Noshu Foods Pty Ltd v Torquay Beverage Company Pty Ltd
[2023] ATMO 29
•6 March 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Noshu Foods Pty Ltd to registration of trade mark application number 2088710 (class 33) – NO.SH HARD SODA WATER (figurative) - in the name of Torquay Beverage Company Pty Ltd
Delegate: | Tracey Berger |
Representation: | Opponent: Edward Thompson of counsel, instructed by Marque Lawyers Applicant: Marcus Fleming of counsel, instructed by By George Legal |
Decision: | 2023 ATMO 29 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 43 and 60 considered – no grounds established – trade mark to proceed to registration |
Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Noshu Foods Pty Ltd (‘Opponent’) to registration of the following trade mark:
Trade mark number: 2088710
Trade mark: (‘Trade Mark’)
Applicant: Torquay Beverage Company Pty Ltd (‘Applicant’)
Filing Date: 15 May 2020
Goods:Class 33: Alcohol for drinking; Alcoholic beverages (except beer); Alcoholic beverages containing fruit; Alcoholic essences; Alcoholic extracts; Alcoholic extracts of fruits; Alcoholic mixed drinks; Alcoholic preparations for making beverages; Alcoholic punches; Carbonated beverages (alcoholic, except beers); Fruit based alcoholic beverages; Fruit extracts (alcoholic); Low alcohol cider; Low alcohol cocktails; Low alcohol spirits; Low alcohol wine; Pre-mixed alcoholic beverages, other than beer-based; Sparkling cider (alcoholic); grain-based distilled alcoholic beverages; sugarcane-based alcoholic beverages (‘Applicant’s Goods’)
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).
The Trade Mark was examined and accepted for possible registration on 13 July 2020, with acceptance advertised on 16 October 2020.
The Opponent filed a Notice of Intention to Oppose on 9 November 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 9 December 2020. A Notice of Intention to Defend the opposition was filed by the Applicant on 21 January 2021.
The Opponent filed Evidence in Support of the opposition on 28 April 2021. The Applicant completed the filing of its Evidence in Answer on 30 August 2021 and the Opponent filed Evidence in Reply on 8 February 2022.
Following the evidence stages, the parties were given the opportunity to request a hearing. The parties requested an oral hearing. Submissions were filed by the Opponent on 19 January 2023 (‘Opponent’s Written Submissions) and by the Applicant on 27 January 2023 (Applicant’s Written Submissions’). I heard this matter by video conference on 2 February 2023. At the hearing, Edward Thompson of counsel presented submissions on behalf of the Opponent on instructions from Nathan Mattock, Laksha Prasad and Lilly McGuire of Marque Lawyers and Marcus Fleming of counsel made submissions on instructions from Tony Grujovski and Georgina O’Farrell of By George Legal. I make this decision based on the documents and information outlined above.
Grounds of opposition, onus, and relevant date
In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 43, 44 and 60. The Opponent did not press the s 44 ground of opposition.
The Opponent bears the onus of establishing at least one of the nominated 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, [133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined is 15 May 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.
Evidence
Opponent’s Evidence
The Opponent relies on the following evidence:
· Statutory Declaration of Rachel Bajada, Founder and Managing Director of the Opponent, made on 28 April 2021 with Annexures A-O (‘Bajada 1’);
· Statutory Declaration of Olivia Sutherland, Marketing Director of Krispy Kreme Australia, declared 27 April 2021 (‘Sutherland Declaration’);[4]
· Statutory Declaration of Rachel Bajada made on 8 February 2022 with Annexures A-E (‘Bajada 2’).
[4] The Sutherland Declaration is Annexure N of Bajada 1.
The Opponent is an Australian-owned sugar free foods company which since 2014, has sold food products made with natural ingredients and plant-based sugar substitutes (‘Opponent’s Goods’) under its mark NOSHU (‘Opponent’s Mark’). Many of its products are gluten free, dairy free, wheat free and vegan friendly. Donuts were the first product offered under the Opponent’s Mark in early 2014, before the Opponent started to expand the range in 2018 to other goods including a range of sugar free cake mixes, pancake mixes, baking chips, cakes and snacks.
