Novadelta-Commercio E Industria De Cafes LDA v Cantarella Bros Pty Ltd

[1998] ATMO 31

TRADE MARKS ACT 1955

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

Re:      Opposition by CANTARELLA BROS. PTY. LTD. to the registration of trade      mark applications numbers 621291 and 621292 in the name of
           NOVADELTA-COMERCIO E INDUSTRIA DE CAFES LDA.

Background
As provided in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

Both of the above-identified applications were lodged on 27 January 1994, in the name of Novadelta-Comercio E Industria De Cafes Lda (the applicant).  Application number 621291 was for the word trade mark DELTA in respect of “coffee”.  The other application also nominated the goods “coffee” and sought registration of the trade mark shown here: 
  
The goods of these applications belong in class 30.

Acceptance of application number 621291 was advertised in the Australian Official Journal of Trade Marks of 27 July 1995 and that of application number 621292 in the journal of 17 August 1995.

On 26 October 1995, Cantarella Bros Pty Ltd (the opponent) lodged notices of opposition to registration of the trade marks of both applications.  The notices of opposition cover a number of grounds of opposition.  At the hearing, however, the opponent elected to concentrate on the evidence and submissions based on section 28, that use of the opposed marks would be likely to deceive or cause confusion, and that the mark would otherwise be not entitled to protection in a Court of Justice; on sections 25 and 26, that the marks are not distinctive nor capable of becoming distinctive of the applicant in respect of the goods for which registration is being sought; on section 40, that the applicant is not the first user of its marks or of substantially identical marks;  and, that registration ought to be refused in the Registrar’s discretion. 

The serving and lodging of the evidence in support and answer on both applications were completed on 26 February 1997.  The hearing of the opposition was held in Sydney.  The opponent was represented by Ms Julia Baird of Counsel, instructed by Malleson Stephen Jaques, solicitors of Sydney.  Mr Stephen Burley, also of Counsel, appeared for the applicant.  He was instructed by Spruson & Ferguson, patent and trade mark attorneys of Sydney.

Evidence
The evidence in support comprises a statutory declaration, dated 26 July 1996, with exhibits, by Leslie J Schirato, the managing director of the opponent company, who has been associated with the opponent for over fifteen years.  He provides details of the opponent’s registered trade marks in Australia and pending applications for registration of trade marks in Australia and New Zealand.  These trade marks in respect of the goods falling in classes 29 and 30 either comprise or contain the word DELTA.  Mr Schirato states that the opponent distributes a variety of products under certain product range names as, for example, under VITTORIA and AURORA, and has always planned to extend the trade mark DELTA to products in a similar way to the ranges developed under those names, so that the reputation enjoyed by DELTA products could be built upon and extended by the introduction of new products bearing the mark.  The opponent had first used the mark in Australia in relation to olive oil in 1950s.  Mr Schirato then briefly relates the history of the mark DELTA, including reference to the introduction of new packaging in 1995, based on an ancient Greek theme, and some sales figures representing the DELTA products.  Both the opponent’s and the applicant’s coffee is sold in supermarkets, he says.  He refers to an advertisement by a store in Victoria in an Italian language newspaper in early 1996, which featured a picture of the applicant’s coffee, describing the product in a manner which clearly indicated the product to be that of the opponent.  Mr Schirato also mentions further confusion between the opponent’s and applicant’s coffee products under the mark DELTA in a report concerning the market share of the opponent’s products in various supermarkets across Australia, where reference had been made to the applicant’s product.  An exhibit to his declaration is intended to support the claim that, at the end of November 1995, the opponent’s coffee under the trade mark DELTA was the second highest selling ground and roast coffee across the Franklin stores in the state of New South Wales.

