Oatly AB v Oat Baby Pty Ltd

[2022] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Oatly AB to registration of trade mark application number 2069905 (classes 29, 30 & 32) – OAT BABY – in the name of Oat Baby Pty Ltd

Delegate:	Tracey Berger
Representation:	Opponent: Phillips Ormonde Fitzpatrick Applicant: AN McRobert of counsel instructed by Wrays Pty Ltd
Decision:	2022 ATMO 91 Trade Marks Act 1995 (Cth) – opposition under section 52 – section 44 pursued - no ground established – trade mark to proceed to registration

Background

1. This is a decision in the opposition by Oatly AB (‘Opponent’) to the registration of trade mark application number 2069905 (‘Application’) filed by Oat Baby Pty Ltd (‘Applicant’) on 18 February 2020 (‘Relevant Date’) for:

   Trade Mark:             OAT BABY (‘Trade Mark’)

   Specification:            Class 29: Milk and milk products; edible oils and fats; cream; dairy substitutes; dairy substitutes containing oat; milk substitutes; milk substitutes containing oat; oat milk; cream substitutes; cream substitutes containing oat; flavoured milk-substitute beverages; flavoured milk-substitute beverages containing oat; flavoured oat milk; coffee flavoured oat milk; chocolate flavoured oat milk; chai flavoured oat milk; oat milk containing added vitamins and minerals, including containing added calcium; oat milk based yoghurt; yoghurt made from milk-substitutes; yoghurt beverages made from milk-substitutes; yoghurt beverages made from oat milk; dried milk-substitute powder; dried oat milk powder; none of the aforementioned goods being for babies or infants

   Class 30:  Coffee, tea, cocoa and artificial coffee; flour and preparations made from cereals; oat based flour; bread, pastry and confectionery; oat based bread, pastry and confectionery; oat based cereals; oat based cereal bars; ices; ice cream; ice cream made from milk-substitutes; ice cream made from oat milk; frozen yoghurt; frozen yogurt made from milk-substitutes; frozen yoghurt made from oat milk; sauces; none of the aforementioned goods being for babies or infants

   Class 32:  Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; oat preparations for making beverages; oat based beverages; oat based fruit beverages; none of the aforementioned goods being for babies or infants

   (‘Applicant’s Goods’)

2. As required by the Trade Marks Act 1995 (Cth),[1] the Application was examined, accepted for possible registration and advertised as accepted on 13 August 2020.  The Opponent filed notice of its intention to oppose the Application on 13 October 2020 and a Statement of Grounds and Particulars (‘SGP’) on 12 November 2020.  The Applicant filed notice of its intention to defend the opposition on 21 December 2020.

   [1]  Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 5.14.  The Opponent did not file any evidence.  The Applicant’s Evidence in Answer (‘EIA’) was filed on 25 June 2021.

4. Thereafter, the parties were given the opportunity to be heard.  The parties elected to be heard by way of written submissions and paid the requisite fees.  The Opponent filed written submissions on 12 April 2022.  The Applicant filed written submissions on 19 April 2022.

   Grounds and Onus

5. The SGP nominates grounds of opposition under ss 42(b), 44 and 60.  The Opponent pursued only the s 44 ground in its written submissions.

6. The Opponent carries the burden of establishing the ground of opposition on the balance of probabilities[2] and any doubt is to be resolved in favour of the Applicant.[3]  The rights of the parties are assessed as at the Relevant Date.[4]

   [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] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; 122 FCR 494, [22] (French J).

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

   Evidence

7. The EIA comprises a declaration of Haydee Gordon, director of the Applicant, made on 23 June 2021 with Annexures LG-1 to LG-7.

8. Ms Gordon declares that the Trade Mark was adopted for use on a range of oat based products which were still being developed.  Ms Gordon puts into evidence other “OAT-” prefix marks on the Register in classes 29, 30 and 32.  In addition, Ms Gordon provides information about the use of some of these “OAT-” prefix marks in Australia by third parties and the trade channels through which these goods are sold.  Finally, Ms Gordon provides The Concise Oxford Dictionary definition of ‘oat’.

   Discussion

9. To successfully oppose the Trade Mark pursuant to s 44, the Opponent must establish that a trade mark registered or applied for by a person other than the Applicant:

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

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

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

10. In the SGP, the Opponent relies on following marks registered in its name (collectively ‘Opponent’s Marks’):

MARK	NUMBER	PRIORITY DATE	CLASSES
OATLY	854015	18 October 2000	29, 30, 32
OAT-LY!	1634885 (IR 1209273)	1 October 2013	30
1636471 (IR 1210356)	1 October 2013	29, 30, 32
OATLY	1913542 (IR 1393445)	13 February 2017	21, 25, 29, 30, 32, 35, 43

1. The first requirement is satisfied as the Opponent’s Marks are in the name of someone other than the Applicant and have a priority date earlier than the priority date of the Trade Mark. 