Since the adoption of the Opponent’s Mark, it has been used on packaging of the Opponent’s Goods which are sold through Coles, Woolworths and 700 independent retailers. The total sales value for the period 1 July 2020 – 30 June 2021 is provided.[5]
[5] The Opponent refers to this period as the 2020 financial year when in fact it is financial year (‘FY’) 2021. This error appears to be repeated throughout the Opponent’s evidence. I have not adopted this error in order to avoid confusion as to whether figures provided are before or after the Relevant Date.
Ms Bajada attests that the Opponent has undertaken extensive advertising and promotion of the Opponent’s Goods provided under its mark including on its website at billboard media, video advertising, radio, digital magazines, social media (Facebook, Instagram and Pinterest) and sponsorships. By April 2021, the Opponent’s Facebook page had over 47,000 followers and its Instagram account had over 67,000 followers. These followers include popular food blogs and other companies in the food and beverage industry. The Opponent has provided figures for its FY21 advertising expenditure and a report which claims some of these individual promotional activities have reached millions of potential customers. The Opponent’s advertising expenditure for FY21 has also been provided.
The Opponent claims it is a market leader in sugar free and additive free foods, selling over 5 million products in FY21. The Opponent’s Goods have won a number of awards including the “Great Taste Award” (Anti-Additive Association of Australia Pacific) in 2018, “Best New Retail Product” (Fine Foods Australia) in 2017, “Best of the Best Food Product” (Anti-Additive Association of Australia Pacific) in 2017 and “Best New Snack Food Product of 2015” (Food Magazine) in 2015. The Opponent has also received coverage in third party mainstream and industry media including Food & Beverage Industry News in 2015, Daily Mail in 2018 and MamaMia in 2020.
Bajada 1 provides the results of a Google search for ‘no sugar alcohol’ which returns the Opponent’s website as a top search result and a search of Dan Murphy’s website for ‘Noshu’ which returns results for the Applicant’s Goods offered under the Trade Mark.
The Opponent attests that it is the owner of Australian registration number 1585336 NOSHU which covered goods and services in classes 29, 30, 32, 33 and 43 but as the result of a non-use application by the Applicant (‘Non-Use Proceedings’),[6] which has not been appealed, this registration is to be restricted to:
Class 30: cereal based food bars; cereal based snack food; food mixes for making bakery products; food preparations for making puddings; food products having a pastry base; foods with a chocolate base; foods with a cocoa base; snack food products made from soya flour; snack foods consisting principally of confectionery.
[6] Noshu Foods Pty Ltd v Torquay Beverage Company Pty Ltd [2022] ATMO 221 (Hearing Officer N. Barbey) (‘Noshu’).
Bajada 1 annexes the declaration of Ms Sutherland, Marketing Director of Krispy Kreme, who previously held senior roles with Pepsico, Kellog’s Australia and Kraft Foods UK. Ms Sutherland declares that she became aware of the Opponent’s Mark in 2018 when the Opponent’s Goods were available in Woolworths. She attests to the Opponent’s reputation in Australia as a market leader in the sugar free and additive free food space and states that given her knowledge of the food and beverage industry, it is ‘plausible and commercially viable’ for the Opponent to expand its offering to sugar free alcoholic products. In Ms Sutherland’s opinion, the Trade Mark is confusingly similar to the Opponent’s Mark and consumers will assume the two marks are connected.
Bajada 2 attests to two other companies offering both sugar free foods and beverages. Ms Bajada refers to Naked Life which sells Naked Life sugar free drinks and The No Nasties Project sugar free iced confections, cereals and biscuits which foods products are available in Coles, Woolworths and Dan Murphy’s. The second example is Famous Soda Co which expanded its sugar free, low calorie sodas to sugar free confectionery.
In Bajada 2, Ms Bajada provides copies of an exchange with Mr Cogger via Instagram from mid-2020, sales figures for the Opponent’s Goods at Coles and Woolworths for the 12 month period to 3 February 2022 and comments on the Applicant’s evidence in particular that liquor stores attached to supermarkets are often accessed through the supermarket.
Applicant’s Evidence
The Applicant’s evidence consists of:
· Declaration of Kate Maynard, previous attorney for the Applicant, made on 30 July 2021;
· Declaration of Nicholas Cogger, Founder and CEO of the Applicant, made on 30 August 2021 with Annexures NC-1 to NC-4 (‘Cogger Declaration’);
· Declaration of Tony Grujovski, attorney for the Applicant, made on 30 August 2021 with Annexures TG-1 to TG-7.
