Naturli' Foods A/S v Wholesome by Nature Pty Ltd

[2022] ATMO 105

TRADE MARKS ACT 1995

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

Re:Oppositions by Naturli’ Foods A/S to registration of trade mark application numbers 2108631 – Wholesome by Nature and 2108632 – Wholesome by Nature figurative – both in Classes 29 and 30, in the name of Wholesome by Nature Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Griffith Hack.   Applicant: DCA Lawyers Pty Ltd.
Decision:	2022 ATMO 105 Trade Marks Act 1995 (Cth) – oppositions under section 52 – grounds of opposition under reg 4.15A and ss 41, 42(b), 60, and 62A – no ground established – trade marks to proceed to registration.

Background

1. This is a decision on the oppositions by Naturli’ Foods A/S (‘Opponent’) to the registration of trade mark application numbers 2108631 and 2108632 (‘Applications’) in the name of Wholesome by Nature Pty Ltd (‘Applicant’) filed on 13 August 2020 (‘Priority Date’).

Trade mark number 2108631	Trade mark number 2108632
Wholesome by Nature
‘Word Mark’	‘Composite Mark’
Collectively, the ‘Trade Marks’

1. Both of the Applications cover the same goods, although the specifications are worded slightly differently. For the sake of brevity, I list only the specification for the Word Mark below:

   Class 29: Almond milk; Coconut cream; Coconut milk; Desiccated coconut; Edible oils; Fruits, dried; Mixtures of nuts and dried fruits; Prepared snacks made from dried fruit; Prepared snacks made from dried vegetables; seed-based snack bars; Fruit-based snack foods; nut-based snack bars

   Class 30: Breakfast cereals; Flour mixes; Sugar; Cereal products in bar form

   (‘Applicant’s Goods’)

2. The Applications were examined, accepted for possible registration, and subsequently advertised for opposition on 14 January 2021. The Opponent filed notices of its intention to oppose the Applications on 10 March 2021 and statements of grounds and particulars (‘SGPs’) on 7 April 2021. The Applicant filed notices of its intention to defend the Applications from opposition on 25 May 2021.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[1] The Opponent filed Evidence in Support (‘EIS’) on 26 August 2021. The Applicant filed Evidence in Answer (‘EIA’) on 29 November 2021. The Opponent did not file Evidence in Reply.   

   [1] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. The parties were given the opportunity request a hearing by video conference or written submissions only. Neither party requested to be heard. The Applicant requested that decisions be made based on the materials on file and paid the relevant fees. I have decided this matter as a delegate of the Registrar of Trade Marks based on the particulars in the SGPs and the evidence filed by the parties.

   Grounds and onus

5. The SGPs nominate grounds of opposition under reg 4.15A and ss 41, 42(b), 60, and 62A.

6. The Opponent carries the burden of establishing one of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Priority Date.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

7. The following evidence was filed:

   EIS

   Declaration of Christian Munk, CEO of Dragsbæk A/S, made on 25 August 2021, with Annexures A to F.

   EIA

   Declaration of William Crichton, director of the Applicant, made on 29 November 2021, with Annexures A to D.

   EIS

8. Mr Munk declares that the Opponent is wholly owned by his company, Dragsbæk A/S. The Opponent manufactures and distributes food products (particularly vegan foods) under the trade marks NATURLI’ (‘Opponent’s Word Mark’) and  (‘Opponent’s Composite Mark’), which I will collectively refer to as the ‘Opponent’s Marks’.

9. Mr Munk declares that the Opponent’s Marks were first used in Australia in 2019 in respect of vegetable-based meat substitutes, vegan spreads, and vegan ice cream (‘Opponent’s Goods’). The Opponent’s Goods are sold through various stores including Woolworths, Coles, IGA, Foodworks, and smaller retailers. The Opponent’s Goods are also promoted online through various third-party websites, social media, and the Opponent’s website Annexed to the declaration are copies of webpages and social media pages which show the Opponent’s Marks being used in relation to the Opponent’s Goods.

10. Mr Munk details the revenue generated by the sale of the Opponent’s Goods sold in Australia in 2020, which is appreciable but not enormous. The amount spent on promoting the Opponent’s Goods in the same year is also reasonable.

11. Mr Munk opines that the words WHOLESOME and NATURE have well known meanings as does the phrase BY NATURE. Annexed to the declaration are various definitions of the words ‘wholesome’ and ‘nature’, and the term ‘by nature’ located by the Opponent online.  