The evidence in answer comprises a statutory declaration, dated 24 January 1997, with exhibits, by Fernando Manuel Conceicao, a director of the applicant’s current distributor, Novadelta Australia Pty Ltd, who is authorized to make the declaration on behalf of the applicant.  Mr Conceicao is aware that prepacked coffee beans had been imported and sold in Australia by a firm in Western Australia, Australis Network International, in 1994.  Copies of invoices addressed to this business and another company in Western Australia concerning the importing and sales of the applicant’s coffee are included in the exhibits.  In a confidential exhibit are set out total sales of the applicant’s coffee throughout Australia from 10 April 1995 to 15 July 1996.  Under another confidential exhibit Mr Conceicao has made available advertising and promotional expenditure of the product.  Some samples of advertising material are also annexed to his declaration.  Mr Conceicao states that during his activities in distributing, promoting and selling the applicant’s coffee, he had not become aware of the opponent’s DELTA brand coffee until about June 1995.  He had not known of the mark being used on opponent’s other products until he read Mr Schirato’s declaration.  

Submissions
In relation to the question of the likelihood of deception and confusion of trade marks, Ms Baird briefly outlined the principles applicable, as enunciated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at 594-5 and expanded upon in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375. She also referred to Jafferjee v Scarlett (1937) 57 CLR 115. It was important to note, she said, that, in relation to paragraph 28(a), the goods need not be the same nor of the same description if they are associated in some way because the prior mark is well known, because of some trade association, or because they are sold through the same trade outlets. In comparing the marks, the probable purchasers to be considered were those of ordinary intelligence and sense and not in a hurry. In the present case, such persons would view the mark DELTA with a background of some knowledge of the mark’s use by the opponent. She said that a mark may be likely to deceive or cause confusion by reference to use which may fall short of what would be required for passing off to have occurred as per New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd (1989) 14 IPR 26, at 55. It did not matter that confusion was “unlikely to persist up to the point of, and be a factor in, inducing actual sale” - Southern Cross v Toowoomba Foundry, supra. 

The opponent’s evidence established, she said, that since the 1950s the opponent had sold continental delicatessen type products, i.e. olive oil and similar edible products and preserved olives, under the mark DELTA, in supermarkets.  The mark had a long history of use accompanied by two registrations and the evidence further established, Ms Baird submitted, that the opponent engages in the practice of brand extension within the grocery lines.  Application of the mark DELTA on coffee was a logical brand extension in the grocery trade.  From the existence and development of the two brand extensions VITTORIA and AURORA, the opponent had shown that persons in the market, on noticing the mark DELTA in relation to continental grocery/delicatessen products, including coffee, would see a relationship or nexus with its long established reputation.  One had to take into account the fact that both the applicant’s and the opponent’s continental type of foodstuffs were sold in supermarkets where customers were not prepared to spend much money and devoted little time inspecting the goods.  The word DELTA in relation to foodstuffs had been identified with the products purchasers had seen frequently for a long time, therefore it would be the word rather than anything else appearing in the opponent’s mark that would be carried away and resonate in the minds of those purchasers - Johnson & Johnson v Kalnin and Another 26 IPR 435. In the circumstances such as those described, according to Ms Baird, there existed a real tangible danger of confusion or deception of the marks in question. Where registration of a trade mark has been opposed, she said, the applicant bears considerable onus to satisfy the Registrar of no deception or confusion, and that, having regard to the public interest, registration of the applicant’s mark is justified. That onus had not been discharged, Ms Baird submitted.