The Applicant was incorporated in May 2019 and on 1 September 2020 launched a sugar free, carbohydrate free, vegan friendly and gluten free alcoholic beverage which is low in calories (‘Used Goods’). The product was initially named No.Sh Alcoholic Seltzer which was changed shortly after the launch to No.Sh Boozy Seltzer.
Mr Cogger declares that the mark No.Sh was honestly adopted as an abbreviation of the phrase ‘no s**t’ to indicate that the goods are no nonsense.
The Used Goods are available through leading retailers of alcoholic drinks, either online or in physical stores, including BWS, Dan Murphy’s, 300 Liquorland and First Choice stores and 200 independent retailers.
The Applicant products are promoted on its website at Mr Cogger also annexes 2 industry articles from September 2020 about the Used Goods and a current list of stockists.
The Grujovski Declaration seeks to demonstrate that it is not usual for companies offering low sugar foods to expand their product range to beverages. Mr Grujovski attests to searches of a number of third party low sugar food brands on the websites of Woolworths, Coles and other retailers of alcoholic beverages which revealed only one third party was selling beverages being MT ELEPHANT oat milk products. Searches of each of the third party’s websites disclosed that the only beverages sold by the third parties are MT ELEPHANT oat milk products, QUEST protein shakes and PANA ORGANIC blends for making non-alcoholic drinks.
Mr Grujovski also attests to the various liquor licensing provisions and the manner in which alcohol is sold by Coles and Woolworths namely through separate stores under different branding.
Preliminary Matters
The Opponent’s Written Submissions includes Confidential Annexure B being the Opponent’s financial statement showing its sales and advertising expenditure broken into categories from 1 January 2015 to 15 May 2020.
No mention was made of the inclusion of this evidence by the Opponent until the hearing, after the Applicant objected to this document in the Applicant’s Written Submissions. At the hearing, the Opponent submitted that Confidential Annexure B should be permitted as evidence under reg 21.15(4) on the basis that the document is short (1 page), was provided before the hearing, does not prejudice the Applicant as there is no evidence to be filed in response, clarifies the advertising and revenue figures provided from July 2020 to June 2021,[7] is highly probative in establishing the Opponent’s reputation and it is in the public interest that I have all relevant material before me in deciding the opposition.
[7] Bajada 1 Annexures E and F.
The Opponent claims that the information was not filed earlier because the Opponent and its attorneys made a mistake in not appreciating the significance of the priority date of the Application. In support of its position, the Opponent refers to the Delegate’s comments in Agcare Biotech Pty Ltd v Crop Smart Pty Ltd:
A serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the registrar for the making of that decision. This principle remains undiminished and is a potent factor to be weighed into the balance whenever a registrar’s delegate exercises discretion under the legislation that has the potential to exclude evidence crucial to an opposition outcome.[8]
[8] [2015 ATMO 7, [40] (Hearing Officer C. Murray) (citations omitted).
The Applicant argues that the late evidence should not be considered given that no application for its consideration was made until the hearing, oversight is not an adequate reason, the information was available during the evidence stages and in any event, the information is not sufficient for the Opponent to establish a significant reputation. Also, for public policy reasons it is not appropriate to allow late evidence that is simply attached to submissions without reasons for the late provision of the information. The Applicant notes that in the Non-Use Proceedings, in similar circumstances, the Delegate refused to allow the Opponent’s late filed evidence on the basis the Opponent did not make out a compelling case for its inclusion.[9] The Applicant also refers to the Delegate’s comments in Fed Square Pty Ltd v Federation IP Pty Ltd that ‘it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow reg 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account’.[10] Although these comments were made in relation to reg 21.19, they are equally applicable to reg 21.15(4).
[9] Noshu (n 6), [32].
[10] [2015] ATMO 42, [55] (Hearing Officer H. Wilson).
I agree with the Applicant that the manner in which the late filed evidence has been presented is not appropriate. From the parties’ previous encounter in the Non-Use Proceedings, the Opponent was well aware of the need to file a compelling case justifying the admission of any evidence filed out of time. Further, given the wording of s 60, I find it difficult to believe that the Opponent ‘made a mistake’ in not appreciating the significance of the priority date of the opposed application. Whilst it is important that I have all relevant information before me, it is also important that parties and their attorneys are not permitted to circumvent the legislative provisions. If a mistake was made, the appropriate steps should have been taken to acknowledge that error at the earliest opportunity and follow the appropriate procedures for seeking to have the evidence admitted. Further, I am not satisfied that refusing to admit the evidence is fatal to the Opponent’s case. Accordingly, I decline to admit Confidential Annexure B of the Opponent’s Written Submissions.
