Nylex Corporation Pty Ltd v Pencray Pty Ltd

[2006] ATMO 28

TRADE MARKS ACT 1995

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

Re:Opposition by Nylex Corporation Pty Ltd to registration of trade mark application 907155, 907156(35) - THE ESKY - filed in the name of Pencray Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent Mark Goldblatt of counsel, instructed by Corrs Chambers Westgarth Lawyers

Applicant  Peter Challen of Hawthorne Cuppaidge & Badgery, Lawyers

Decision:

1. Section 52 opposition – ss42(b), 43, 44 & 58 grounds not established – s 60 ground established – registration refused.

2.    Costs awarded against the applicant.

Background

1. The applicant, Pencray Pty Ltd, applied to register the following trade marks:

Application Number:

907155, 907156

Priority date:

 21 March 2002

Goods:

907155 Class   35  Sale of alcohol in retail shops

907156 Class   35  Retail sale of alcohol and beverages

Trade Mark:

The esky

Advertised:

 8 August 2002

1. The opponent, Nylex Corporation Pty Ltd, filed notices of opposition to the trade marks’ registration on 8 November 2002.  The notices listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

2. The parties duly served and filed evidence in support, evidence in answer and evidence in reply.

3. The matters came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 2 November 2005. Mr Mark Goldblatt of counsel instructed by Corrs Chambers Westgarth, Lawyers, represented the opponent. Mr Peter Challen of Hawthorne Cuppaidge & Badgery, Lawyers, represented the applicant.

Evidence

1. Details of the evidence is shown in the following table:

Declarant	Dated	Exhibits	Known As
Evidence in Support
Russell John Waters	6.11.03	RJW-1	Waters
Robert John Hume Coldbeck	8.12.03	1 to 5	Coldbeck
Evidence in Answer
Colin Clive Johnson	4.03.04	CCJ-1 & CCJ-2	First Johnson
Anthony Martin Jacobson	4.03.04	Jacobson
Colin Clive Johnson	9.03.04	CCJ1	Second Johnson
Evidence in Reply
Michael Peter Squires	6.09.04	MPS1	Squires
Danny Murdoch	27.08.04	1 to 3	Murdoch

1. The Waters declaration is made by a patent and trademark attorney whose firm previously represented the opponent.  He declares that he is aware of an hotel in St Kilda, Victoria, called the Esplanade Hotel and colloquially known as the “Espy”.  In light of this nickname and similarity to be posted trade marks, he conducted a search of the ATMOSS database to determine whether this nickname was registered as a trade mark.  His search did not locate any such registration; however, he did find a registration for the mark ESPI.  At the hearing this evidence was not relied upon by the opponent's current representatives.

2. The Coldbeck declaration is made by the Market Development Manager of the opponent.  He stated that the opponent is the owner of the trade mark esky in Australia.  The mark was first used by the opponent's predecessor in title in relation to domestic refrigerators in 1947.  He stated that use on portable coolers commenced in 1952 and by 1960, approximately 500,000 Australian households owned an esky brand cooler.

3. The Coldbeck declaration exhibited a number of trade mark registrations that included the esky brand.  These registrations are as follows:

Registration	Trade Mark	Priority Date	Goods
170377	esky	2.11.1961	Class 11: Cooling apparatus and equipment inclusive of portable ice boxes
403973	esky	20.02.1984	Class 25: Clothing including boots, shoes and slippers included in this class and all other goods in this class
403974	esky	20.02.1984	Class 21: Domestic utensils and containers in this class, including bottles, insulating and other holders for bottles and for cans, bottle openers, can openers, ice buckets, ice moulds, cooling devices containing heat-exchange fluids and other refreezable packs, and all other goods in this class
617799	7.12.1993	Class 11: Ice chests and coolers; portable ice boxes and car fridges and all other goods in this class
865538	esky	9.02.2001	Classes: 18, 20, 22 &  28 (not relevant to this opposition)

1. The Coldbeck declaration declares that as a result of the extensive sales and promotion of esky branded products in Australia for over 50 years, the trade mark esky has developed a significant reputation in Australia.  It is stated that this has resulted in esky being designated a "super brand" by the Superbrands Council.  A confidential exhibit detailed sales of esky branded products during the last five years.