   Substantial identity

2. The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

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

   [5] [1963] HCA 66; (1963) 109 CLR 407, 415.

3. The Opponent refers to Pham Global Pty Ltd v Insight Imaging Pty Ltd[6] and Fresh Intellectual Properties Inc v Russell Goldman[7] in support of its arguments that the Opponent’s Marks are substantially identical to the Trade Mark.  In my opinion, the present comparisons are not analogous to either of these cases both of which involved the similarity of device elements as well as common word elements.  In the present instance, the only common element is the word OAT which is not particularly distinctive for food and beverage products.  Despite this common element and the fact that both the Trade Mark and Opponent’s Marks end in the letter ‘y’, there are clear differences on a side by side comparison which mean that there is not a “total impression of similarity” emerging from a comparison of the Trade Mark with each of the Opponent’s Marks.  The Trade Mark is clearly two words whereas the Opponent’s Marks are either a single word or hyphenated.  The Trade Mark is not substantially identical to any of the Opponent’s Marks.  Accordingly, I move to consider whether the Trade Mark is deceptively similar to any of the Opponent’s Marks.

   [6] [2017] 251 FCR 379.

   [7] [2006] ATMO 21, [14].

   Deceptive Similarity

4. The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resembles the other trade mark that it is likely to deceive or cause confusion.[8]

   [8] Act s 10.

5. In determining whether any of the Opponent’s Marks and the Trade Mark are deceptively similar, I am guided by the following relevant principles:

   ·     There must be a real, tangible danger of confusion, not just a mere possibility.[9] 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.[10]

   ·     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.[11] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[12]

   ·     Consumers may retain an imperfect recollection of a mark or its essential features.[13]

   ·     The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or exceptionally careless or stupid.[14]

   ·     It must be considered how the goods or services are ordinarily sold or provided.[15]

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

   [10] 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).

   [11] 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).

   [12] 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).

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

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

   [15] Ibid.

6. The Opponent asserts that the trade marks are deceptively similar because they all begin with the word ‘oat’. Whilst the Trade Mark and the Opponent’s Marks each contain the element ‘oat’, this does not automatically amount to deceptive similarity. The question to be considered is whether the similarity gives rise to a real and tangible danger of deception or confusion. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) O’Bryan J stated:

   That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[16]

   [16] [2021] FCA 328, [245].

7. When the trade marks are considered as wholes, the common presence of ‘oat’ is not, in this instance, sufficient to give rise to a real and tangible danger of confusion. The likely impression of each of the Opponent’s Marks on an ordinary consumer is that of an invented word.  The Trade Mark suggests a person being an actual baby or someone affectionately referred to as ‘baby’ whom has a penchant for oats or oat based products.  Visually there is only limited similarity between OAT BABY and OATLY due to the common element OAT and shared final letter ‘y’.  However, it is apparent even on a cursory glance that there are also visual differences.  Moreover, the Opponent’s Marks and the Trade Mark are aurally distinct. 

8. The common element OAT is descriptive of most of the Applicant’s Goods and is a word which other traders will wish to use in relation to their same or similar products.  When the common element is an ordinary English word that has some meaning in relation to the goods, it is important to “be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse”.[17]  I do not expect that consumers will assume any relationship between the Applicant’s Goods and those of the Opponent due to this shared element.  In my view, the element BABY is at least equally memorable in the Trade Mark and even an imperfect recollection of the Trade Mark is unlikely to result in consumers recalling any of the Opponent’s Marks.

   [17] Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864, 41 IPR 505, 511-512 (Burchett J).

9. Generally, both the goods of the Opponent and the Applicant’s Goods would be purchased from a shelf in many of the same sorts of stores placing particular emphasis on the appearance of the Trade Mark and the Opponent’s Marks.  Even though the respective goods may be purchased without a high degree of care, I expect that consumers are accustomed to distinguishing between different marks containing the element OAT.  Given the overall differences in the Trade Mark and each of the Opponent’s Marks, I do not believe that there is any real danger of confusion between the Trade Mark and the Opponent’s Marks.

10. I am not satisfied that the Trade Mark is deceptively similar to any of the Opponent’s Marks and hence the s 44 ground of opposition is not established.

    Decision

11. The Opponent has not established a ground of opposition. Accordingly, trade mark application number 2069905 may proceed to registration one month from the date of this decision.

12. 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.

13. The Applicant has requested an award of costs in its favour. Costs generally follow the event and there being no reason to make an exception here, I award costs against the Opponent under s 221 in the applicable amounts set out in Schedule 8 of the Regulations.

    Tracey Berger
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    8 June 2022