The second preliminary matter to be addressed concerns the s 43 ground of opposition. In its SGP, the Opponent claimed that the Applicant’s use of the Trade Mark would cause consumers to wonder if the Applicant’s Goods bearing the Trade Mark are associated with the Opponent because of the Opponent’s reputation in the Opponent’s Mark given the similarities of the marks and product claims (low-sugar, low-carb, gluten free and vegan friendly).
However, in the Opponent’s Written Submissions and at the hearing, the Opponent sought to argue that the words “HARD SODA WATER” in the Trade Mark contain a misleading connotation that the Applicant’s Goods are soda water or soda water beverages.
The Applicant contends that this case has not been pleaded and cannot be raised without amendment to the SGP in accordance with reg 5.12. The Opponent submits that it is not necessary to amend the SGP because the Applicant is on notice that the Opponent considers there to be an inherent connotation in the Trade Mark which is likely to deceive or confuse consumers simply by claiming this ground of opposition.
I do not agree with the Opponent’s argument. The purpose of the SGP is to give an applicant fair notice of the case to be answered and to define the issues of the opposition. The Opponent’s case is confined to issues raised in their SGP unless it is amended. When s 43 is claimed as a ground of opposition, the SGP must describe what connotation within the mark itself is likely to deceive or cause confusion.[11]
[11] Trade Marks Office Manual of Practice and Procedure, Part 47, [1.2.5].
The Opponent has not sought to amend its SGP and accordingly, it cannot argue that the words HARD SODA WATER in the Trade Mark convey an inherent connotation which is misleading or deceptive as to the nature of the Applicant’s Goods. Therefore, I have not had regard to the Opponent’s submissions on any meaning conveyed by the words HARD SODA WATER and have confined my consideration of the s 43 ground of opposition to that claimed in the SGP which is summarised at [31] of this decision.
Discussion
Section 60
Section 60 provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
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.[12]
[12] [2019] FCA 923, [83] (O’Bryan J).
In the context of s 60, reputation refers to ‘recognition of [the mark] by the public generally’ but this does not mean the whole of the population. Rather, the reputation must be amongst a significant section of the relevant market. Justice Heerey’s comments in Le Cordon Bleu BV v Cordon Bleu International Ltee provide some guidance:
What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient ... We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[13]
[13] [2000] FCA 1587, [91]. Justice Heerey’s decision was overturned on appeal to the Full Federal Court but not on this point. The Full Federal Court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
Reputation cannot be assumed and must be established by the Opponent as a matter of fact.[14]
[14] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302, [77] (Lockhart J).
The reputation of a trade mark may be demonstrated in various ways including by demonstrating a significant number of people are exposed to a trade mark.[15] In practice, it is commonplace to infer reputation from a high volume of sales,[16] together with substantial advertising expenditures and other promotions.[17]
[15] Ibid [118].
[16] McCormick & Company Inc v McCormick [2000] FCA 1335 [86] (Kenny J).
[17] Ibid.
The Opponent claims that as a result of its use of the Opponent’s Mark since early 2014 for sugar free donuts, cake mixes, pancake mixes, baking chips, cakes and snacks it enjoyed a substantial reputation at the Relevant Date such that use of the Trade Mark is likely to cause confusion or deception.
The Applicant is highly critical of the fact that much of the Opponent’s evidence is after the Relevant Date and contends that there is insufficient evidence before the Relevant Date to conclude that the Opponent had a reputation in the Opponent’s Mark at that time.
Whilst the Opponent has used the Opponent’s Mark for 6 years prior to the Relevant Date, the Opponent only sold donuts until 2018 when it launched a cake mix before expanding its product range periodically over the next 2 years.
The Applicant points to a number of other deficiencies in the Opponent’s evidence and many of these criticisms have merit. For example, the Opponent’s claims to have extensively advertised and promoted its marks but many of the materials provided relate to use after the Relevant Date. For example, the Opponent has provided two documents to demonstrate the reach of its marketing activities but the first document, titled Snackles Campaign Launch 2020[18] presumably relates to advertising after the Relevant Date given this product was not launched until September 2020[19] and the second document is labelled ‘Back to School 2021’. There are no actual advertisements in evidence, details of where any advertisements were placed, when the Opponent’s website or social media accounts were established and only 3 of the 7 media articles referring to the Opponent were published before the Relevant Date.
