent has since 2012 offered a range of infant formula and milk powders under the trade marks NATRA and NATRASTART. These products are sold in supermarkets such as Coles and Woolworths and selected chemists.

·Under the Marketing in Australia of Infant Formulas: Manufacturers and Importers Agreement, signatories, of which the Opponent is one, are limited in the advertising they can undertake in respect of infant formula. Nevertheless the Opponent is able to promote certain products under the NATRA and NATRASTART marks through its websites, product displays in supermarkets, banner advertisements and promotion through the FlyBuys scheme.

·The Opponent’s NATRA and NATRASTART products have also been referred to in third party media.

1. Even given the restrictions on advertising and the limited market for infant formula and milk powders in Australia, the Opponent’s provided sales figures are unimpressive for FY13 and FY14 and are not provided at all for FY15. They are considerably more impressive for FY16 and onwards. Equally the Opponent has only provided evidence of marketing expenditure in Australia for FY16 onwards, with such expenditure being not inconsiderable.

The Applicant

1. The Applicant has provided no evidence in this matter and as such I have no details of the Applicant other than what is on the Register.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58A and 60 of the Act. To successfully oppose the application the Opponent needs to establish at least one of the remaining grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 44. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

1. The onus of proof in an opposition rests upon the Opponent.2 The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.3 The date at which the rights of the parties are to be determined is 24 September 2016 (‘relevant date’), being the priority date of the application in Australia.4

Discussion

Section 44

1. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

(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)    it 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).

(2) …

(3)    If the Registrar in either case is satisfied:

(a)    that there has been honest concurrent use of the 2 trade marks; or

(b)    that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:  For limitations see section 6.

(4)    If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

2 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

3 Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

4  Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1)

Trade Marks Act 1995 (Cth).

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6. Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

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.

16. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

·     has  a  priority  date  which  is  earlier  than  that  of  the  Trade  Mark  (‘the  first requirement’);

·     is  substantially  identical with or  deceptively similar  to  the Trade Mark  (‘the second requirement’); and

·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

1. In the event that each of these requirements is satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon marks. In the absence of any evidence or submissions from the Applicant in this matter, the requirements of ss 44(3) or 44(4) have not been satisfied.

1. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks, however for this proceeding it is only necessary to consider the NATRA Mark. Each of the other Opponent’s Trade Marks contain additional elements further distinguishing that mark from the Trade Mark and are registered for goods that either do not significantly differ or are narrower than the Natra Goods. Were I to find that the s 44

ground  is  not  established  by  the  NATRA  Mark,  I  would  necessarily  reach  the  same conclusion when considering the remaining Opponent’s Trade Marks.

1. The NATRA Mark has a priority date that is earlier than the priority date of the Trade Mark. I consider that at least some of the Natra Goods are similar to some of the Applicant’s Goods, as both marks are registered or sought to be registered for dairy products in classes 5 and 29.  The first and third requirements are satisfied.

Substantially identical and/or deceptively similar

1. I will now consider whether the Trade Mark is substantially identical to the NATRA Mark. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.5

2. The Trade Mark and the Opponent’s Trade Mark are set out below:

   NATRA

3. On a side by side comparison there is a clear difference between the respective trade marks, in that the Trade Mark includes the word ‘pure’ and is in slightly fancy script. The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical. I move  then  to  consider whether the Trade Mark and NATRA Mark are deceptively similar.

1. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   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

5 (1963) 109 CLR 407, [12].

ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].6

1. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths7at [49]; Australian Woollen Mills8at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s9at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating10at 594 – 595.

   Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

6 Ibid [13].

7 Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
8 Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
9 Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

10 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].11

1. I do not consider that the fancy script in the Trade Mark will operate to prevent confusion in any significant way. The particular script used in the Trade Mark does not appear to be particularly distinctive and unique and is likely, in the context of which the Applicant’s Goods are purchased (on a supermarket shelf), to be read by the consumer as ‘natrapure’. In essence the Trade Mark wholly incorporates the NATRA Mark and adds the word ‘pure’. ‘Pure’ is an essentially laudatory term that refers to a product not being mixed or adulterated with any other product, a relevant consideration when purchasing both the Applicant’s Goods and the Natra Goods. Conversely, ‘Natra’ is an invented, distinctive word which consumers are likely to remember and focus on when considering the respective marks.

1. I consider that in this case, it is highly likely that a consumer, who is aware of the NATRA Mark but has imperfect recollection, when coming across the Trade Mark in the circumstances of use (i.e. on a milk product on a supermarket shelf), will be caused to wonder if the NATRAPURE product is a new brand or offering from the Opponent under its NATRA Mark (i.e. a ‘natra pure’ product) or simply the use of the NATRA Mark along with the laudatory term ‘pure’. As such there is a real tangible danger of consumer confusion arising from the shared use of the dominant ‘natra’ elements in both marks.

1. I find that the Opponent has established its ground of opposition under s 44 of the Act.

Decision

1. I have found that the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

11 [2012] FCA 1022, [38]-[46].

Costs

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant as per Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Nicholas Smith Hearing Officer

Oppositions and Hearings 15 January 2019