    EIA

12. Mr Crichton declares that the Applicant was incorporated in July 2020, and that its aim is to provide a range of healthy products that are tasty, affordable, and provide a more sustainable choice for consumers. The sourcing, packaging, and selling of product concepts commenced in August 2020, and distribution of the Applicant’s Goods commenced in August 2021. As at the date of Mr Crichton’s declaration, the Applicant’s Goods sold under the Trade Marks were vegetable noodles and fruit-based snack foods.

13. Mr Crichton declares that the Applicant’s Goods are sold via independent grocery stores nationally, Asian grocers in Victoria, and Foodland in South Australia. The Applicant plans to sell to retailers in New South Wales and other states as the business grows.

14. Mr Crichton projects a reasonable level of revenue for the Applicant’s Goods sold under the Trade Marks in FYE 22 and 23.

15. Mr Crichton declares that the Trade Marks are promoted via social media and the Applicant’s website which launched in May 2021. Annexed to the declaration are screenshots from the website, and also promotional posts on Instagram.

    Discussion

    Reg 4.15A

16. To establish grounds of opposition under reg 4.15A(1), the Opponent must rely on at least one international registration designating Australia (‘IRDA’) or protected international trade mark (‘PITM’) with a priority date earlier than the Priority Date of the Applications. The IRDA or PITM must be in the name of a person other than the Applicant. Further, the earlier mark must be substantially identical or deceptively similar to the Trade Marks and must be filed or protected in respect of goods that are similar to the Applicant’s Goods, or services that are closely related to the Applicant’s Goods.

17. The Opponent relies on two PITMs as the basis for the reg 4.15A ground, namely, Australian trade mark number 1991061 (Classes 29, 30, and 35) for the Opponent’s Composite Mark which has a priority date of 3 December 2018, and Australian trade mark number 2104023 (Classes 29, 30, 32 and 35) for the Opponent’s Word Mark which has a priority date of 26 June 2020. The Opponent is the holder of both of the PITMs and they each have a priority date earlier than the Priority Date of the Applications. As such, I must next determine whether the Trade Marks are substantially identical with, or deceptively similar to, either or both of the Opponent’s Marks. 

18. The test for whether two marks are substantially identical requires that they 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.[4]

    [4] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

19. I am satisfied that the Trade Marks are not substantially identical with either of the Opponent’s Marks. The essential element of the Opponent’s Marks is the word ‘NATURLI’ which appears to be a play on the word ‘naturally’. Neither the word ‘NATURLI’ or ‘naturally’ appear in the Trade Marks. Further, the Trade Marks each contain the words ‘WHOLESOME’ and ‘BY’. The impression that emerges from a side by side comparison between each of the Trade Marks and each of the Opponent’s Marks is one of clear dissimilarity.   

20. The test for whether trade marks are deceptively similar requires that one trade mark so nearly resemble another that it is likely to deceive or cause confusion.[5] In determining deceptive similarity, I am guided by the following principles:

    -There must be a real, tangible danger of confusion, not just a mere possibility.[6]

    -Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[7]

    -The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[8] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[9]

    -Consumers may retain an imperfect recollection of a mark or its essential features.[10]

    -It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[11]

    -The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[12]

    -It must be considered how the goods or services are ordinarily sold or provided.[13]

    [5] Trade Marks Act 1995 (Cth) s 10.

    [6] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

    [7] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

    [8] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

    [9] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

    [10] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

    [11] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

    [12] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

    [13] Ibid.

21. Each of the Trade Marks has a different sound, visual appearance, and meaning compared to each of the Opponent’s Marks. The main similarity is that the respective marks each contain a word beginning with NATUR- (NATURLI v NATURE). Further, the Composite Mark and the Opponent’s Composite Mark also each contain a leaf device, although the respective devices are presented in a different manner and different position. Overall, these similarities are outweighed by the different aural impression that each mark would leave when spoken (particularly given that the pronunciation of the NATUR- formative elements would differ significantly), the clearly different visual impacts of the respective marks, and the different ideas that they impart. Even taking into account imperfect recollection, consumers are highly unlikely to be caused to wonder whether goods sold under the Trade Marks originate from or are connected with the Opponent.  

22. For the reasons given above, the ground under reg 4.15A is not established.

    Section 60

23. To succeed under s 60, the Opponent must establish that a reputation exists in a trade mark in Australia at the Priority Date. If reputation is established, the Opponent must then prove that because of the reputation in the trade mark relied on by the Opponent, use of the opposed Trade Marks is likely to deceive or cause confusion.