[18] Bajada 1, Annexure G.
[19] Ibid Annexure F.
Although the various sales and advertising metrics provided are after the Relevant Date, the sales are substantial and advertising expenditure is not insignificant making it possible to infer that it is likely that the Opponent’s sales and advertising were commercially appreciable before the Relevant Date. As the Opponent has noted, evidence of ‘later events may cast light upon the true position at an earlier date’.[20] Sales of the earlier products such as donuts, baking mixes and cakes account form the majority of the sales. In my view, it is more likely that the Opponent was selling a substantial number of items under the Opponent’s Mark before the Relevant Date than, as the Applicant suggests, there was some change to the Opponent’s business that resulted in much greater success immediately after the Relevant Date. However, given the size of the relevant market for the Opponent’s Goods, I do not consider that these metrics alone are sufficient to conclude that the Opponent had a significant reputation in the Opponent’s Mark at the Relevant Date.
[20] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, 509 (Burchett J).
Even if I were to find that the Opponent had the requisite reputation, I believe that any such reputation would have been confined to sugar free and additive free baking and snack foods rather than low sugar products generally. I am not persuaded that it is common for manufacturers of sugar free foods to expand their offering to beverages or vice versa and am of the view that the Applicant’s Goods are sufficiently different in nature, uses and trade channels that there is no real danger of confusion likely to result from the use of the Trade Mark for the Applicant’s Goods.
The s 60 ground is unsuccessful.
Section 42(b)
Section 42(b) provides that an application for registration of a trade mark must be rejected if its use would be contrary to law.
The Opponent claims that because of the Opponent’s reputation in the Opponent’s Mark, use of the Trade Mark for beverages with similar product claims to the Opponent’s Goods would be likely to mislead or deceive consumers into believing that the two sets of goods are linked to the same trade source or that the Trade Mark is connected to or associated with the Opponent. As a result, the Opponent claims that use of the Trade Mark would contravene the Competition and Consumer Act 2010 (Cth) and constitute passing off.
In its submissions, the Opponent claims that use of the Trade Marks will breach s 18 and/or s 29 of the Australian Consumer Law (‘ACL’) being Schedule 2 to the Competition and Consumer Act 2010 (Cth). Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[21]
[21] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J); Hasbro Inc v Imagination Holdings Pty Ltd [2005] ATMO 43.
As already established in respect of s 60, I am not satisfied that the Opponent has sufficient reputation such that use of the Trade Mark in respect of the Applicant’s Goods is likely to deceive or cause confusion. It therefore follows that under the stricter test requirements of the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.
Where a trade mark does not contravene s 18 of the ACL, it is unlikely to amount to passing off. Justice Hill noted in Re Equity Access Pty Ltd v Westpac Banking Corporation that:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[22]
[22] [1989] FCA 506, [40] (Hill J).
Sections 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.
For the above reasons, the ground of opposition under section 42(b) has not been established.
Section 43
Section 43 is reproduced below:
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.
To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark. As Gyles J 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 ...[23]
[23] [2006] FCA 1663, [53].
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.[24]
[24] [2002] FCA 288, [19].
As noted at [31] above, the Opponent claimed in its SGP that the Trade Mark contains a connotation that the Applicant’s Goods are connected with or affiliated with the Opponent as a result of the Opponent’s reputation in the Opponent’s Mark.
The use of and any reputation in the Opponent’s Mark is not of relevance under s 43. In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of any reputation that the Opponent may be able to demonstrate in its own mark or confusion between the Trade Mark and a trade mark used by the Opponent.
I am not satisfied that the Trade Mark has an inherent connotation which is likely to cause confusion or deception. Therefore, the s 43 ground of opposition is not established.
Decision
The Opponent has not established a ground of opposition. Accordingly, trade mark application number 2088710 may proceed to registration not less than one month from the date of this decision.
If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.
The Applicant has requested an award of costs. The usual rule is for costs to follow the event. I award costs against the Opponent in accordance with s 221, in the amounts set out in Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
6 March 2023
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