On the issue of blameworthy conduct, Ms Baird recognized the Registrar’s practice to have paragraphs (a) and (d) of section 28 read conjunctively, as outlined in Titan Manufacturing Co v John Terence Coyne (1991-2) 22 IPR 613. Blameworthy conduct meant no more than a shorthand method of referring to all those circumstances which might disentitle an application for relief in a Court of Equity - Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd (1992-3) 25 IPR 197, at 210. In the present circumstances, Ms Baird said, the opponent had extensive use of the mark DELTA in relation to continental delicatessen type foods, long standing trade mark registrations and its practice of brand extensions. Mr Conceicao had stated that he had not been aware of the opponent’s mark until well after the applications, but it was important to remember that, whilst the declarant had the applicant’s authority to make the declaration, there was silence on the part of the applicant. With further reference to Mr Conceicao’s declaration, Ms Baird wondered why the applicant had chosen the mark DELTA, which conflicted with the long standing reputation of the opponent’s mark, rather than the word NOVADELTA, remarked on the lack of any enquiries made by the applicant in the market between the period 27 January and March 1994 and the omission of any statements concerning the applicant’s trading arrangements between December 1994 and March 1995. There was no explanation given, Ms Baird said, as to anything that might entitle the applicant to relief in a court of equity. Given that the opponent had brought up the matters of extensive use of its mark DELTA, its registrations and the practice of brand extension, there was an answer required from the applicant. In these circumstances, she asserted, the applicant had not set up a sufficient explanation to satisfy the Registrar there was not a strong inference of blameworthy conduct, a relevant case for consideration of this matter being Man Li Zhu v Reebok International Limited (1997) 91-374.  Ms Baird also directed my attention to cases subsequent to New South Wales Dairy Corp v Murray Goulburn Co-operative Co Ltd 18 IPR 385, where the court has determined in favour of the opponent simply on the basis of paragraph 28(a), for example: Johnson & Johnson v Kalnin and Carnival Cruise v Sitmar Cruises, both supra.  Bearing in mind these Federal Court decisions, Ms Baird submitted, it was open to the Registrar to be satisfied as to the danger of confusion and to find the opposition under paragraph 28(a) made out, without further requiring blameworthy conduct to be proved. 

Ms Baird further advanced the view that, by virtue of the opponent’s prior and continued use of its DELTA mark in relation to the continental delicatessen type goods, which encompassed coffee, it was clear that the word DELTA could not be adapted to distinguish the applicant’s goods from those of the opponent.  Registration of the marks of the present applications would cause substantial difficulty or confusion in view of the rights of use of other traders, particularly the opponent.  The applicant’s marks were therefore neither distinctive nor capable or becoming distinctive. 

In relation to proprietorship, Ms Baird first referred to Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 concerning first use of a trade mark and then to substantial identity of the opponent’s and the applicant’s marks, relying on Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at 414 and Carnival Cruise Lines v Sitmar Cruises, supra, at 513.  The opponent admitted, Ms Baird said, that, at the date of the present applications, the opponent had not used the DELTA mark in respect of coffee, however, one had to consider the goods at a higher level, which, in the present case, were continental delicatessen type goods.  At that level, in Ms Baird’s opinion, the opponent’s use of the mark was in relation to “the same kind of thing” as the goods specified in the applications - Re: Hicks’ Trade Mark (1897) 22 VLR 636 at 640, the opponent having used the mark DELTA since the early 1950s and possessing registrations for the mark DELTA in class 29.

Ms Baird noted that the only connection between Australis Network International and the applicant was an oral agreement which appeared to be for distribution of the applicant’s goods, but not for applying the applicant’s mark to the goods.  There was no evidence that, on the basis of use of the mark DELTA COFFEE by Australis Network International after the date of the present applications, the applicant was entitled to acquire proprietorship rights in the mark. 

On the exercise of the Registrar’s discretion, Ms Baird said that both applications should be refused for the reasons argued in relation to the section 28 ground, considering the kind of customers likely to purchase the goods and the clear evidence from the opponent’s innocent conduct that use of the mark DELTA on coffee was a logical brand extension of the mark’s forty years use in relation to delicatessen grocery goods. 

Dealing first with the matter of proprietorship rights of a trade mark, Mr Burley cited Shell Co v Rohm and Haas, supra, concerning the three requisites: authorship, intention to use the mark upon or in connection with the relevant goods, and the act of applying for registration of the mark, submitting that the second and third of these had been met by the applicant, and that authorship could be claimed by the applicant on the basis of the mark being part of the applicant’s name.  One could readily draw the inference, he explained, that a company having as part of its name the word DELTA at the time of its application would indeed have established entitlement to use it in another jurisdiction.  