2. Mr Coldbeck declared that as a result of extensive reputation of the opponent's brand in Australia, he considered that any use of the esky  trade mark by a third party is likely to result in deception or confusion.

3. The first Johnson declaration is made by a director of the applicant.  He states that the applicant operates the Prince Alfred Hotel and for retail bottle shops in the greater Brisbane/Ipswich area.  One of the bottle shops was renamed the esky in March 2002.

4. Mr Johnson states that the purpose of the name change was to create a point of difference in the liquor retail market and attract customers to increase sales of the alcoholic and non-alcoholic beverages on offer at the shop.

5. The first Johnson declaration stresses that none of the applicant's premises, including The esky bottle shop, have never sold or intended to sell any coolbox products or other products of the types that bear the esky logo, whether esky branded or otherwise.

6. The Jacobson declaration is made by the manager of The Esky bottle shop.  He details the hours of operation of the shop, and his attendance at the shop.  He states that during his employment at the shop he has never had any inquiry concerning the purchase of a coolbox or any other esky -related products.

7. The second Johnson declaration exhibited additional copies of advertisements placed in the Ipswich Advertiser newspaper.  I note that all of the advertisements are dated after the priority date of the applicant's trade mark.  I also note that the advertisements show the applicant to bottle shop being referred to as The Brassall Esky.

8. The Squires declaration exhibits printouts of web pages relating to alcoholic beverages and premises involved in the retail sale of alcohol.

9. The Murdoch declaration is made by a private investigator retained on behalf of the opponent.  He exhibits photographs of the applicant's premises, and samples of goods other than alcoholic beverages available for sale in the shop.  These are a bottle opener key-ring, a bottle stopper pack, and a wine sealing set.  He also provides a receipt for the goods purchased.  I note that on the receipt of the applicant's premises are referred to as Brassall Liquor Mart.

Grounds of opposition

1. The opponent relied on five Grounds of opposition, and I shall deal with them in the same order as they were dealt with at the hearing.

Ground 1: Section 44 – Identical etc Trade Marks

1. To establish the section 44 ground, the opponent must establish all of the following:

¨    At the priority date

¨    there was a substantially identical or deceptively similar trade mark application or registration

¨    in respect of similar goods or closely related services

¨    in the name of a person other than the applicant.

1. The opponent nominated its registrations 170377 and 403974 for this ground.  As shown above, both of these registrations have earlier priority dates than the applicant's trade mark.

2. My attention was drawn to the usual test for substantial identity enunciated in Shell Co of Australia v Esso Standard Oil (1963) 109 CLR 407, at 414, which I need not repeat here.

3. There can be little doubt that The esky and esky are substantially identical.  The essential, indeed only, feature of both marks is the word esky.

4. The remaining issue under this ground is whether or not the applicant's services are closely related to the opponent's goods.  The opponent submitted that the services of offering for sale chilled beverages (including alcoholic beverage) is closely related to the opponent's goods, which goods are typically used to store and chilled beverages.

5. While there is a logical relationship between alcoholic beverages and cooling apparatus, I am not satisfied that they are so close as to be generally regarded by the ordinary consumer has originating in, or being part of, the one industry or trade: see John Crowther & Sons (Milnsbridge) Ltd’s Appn (1948) 65 RPC 369.

6. Therefore, I dismiss this ground of opposition.

Ground 2: Section 58 - Applicant not owner of trade mark

1. This section of the legislation reads:  

   58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:  For applicant see section 6.