24. It is not necessary for the Opponent to establish that the trade marks relied on by the Opponent and the opposed Trade Marks are deceptively similar, or that the relevant goods and services of the parties are similar or closely related. However, the greater the similarities in the respective trade marks and goods or services, the more likely the existence of a reputation in the trade marks relied on by the Opponent is to give rise to a likelihood of confusion. 

25. In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:

    It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[14]

    [14] [2000] FCA 1335, [85]-[86].

26. In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[15]

    [15] [2019] FCA 923, [83] (O’Bryan J).

27. The existence of reputation does not necessarily mean that confusion resulting from use of the Trade Marks is likely to occur. There must be a nexus between the reputation in the trade mark relied on by the Opponent and the likelihood of confusion caused by use of the Trade Marks. In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd, Hearing Officer Lyons said:

    Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[16]

    [16] [2010] ATMO 5, [39].

28. The EIS indicates that sales of the Opponent’s Goods in 2020 were significant. However, the figure provided by the Opponent is an aggregate for that year. In determining the existence of reputation, I can only have regard to revenue generated before the Priority Date (i.e. 13 August 2020). The lack of specificity affects the weight that can be given to the EIS.  However, even assuming that the Opponent had a significant reputation in either of the Opponent’s Marks in Australia at the Priority Date, it does not follow that this reputation would give rise to a likelihood of confusion with the Trade Marks. I consider that the Trade Marks are so different to the Opponent’s Marks visually, aurally, and conceptually, that consumers are highly unlikely to assume that goods sold under the Trade Marks originate from the Opponent or are otherwise associated with the Opponent in some way, notwithstanding any reputation that may exist in either of the Opponent’s Marks.   

29. For the reasons given above, the ground under s 60 is not established.

    Section 42(b)

30. The Opponent under s 42(b) alleges that use of the Trade Mark would constitute a breach of ss 18 and 29 of the Australian Consumer Law (‘ACL’) and the tort of passing off.

31. While not specifically stated under the s 42(b) ground in the SGPs, I assume the Opponent’s basis for the claims relating to breach of the ACL and passing off are based on its reputation in the Opponent’s Marks as particularised under s 60.

32. As stated under s 60, I do not consider that use of the Trade Marks would give rise to a likelihood of confusion, notwithstanding the existence of any reputation in either of the Opponent’s Marks. For the same reasons, consumers are not likely to be misled or deceived, and as such, the claims that use of the Trade Marks would breach ss 18 and 29 of the ACL or constitute passing off are not established.

33. For the reasons given above, the ground under s 42(b) is not established.

    Section 62A

34. Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Applications were filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Applications as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[17]  I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.

    [17] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] (Bennett J); Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [165] (Dodds-Streeton J).

1. The Opponent alleges that the Applications were filed by the Applicant in order to gain the benefit of the Opponent’s reputation.

2. The evidence does not establish that the Applicant was aware, or ought to have been aware, of the Opponent’s Marks. Further, given the significant visual, aural, and conceptual differences between the parties’ respective marks, I do not consider that a person adopting proper standards with knowledge of the Opponent’s Marks would consider the filing of the Trade Marks to be in bad faith.

3. For the reasons given above, the ground under s 62A is not established.

   Section 41

4. Section 41 requires that the Trade Marks be rejected if I am satisfied that they are not capable of distinguishing the Applicant’s Goods from those of other traders. The Trade Marks are to be first assessed under s 41 having regard to their level of ‘inherent adaptation’ to distinguish. If the Trade Marks have sufficient inherent adaptation to distinguish the Applicant’s Goods, there will be no grounds for rejecting them under s 41. If I am satisfied that the Trade Marks do not have sufficient inherent adaptation to distinguish the Applicant’s Goods, I must then determine whether they have any inherent adaptation to distinguish. If the Trade Marks have no inherent adaptation, they must be rejected only if I am satisfied that that they do not in fact distinguish the Applicant’s Goods based on the extent of their use at the filing date (s 41(3)). If the Trade Marks have some inherent adaptation to distinguish, they must be rejected only if I am satisfied that due to the level of inherent adaptation of the Trade Marks, the extent of use of the Trade Marks at the filing date and/or intended use thereafter, and/or other relevant circumstances, the Trade Marks did not or would not distinguish the Applicant’s Goods (s 41(4)).

5. The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:

   His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by 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.[18]

   [18] (1964) 111 CLR 511, 514 (Kitto J).

6. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’), a majority of the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[19]

   [19] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

7. A word or phrase that is suggestive or allusive in relation to the goods or services will generally not be one that other traders will desire to use. In the TUB HAPPY case, Dixon CJ said:

   It is, I think, a mistake first to assume that words like "Tub Happy" do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods. And that is true even when to standard English usage is added all the figurative idiomatic and slang phraseology that may be currently in use. Once, however, the question is asked what do the words mean and there is started a search for a meaning, a process of analysis and of reasoning by exclusion of alternatives is begun. No doubt such a search may, without any sacrifice of logic, end in construing the words as meaning that the garments will emerge happily from the washtub. But if they are so interpreted, the interpretation is chiefly the consequence of failure to find another meaning. I venture to think, however, that a man, or for that matter a woman, hearing for the first time the words used in combination and in connection with cotton garments, would not so understand the words at once. Certainly such a person would not so understand them intuitively and without stopping to reflect and ask himself or herself what meaning the words could really possess. [20]

   [20] Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41, [2] (Dixon CJ).

8. In Cantarella, the majority also said:

   When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[21] 

   [21] Cantarella (n 19), [59] (French CJ, Hayne, Crennan and Kiefel JJ).

9. The Opponent in the SGPs particularises the s 41 ground by stating that Trade Marks are ‘not capable of distinguishing describing food products which are wholesome because of nature or are wholesome as they are products of nature’.

10. The phrase ‘Wholesome by Nature’ constitutes the entirety of the Word Mark and is also the dominant element of the Composite Mark. It follows that if I am not satisfied that the Word Mark lacks sufficient inherent adaptation to distinguish the Applicant’s Goods, then I must conclude the same with regards to the Composite Mark. As such, I will first consider the application of s 41 to the Word Mark, and then move to an assessment of the Composite Mark. 

11. The EIS encloses various definitions of ‘wholesome’, ‘nature’, and ‘by nature’. However, no evidence is supplied which indicates that the term ‘Wholesome by Nature’ in its entirety was being used by other traders at the filing date in relation to the Applicant’s Goods, or similar goods. As such, I must consider whether the Word Mark has an ordinary signification among those who would consume, purchase or trade in the Applicant’s Goods based on any meaning inherent in the combination of words.

12. I accept that ‘wholesome’ refers to something that is healthy or good. I also accept that the term ‘by nature’ in particular contexts may indicate something that is an inherent quality of a thing. As such, one interpretation of the phrase ‘wholesome by nature’ is something that is inherently wholesome. However, other interpretations of the phrase ‘wholesome by nature’ include a reference to something wholesome that is created by or originates from nature, or something that is otherwise rendered wholesome by nature. These other meanings are consistent with the definition proposed by the Opponent in the SGPs. However, they are clearly more suggestive rather than directly descriptive of the Applicant’s Goods.    

13. On balance, even if the Word Mark does have a clear ordinary signification among those who would consume, purchase or trade in the Applicant’s Goods (and I am not satisfied that it does), it is clearly an unusual way to refer to a characteristic or quality of the Applicant’s Goods and as such it is questionable whether other traders would desire, without improper motive, to use the same mark, or something similar, in relation to their products.  

14. Having regard to the presumption of registrability embodied in the Act, and considering the lack of persuasive submissions by the Opponent, it is appropriate that my doubt regarding the sufficiency of inherent adaptation to distinguish in the Word Mark be resolved in favour of the Applicant. I must also reach the same conclusion in relation to the Composite Mark, particularly as it is stylised and contains other material which gives it additional distinctiveness.

15. For the reasons given above, the ground under s 41 is not established.

    Decision and costs

16. The Opponent has failed to establish any of the grounds of opposition relied on. As such, the Trade Marks may proceed to registration.

17. If the Registrar is served with a notice of appeal in respect of either or both of the Applications, I direct that registration shall not occur until either the relevant appeal is withdrawn or discontinued.  Otherwise, the disposition of the relevant application should be in accordance with the Court’s order or direction.

18. The Applicant in the notices of intention to defend requested an award of costs. Costs generally follow the event. As such, in relation to trade mark number 2108631, I award costs against the Opponent in accordance with Schedule 8 of the Regulations.

19. In matters where the prosecution of more than one opposition has proceeded in parallel with others with substantially the same documents and evidence filed, as here, it has been the practice to award reduced costs in the same manner as in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd[22] (‘Hume’). Accordingly, for trade mark number 2108632, I award costs against the Opponent in the same manner as the delegate decided in Hume.

    [22] [2001] ATMO 78.

    Blake Knowles

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    28 June 2022