Commenting on the opponent’s submissions concerning non-distinctiveness of the applicant’s marks, Mr Burley said one must consider the well established test whether or not the marks are relevantly adapted to distinguish.  There was no suggestion that section 24 could be used as a way in which it would be relevant to section 28.  In other words, in considering the mark itself, one considered whether or not the word DELTA was distinctive.  It was the applicant’s submission that any attack on the mark, which was derived from use by the opponent of the DELTA mark in relation to olive oil, could not be made under section 24. 

Turning to the section 28 issue, Mr Burley reminded me that, as a preliminary point, it should be borne in mind that it is for the opponent to establish a sufficient reputation in its mark upon which to found its objections - Arthur Fairest’s Application (1951) 68 RPC 197 - and it is only when that onus is discharged that it does then shift to the applicant - Jafferjee v Scarlett, supra.  That initial onus had not been satisfied by the opponent, nor could it be made out relevantly in terms of the mark used on olive oil.  One needed to consider precisely what relevance a mark had in relation to coffee, given that it was not acceptable to describe the products as delicatessen grocery goods.  The fact that the products in question are foodstuffs was not sufficient, and it would be necessary for there to be a consciousness of relationship between the products rather than mere assertions made in the opponent’s evidence.  As to the relationship between the goods, Mr Burley referred to Societe Francaise des Viandes et Salaisons du Pacifique v Societe des Produits Nestle SA 15 IPR 89.

The appropriate test here, Mr Burley continued, was whether, having regard to the awareness of the opponent’s mark in the market for the goods covered by the registration proposed, would the use of the applicant’s mark be likely to deceive or cause confusion to persons in the market? - Pioneer Hi-Bred v Hy-line, supra.  Even if it was found that the mark would, at the priority date, have offended section 28 because its use was likely to deceive or cause confusion, there was also the matter of blameworthy conduct to be considered.  In the applicant’s view, there was no evidence of confusion, nor, taking into account the difference between the marks, was there any likelihood of it occurring.  Furthermore, the applicant denied any blameworthy conduct, because there was no nexus in the minds of the relevant people between olive oils and coffee, and the opponent’s prior use of the mark DELTA was for another class of goods.  Even though the opponent needed to demonstrate blameworthy conduct, there was no indication of any mental element which would be necessary to establish such conduct on the part of the applicant, Mr Burley submitted.  The applicant’s evidence directly responded to the opponent’s allegation and denied any consciousness of the opponent’s mark.  Secondly, he said, one may draw the inference from the applicant’s name that there was no external influence to the choice of the name DELTA. 

Both parties sought costs. 

Discussion
Section 28 - deception and confusion
The tests to be applied to the provisions of paragraph 28(a) have been well established by Kitto J in Southern Cross v Toowoomba Foundry, supra.  These tests were encapsulated by Heerey J in a recent decision Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd 38 IPR 495, at 501:

With one major exception, the legal principles applicable to this case are not in dispute.  They may be summarised as follows:

(i) The opponent bears the initial onus of establishing a reputation in its mark sufficient to found an objection under s 28: Re Arthur Fairest Ltd’s Application (1951) 68 RPC 197. (ii) However, once this onus is discharged the burden shifts to the party seeking registration: Eno v Dunn (1890) 15 App Cas 252 at 261; Jafferjee v Scarlett at 119.  (iii) The rights of the parties are to be determined as at the date of application for registration (here 27 July 1989): Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594; 1A IPR 465. (iv) The onus is on the party seeking registration to satisfy the court that there is no reasonable possibility of deception or confusion: Southern Cross at CLR 594-5.  (v) In order to defeat the application for registration it is not necessary for the opponent to establish that there is an actual probability of deception which will amount to passing off.  While a mere possibility of confusion is not enough - for there must be a real, tangible danger of it occurring - it is sufficient that the result of the user of the mark will be that a substantial number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.  It is enough that the ordinary person entertains a reasonable doubt: Southern Cross at CLR 594-5, 608; Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300 at 305. (vi) In considering the issue of deception all the surrounding circumstances must be taken into consideration. The factors to be considered include the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold and the character of the probable purchaser of the goods: Jafferjee v Scarlett at 120. (vii) A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at CLR 495.  There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack’s Application (1940) 58 RPC 91 at 103-4. (viii) It is not enough for the party seeking registration to negative the likelihood of confusion in relation to the actual trade carried on by the opponent at the time of the registration and to the manner in which the latter then uses his mark. The applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark within the ambit of his registration: Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84 at 94; Southern Cross at CLR 608.  (ix) The question whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense: it is a “jury question” in which the judge is entitled to give effect of his or her own opinion as to the likelihood of deception or confusion: Murray Goulburn Co-op Ltd v New South Wales Dairy Corp (1990) 24 FCR 370 at 377; 16 IPR 289 at 296.

To paragraph 28(a) can also be applied the test set out by Evershed J, in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, at 101:

(a) [under section 28] “Having regard to the reputation acquired by the name DELTA, is the court satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?”

The onus then is on the opponent to show that, having regard to the reputation of its mark, use of the applicant’s marks would lead to deception or confusion of a substantial number of people.  If this onus is discharged, it is for the applicant to convince the Registrar that deception or confusion of the marks would be unlikely.  The relevant date here is 27 January 1994, the date on which the applicant sought registration of the subject marks.  

The opponent’s registered marks which consist of or contain the word DELTA are: number 171206 in respect of “edible oils” and number 251174 in respect of “preserved olives and olive oil for food”.  Given that, according to the opponent, the mark DELTA has been in continuous use since as early as 1950s in relation to “olives and edible oil products”, reputation of that mark before the present applications were lodged ought to be considerable.  Although I do not question the credibility of the opponent’s evidence, presented in the form of Mr Schirato’s declaration and exhibits, it fails to provide sufficient details for assessing the degree of this reputation; while it has given total sales of the DELTA range of products from 30 June 1993 to 4 March 1996 and a list of “Current Product Sales of DELTA Products under this Brand since June 1993”, the majority of the sales figures cover sales of the opponent’s products under consideration subsequent to the priority date.  No separate sales figures are made available even for the short period before 27 January 1994.

In suggesting the possibility of deception or confusion between the applicant’s and the opponent’s marks, the opponent has placed great emphasis on the opponent’s practice to what it terms as the “brand extension”, whereby it has gradually extended each product range under the same mark over a number of years, as had been done in relation to the mark AURORA in particular, under which the opponent currently distributes grocery items: coffee, cheese, mineral water, pasta, grape seed oil, wine vinegars, preserved fruits and vegetables.  In line with this trend, it had been planning to add coffee to the products which had carried the mark DELTA for a long period of time, having first used the mark in 1950s in relation to olive oil.  In clause 15 of his declaration, Mr Schirato states that:

The Delta range has a reputation as an economical yet quality range of continental grocery items.  The extension of the range to coffee reflects the growth and development of Australian tastes and the popularity and demand for continental style grocery items including olives, olive oils and espresso coffee at an affordable price.  The effect of unifying this range through use of the Trade Mark means that a consumer purchasing one product from the range will understand that other products in the range will carry the same assurance about quality and origin as the other items in the DELTA product range.  This effect is particularly important when introducing a new product to the range as the consumer will rely on its past experience with other products in the range   