1. It is now well established law that, in order to succeed under this ground of opposition the opponent must establish three factors. These are:

   (i) that the respective trade marks of applicant and opponent be either identical or substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, (1994) AIPC ¶91-049, (1994) 120 ALR 495);

   (ii) that the respective goods of both parties be the 'same kind of thing' (Re Hicks' Trade Mark (1897) 22 VLR 636; 3 ALR 75); and

   (iii) that the opponent has the earlier claim to ownership based on use prior to both the application to register and actual use of the mark by the applicant (Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 and Re: Hicks's Trade Mark, supra, at 639).

2. While I have determined that the first factor is established, my finding under Ground 1 in respect of closely related goods and services results in the logical conclusion that the second factor cannot be made out.

3. Therefore I dismiss this ground of opposition.

Ground 3: Section 43 -  a connotation within the trade mark

1. Section 43 provides:

   43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. By the language of section 43, my considerations of the issues involved are limited to connotations arising from the opposed trade mark itself and not through similarities to another trade mark. This approach has been affirmed by the Court in Big Country Developments Pty Ltd v TGI Friday's Inc, [2000] FCA 720, 48 IPR 513 at 521:

   The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43.

3. In this case, any deception or confusion that might arise would depend on the similarity of the opposed marks rather than some connotation.

4. The opponent has not established its opposition under section 43 to my satisfaction, and I dismiss it.

Ground 4: Section 60 - Prior reputation

1. To satisfy s.60, the opponent has the burden of establishing the following elements:

¨    a pre-existing trade mark;

¨    substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

¨    the acquisition of a reputation in Australia by the pre-existing trade mark; and

¨    a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

1. I have already determined that the opponent has pre-existing trade marks that are substantially identical with the applicant's trade mark.

2. Justice Lockhart, in Conagra v  McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193, stated:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers or within the forum.

3. I am satisfied that the evidence clearly demonstrates that the esky trade mark has a significant reputation in Australia amongst a significant section of the public.  Indeed it would be true to say that the opponent's trade mark has achieved ‘iconic’ status in the Australian market, along with the Hills hoist, Vegemite and the Victa  lawnmower to name but three.

4. I think that the problem for the applicant is that, to most Australians, its mark immediately brings to mind the opponent’s esky. It is confusing or deceptive because most Australians will initially be caused to wonder whether the opponent has entered the alcoholic beverage market or has licensed or authorised the applicant to market alcoholic beverages under its trade mark.  Explaining the differences between deception and confusion, Richards J in Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty. Ltd. [1979] RPC 410 at 423 says

   'Deceived' implies the creation of an incorrect belief or mental impression and causing 'confusion' may go no further than perplexing or mixing up the minds of the purchasing public..... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

5. And in Registrarof Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) at paragraph 47 French J says:

   The policy of the 1995 Act can be said to some extent to have shifted the balance of the objectives of trade mark law more towards the identification and protection of commercial products and services than the protection of consumers, although the latter remains an objective. In respect of deceptive trade marks the interests of consumers are also protected by comprehensive Federal and State laws relating to conduct which is misleading or deceptive or likely to mislead or deceive. The trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes. That, no doubt, is because "confusion" used in that sense, does not of itself lead into error or affect choices at the point of sale. It is perhaps best described in trade mark law as effecting a prophylactic support for commercial distinctiveness.

6. The distinctions here are fine ones, but the effect of the opposed trade mark is such that the connection in the minds of the Australian public is, in my estimation of the evidence before me, immediate and inevitable with inescapable consequences of confusion as an outcome.  This may not persist to the point of sale or lead into error, but the likelihood of an immediate wonderment as to a common commercial origin is, in my consideration of the evidence, unavoidable.

7. I am satisfied that this ground of opposition has been established.

Ground 5: Section 42 - Trade mark use contrary to law

1. Following the decision of Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, the Registrar is obliged, when assessing whether use would be contrary to law under s.42(b), to take into account the operation of laws and legislation other than the Trade Marks Act 1995. Here, the opponent alleges that use of the trade mark would constitute misleading or deceptive conduct to contrary to section 52 of the Trade Practices Act 1974 (“TPA”).