It has been pointed out that Mr Schirato, who has been involved in the marketing and distribution of the opponent’s goods for a considerable length of time, would be more than well qualified to comment on the relevant market and the behaviour of consumers.  This is not disputed.  The opponent has not, however, produced any evidence as to how persons independent of the opponent, including those who are familiar with the opponent’s extension of the marks VITTORIA and AURORA to a number of different products, are likely to react when encountering the mark DELTA applied to coffee, or, whether, in fact, they are likely to see any relationship at all between coffee and the products in respect of which the opponent has a long standing reputation.  The products may be categorized as continental style grocery goods, or as food used in Mediterranean diets, as suggested by the opponent, but that factor in itself does not infer a direct linkage between the goods.  Whilst under section 28 the goods of the conflicting trade marks need not be the same, nor of the same description, as required under section 33, as expressed by D.R. Shanahan in Australian Law of Trade Marks and Passing Off, second edition, at pp 166-167, in the absence of convincing evidence, it is difficult to see why purchasers or any other persons, who have long become accustomed to seeing the mark DELTA in connection with only a very narrow range of goods - olives and edible oil products - would, on the introduction of a product of a different nature - coffee - albeit depicting the same word in the mark, be expected to assume that the products shared the same origin, simply because the products are foodstuffs and sold in supermarkets.  Moreover, it is not the general practice to place on supermarket shelves edible oils and olive-related products in close proximity to coffee.  Even if the opponent’s mark DELTA has achieved Australia-wide reputation in respect of the olive products, I am not persuaded that such reputation would inevitably be associated with the coffee.      

The actual instances of confusion which are recounted by Mr Schirato in his declaration do not, in my opinion, add any weight to the opponent’s contention in relation to paragraph 28(a), as the confusion was not caused in the market place between the goods bearing the same or similar mark, but, on the first occasion, it was suspected that an error had been made by a printer in preparation of an advertisement, whereas the second mistake apparently occurred by inadvertently including a reference to the applicant’s products in compiling a report on the market share of the opponent’s products in supermarkets. It is also to be noted that these instances took place after the lodgment of the subject applications.

Consequently, in terms of paragraph 28(a), the opponent has not established that a substantial number of persons concerned with the goods under consideration would infer that the products have emanated from the same source or, at least, had a reason to wonder whether that might not have been so.  Having found so, there would be no cause to consider the matter of alleged blameworthy conduct by the applicant regarding the choice and use of its marks.  For the sake of completeness, however, I will discuss the issues relating to paragraph 28(d). 

Even though there is no clear statement from the applicant itself as to the reasons for selecting the word DELTA in its marks in face of the opponent’s long use of the DELTA marks, I do not believe it can be deduced from Mr Conceicao’s declaration that the applicant’s choice was a fraudulent act, or a deliberate attempt intended to damage the opponent’s reputation.  Mr Conceicao has been authorized to make the statements on behalf of the applicant and he explains his relationship with the applicant.  From his involvement in the relevant trade since 1994, he claims to have acquired market awareness of coffee in Australia as well as the product trade marks.  When the applicant applied for registration of the marks the subject of the present applications, the opponent had not commenced using its mark DELTA in respect of coffee.  In addition, the opponent’s two registrations of the DELTA marks had been confined to edible oils and olive-related goods, hence, probably, these registrations would not have been expected by the applicant to constitute a basis for a citation objection in terms of section 33.  It would be unreasonable to assume that the applicant could have anticipated the opponent’s intention to use the mark on a good which is not the same, or of the same description, as the goods in relation to which the opponent had continuously used the marks for forty years without expanding the product range under those marks during that time.  For the criteria on goods of the same description, I refer to John Crowther & Sons (Milnsbridge) Ltd’s Appn (1948) 65 RPC 369, at 372 and Jellinek’s Appn (1946) 63 RPC 59. It is also significant to note that the word DELTA has been registered for a diverse range of goods by different proprietors, including registrations for foodstuffs that are not necessarily perceived to have ethnic association.

Moreover, as noted earlier, despite the long use of its marks, the opponent has been somewhat reluctant in demonstrating the full extent of the marks’ reputation before the relevant date for the purpose of section 28.  In Man Li v Reebok, supra, cited by Ms Baird, the opponent had shown extensive use of a deceptively similar mark for the same goods as those of the applicant.  The hearing officer’s finding of blameworthy conduct in that case was based on the applicant adopting a similar trade mark “with the intention of getting as close as possible to the lettering used in the widely known form of the REEBOK mark”.  Similarly, in Re Sporoptic Pouilloux SA (1996) AIPC 91-203, the applicant was found guilty of blameworthy conduct in selecting a deceptively similar mark in the knowledge of the demonstrated reputation of the opponent’s mark in respect of the goods also claimed by the applicant.

Having regard to my foregoing comments, I do not consider the applicant to be responsible for any blameworthy conduct.  Accordingly, the opposition in terms of section 28 must fail.

Proprietorship - section 40
On the question of proprietorship, McGarvie J said in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402, at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 59 ALJR 77 at 83. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark.
...

In considering who, within s.40(1) of the Act, was at the time of Settef’s application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

Thus, the first user of the mark in Australia, in respect of the relevant goods and prior to the date of the subject application, becomes the proprietor at common law.  The issue of proprietorship, however, applies to marks which are identical or virtually the same mark - Carnival Cruise v Sitmar, supra, and Karu Pty Ltd v Jose (1994) AIPC 91-101 and is limited to what Holroyd J in Hicks’ case, supra, termed as use of the mark on “the same kind of thing”.  A small amount of use of the mark is sufficient - Seven Up Co v O.T. Ltd (1947) 75 CLR 203.

The applicant has produced evidence by way of copies of three invoices dated 7 April, 2 September and 21 September 1994 from the applicant to the importer/distributor of the goods in Australia, Australis Network International, and subsequent invoices dated 1 June, 22 September and 1 December 1994 from the importer/distributor as to sales of those goods to a company in Western Australia.  These invoices relate to the product coffee under the trade mark DELTA.  Mr Conceicao has declared that all the coffee under the DELTA mark, the subject of the invoices originating from the applicant were received by the importer/distributor within approximately one month of the date of each invoice, and that, upon receipt of the product, the importer/distributor then sold and delivered it to the purchaser within the same period.  This evidence clearly attests to the applicant having sold coffee in Australia under a substantially identical mark DELTA earlier than the opponent’s use of the mark on coffee which, according to Mr Schirato’s exhibit, took place in May/June 1995. 

The opponent’s alleged right to proprietorship, however, is based on prior use of its mark on what it identifies as continental delicatessen goods.  Given that such use has been limited only to edible oil and olive products, I do not believe the opponent’s claim can be sustained as these products do not belong to the same category of goods as coffee, and therefore are not “the same kind of thing”.

I find then that the opponent has failed to upset the applicant’s claim to proprietorship pursuant to the provisions of section 40 of the Act.

Distinctiveness
At the time of examination of the marks in suit, there was no indication that the marks were not adapted to distinguish the nominated goods in the applications - coffee - from those of other traders.  Both of the applicant’s marks were found to be distinctive and subsequently accepted in Part A of the Register.  The opponent has not convinced me that the applicant’s marks somehow fail the tests of registrability under section 24 of the Act.  There is no substance in the opponent’s argument in relation to this ground of opposition to the effect that the applicant’s marks are not adapted to distinguish because of the opponent’s past use of its mark DELTA on olive products and edible oils for the reasons to which I have alluded previously.  As submitted by Mr Burley, an objection based on alleged non-distinctiveness of a mark cannot be substantiated by use appropriate for consideration in terms of section 28 of the Act.

Discretion
Concerning this point, the opponent urged me to give due weight to the likelihood of deception and confusion of the marks essentially based on the same submissions as those presented on the section 28 ground.  Having concluded that the opponent has not succeeded in relation to this ground, and having been shown no other reason why I should exercise the Registrar’s discretion, there is no need for me to dwell on this issue.

Conclusion
I have found that the opponent has not succeeded on any grounds relied upon at the hearing.  I therefore dismiss the opposition.  Subject to any appeal from this decision, the application should proceed to registration.

Having found in favour of the applicant, I award costs against the opponent.  

Vija Zars
Hearing Officer
30 June 1998