2. The opponent submitted that the evidence supporting its ss44 and 60 grounds established that there is, or would be, a real possibility that a reasonably significant number of persons would be misled or deceived if the opposed trade mark were to be used by the applicant on its retail premises in relation to the sale of alcoholic beverages.

3. In Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431 at 440-442, Hill J formulated a number of propositions as relevant to a determination of whether a contravention of s52 was made out in a name/getup type case, which can be summarised as follows:

(a)for conduct to be misleading or deceptive it must convey in all the circumstances of the case a misrepresentation;

(b)there will be no contravention of s52 unless the error or misconception results or would be likely to result from the conduct of the corporation and not from other circumstances for which the corporation is not responsible;

(c)conduct will be likely to mislead or deceive if there is a ‘real or not remote chance or possibility’ of misleading or deception, regardless of whether it is more or less than 50%;

(d)conduct causing mere confusion or uncertainty in the minds of the public, in the sense that there may be cause to wonder whether two products or services have come from the same source, is not necessarily co-extensive with misleading or deceptive conduct.  The court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived.  However, it is not necessary to show that all or substantially all persons in the market associate the name with the applicant/plaintiff’s goods/services, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question;

(e)the applicant/plaintiff must establish that it has acquired the relevant reputation in the name, that is to say that the name has become distinctive of the applicant’s business or goods in a particular country or geographical area (the area may be local or Australia wide);

(f)section 52 is not confined to conduct which is intended to mislead or deceive, and a corporation that acts honestly and reasonably may nonetheless engage in conduct that is likely to mislead or deceive.

1. These principles have been restated by the Full Court of the Federal Court in S&I Publishing Pty Limited v Australian Surf Lifesaver Pty Limited (1998) 168 ALR 396 at 402 - 403.

2. The misrepresentation need only be likely to mislead.  There is no requirement that actual deception be proven: Sydney Wide Distributors Pty Limited v Red Bull Australia Pty Limited (2002) 55 IPR 354 at [62]. It is no bar to succeeding in an action for contravention of s52 that there is no consumer evidence of deception. Indeed where there has been no use of an applicant’s trade mark application there can be no evidence of deception.

3. Section 52 TPA is designed to protect consumers. It is a contravention of s52 if a misrepresentation is conveyed by the use of the mark that there is an association of some kind between the supplier of the goods or services in respect of which the mark is sought to be registered and the user of the opponent’s marks; that the goods to be supplied under or by reference to the marks are in 'some way' promoted or associated with the opponent or provided with the opponent’s consent or approval, when in fact they are not: see Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) 49 IPR 303 at [40], [57] & [59].

4. In the Advantage Rent-A-Car case, Madgwick J confirmed that the test to be satisfied was that use would, rather than could, be contrary to law.  Therefore, I am to determine, on the balance of probabilities, and on the basis of a hypothetical case which takes into account all the evidence and submissions before me, whether use of the applied-for trade mark in respect of the applicant’s services would involve the misleading or deception alleged.

5. I have already determined that the opponent has clearly established the requisite reputation in respect of section 60. However, I am not satisfied that the evidence has established more than the sense of wonderment that I found in respect of that ground. As Gibbs CJ stated in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, at 198:

   [T]o prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592 , a decision on the Trade Marks Act 1905 (Cth), as amended, is distinguishable.  

1. Therefore, I am not satisfied that the trade mark use would be contrary to law.  Consequently this ground of opposition has not been established.

Conclusion

1. Section 55 of the Act provides:

   Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

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

   (b)         to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. I refuse to register applications 907155 and 907156.

3. The opponent, having been successful, is entitled to its costs which I order at the official scale against the applicant.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

31 March 2006